WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. Jeffrey Prather / Domains by Proxy, Inc.
Case No. D2011-0306
1. The Parties
The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America represented by Dorsey & Whitney, LLP, United States of America.
The Respondents are Jeffrey Prather of Dallas, Texas, United States of America and Cyprus; and Domains By Proxy Inc. of Scottsdale, Arizona, United States of America.
2. The Domain Names And Registrar
The disputed domain names:
(the “Domain Names”) are registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2011. On February 15, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 16, 2011, GoDaddy.com, Inc.
transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2011.
The Center appointed Ian Blackshaw as the sole panelist in this matter on April 5, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the largest private not-for-profit educational research and measurement institution in the world. It was founded on December 19, 1947, when the American Council on Education, the Carnegie Foundation for the Advancement of Teaching and the College Entrance Examination Board turned over their testing programs, a portion of their assets and some of their employees to form the Educational Testing Service (“ETS”) – an organization devoted to educational testing, measurement and research.
Since its formation in 1947, the Complainant has been the leader in developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans as well as citizens of other countries seeking preparatory school, college and graduate school admission; licenses for technical and paraprofessional occupations; and teacher certification, among others.
The many well-known tests developed and administered by Complainant, or its related companies, include: the “PRAXIS I”, “PRAXIS II” and “PRAXIS III” test; the “TOEIC” test; the “TOEFL” test; the “TSE” test and the “GRE” test.
The Complainant administers more than 50 million tests annually in more than 180 countries at more than 130,000 locations. Many Americans, as well as citizens of other countries throughout the world, have prepared for and taken one or more of Complainant’s tests at some stage in their lives. In addition to its headquarters in Princeton, New Jersey, the Complainant has regional offices in California, Pennsylvania, Texas, Washington, D.C., United States of America, and Puerto Rico, as well as subsidiaries in the Netherlands and other countries. Furthermore, the Complainant maintains an extensive worldwide network of local test administrators and authorized testing centers.
Continuously, since 1991, through its development and administration of the PRAXIS tests, among other activities, the Complainant has been at the forefront of evaluating the academic and teaching skills of individuals seeking teacher certification. The PRAXIS tests are taken by individuals entering the teaching profession as part of the certification process required by many states and professional licensing organizations. Approximately 40 states and United States’ territories require that candidates take the PRAXIS Series tests to qualify for teacher certification and licensure.
The PRAXIS tests are made available worldwide and administered by authorized institutions under contract with the Complainant at Computer-delivered and Paper-delivered Test Centers. In 2009, the Complainant administered 880,252 PRAXIS tests and in 2010 jointly developed an online tutorial with Pearson Education at the ”www.praxistutorial.com” website.
In connection with the PRAXIS tests, the Complainant has developed numerous test preparation products and services, including print publications, CD-ROMs, and computer software. These products and services provide information on taking the PRAXIS tests and authentic PRAXIS practice test questions, and they are offered for sale in the United States of America by the Complainant, including on the Complainant’s official website for the PRAXIS test “www.ets.org/praxis”. The Complainant also provides general information about the PRAXIS test on this website, as well as registration information for taking the test anywhere in the United States of America. Copies of sample pages from the Complainant’s PRAXIS website have been provided to the Panel.
5. Parties’ Contentions
A. The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The Complainant has used, applied for and registered the trademark PRAXIS and variations thereof in the United States of America for a number of goods and services in the educational field, the first use of which dates from 1991.
The Panel has been provided with details of these registrations and also certified copies of them.
The Complainant contends that the Complainant’s ownership of such registrations establishes a presumption of its ownership of the PRAXIS trademark and its validity. See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503.
The Complainant also owns the registration for the domain name <praxis.org>, which embodies its PRAXIS trademark. Evidence of this has also been provided to the Panel. The Complainant actively uses this domain name to host the official website for the PRAXIS tests.
As a result of the Complainant’s long and prominent use of its PRAXIS trademark, the mark has acquired substantial recognition as identifying exclusively the products and services of the Complainant, and the vast and valuable goodwill symbolized by the PRAXIS trademark belongs exclusively to the Complainant.
The Complainant’s PRAXIS trademark is well known and enjoys a prominent reputation in the educational, professional, occupational, governmental and institutional market sectors. The PRAXIS trademarks serve to identify a single source – namely, the Complainant – and its respected products and services.
The Complainant has spent considerable time, effort and money for the research and development of its products and services that are promoted, marketed and sold under the PRAXIS trademark.
The Domain Names are essentially identical and certainly confusingly similar to the Complainant’s PRAXIS trademark, as they incorporate the Complainant’s distinctive PRAXIS trademark in its entirety. The primary elements of the Domain Names: <praxiseducation.org>, <praxiseducation.net>, <praxiseducation.mobi>, <praxiseducation.biz>, <praxiseducation.info> and <praxiseducationgroup.org> are identical to the Complainant’s PRAXIS trademark.
The only difference between the Domain Names and the Complainant’s PRAXIS trademark is the mere addition of the generic or descriptive word “education.” This enhances the confusion with Complainant’s PRAXIS trademark as the mark is used in the field of education.
Furthermore, prior UDRP panels have held that the addition of such indistinctive elements is not sufficient to avoid confusion. See, e.g., Educational Testing Service v. Jong-Cheol Seo, WIPO Case No. D2006-0056 (addition of “real” to distinctive TOEIC mark to form <realtoeic.com>); Educational Testing Service v. Seung Suk Ha, WIPO Case No. D2001-1063 (addition of “tests” to distinctive TOEFL mark to form <toefltests.com> and <toefltests.net>); Aventis Pharma S.A. v. Valicenti, WIPO Case No. D2005-0037 (addition of “buy” to distinctive LANTUS mark to form <buylantus.com>); Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462 (addition of “cheap” to distinctive Marlboro mark to form <cheapmarlboro.com>); and Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870 (addition of “confidential” to distinctive VIAGRA mark to form <viagraconfidential.com>).
Given the renown of the Complainant’s PRAXIS trademark and the fact that the Respondents’ Domain Names incorporate the mark verbatim, the Domain Names are likely to confuse consumers into believing that the Respondents’ website accessed through the Domain Names are affiliated with or endorsed by the Complainant, or that the Respondents’ use of the Domain Names is authorized by the Complainant. See Dell Computer Corp. v. Logo Excellence, WIPO Case No. D2001-0361.
Therefore, the Domain Names are identical or confusingly similar to the Complainant’s PRAXIS trademark.
B. The Respondent has no rights or legitimate interests in respect of the domain names;
(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The Complaint states that the Respondents cannot demonstrate that they have any rights or legitimate interests in the Domain Names. Noting the difficulty of proving a negative, prior UDRP panels have found that a complainant’s burden of proof on this element is light. See, e.g., Croatia Airlines d.d.v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Complainant’s registrations for the PRAXIS trademarks predate the Respondents’ registration of the Domain Names. Such trademark registrations evidence the Complainant’s exclusive rights in the marks in connection with the goods and services covered by those registrations, and the Complainant has not authorized the Respondents to use any of its trademarks. See, e.g., Croatia Airlines d.d.v. Modern Empire Internet Ltd., supra (lack of authorization from trademark owner for use of mark in domain name is a factor for finding that respondent has no legitimate interests in domain name).
The Respondents have not made use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, nor could the Respondents do so in light of the notoriety of the Complainant’s PRAXIS trademark and the Complainant’s exclusive rights in that mark.
In addition, the Respondents have not been commonly known by the Domain Names. In order for the Respondents to show that they have rights or legitimate interests in the Domain Names based upon a claim that they are commonly known by the Domain Names, the Respondents must provide adequate extrinsic proof that a corresponding group of consumers, who are likely to access the websites, associate the Domain Names with the Respondents rather than with the Complainant. See Dell Computer Corp. v. Logo Excellence, supra. Given the widespread notoriety enjoyed by the Complainant’s PRAXIS trademark, it is impossible for the Respondents to meet such a burden.
Moreover, the Respondents are also not making a legitimate noncommercial or fair use of the Domain Names without intent: (1) for commercial gain to divert consumers misleadingly; or (2) to tarnish the trademarks at issue. Upon information and belief, the Complainant states that Respondents currently operate pay-per-click websites at the Domain Names from which they derive revenue based upon the number of times visitors click on links on the web pages associated with those websites. Such use of the PRAXIS trademark is commercial and does not constitute fair use. Rather, such use infringes upon the Complainant’s trademark rights and is not a legitimate use of the Domain Names under the Policy. See Chanel v. Estco, WIPO Case No. D2000-0413 (“[I]n order for Respondent’s Internet business to be ‘legitimate’ under the Policy, it must make non-infringing use of Complainant’s world famous trademark.”); see also Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446.
In fact, the Respondents are using the Domain Names for commercial gain to divert consumers misleadingly to its websites. The Domain Names are identical and confusingly similar to the Complainant’s PRAXIS trademark, and the Respondents capitalize on that confusing similarity to reroute to their websites Internet traffic likely destined for the Complainant’s website, which is improper, if not illegal.
Such use of the Domain Names by the Respondents constitutes a breach of the Registration Agreement, as well as the Policy, under which Respondents warranted that, to the best of their knowledge and belief, neither the registration of the Domain Names nor the manner in which they intended to use the Domain Names would directly or indirectly infringe the legal rights of a third party. The Respondents’ breach of that warranty divested them of any rights or interests in the Domain Names that they may have had. See Milwaukee Radio Alliance, L.L.C. v. WLZR-FM Lazer 103, WIPO Case No. D2000-0209.
C. The domain names were registered and are being used in bad faith.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Respondents have registered the Domain Names without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of the Complainant’s well-known PRAXIS trademark. Prior UDRP panels have held that bad faith may be found if it is unlikely that the registrant would have selected the domain name without knowing of the reputation of the trademark in question. Such a finding is particularly apt where the complainant’s trademark is well-known, as is the case with the Complainant’s PRAXIS trademark. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith use and registration found where ”<veuveclicquot.org> is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”); see also Northwest Airlines, Inc. v. Mario Koch, NAF Claim No. FA095688 (“[T]he selection of a domain name [northwestairlines.com] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith.”).
In the present proceeding, the Respondents had actual and constructive notice of the Complainant’s rights in the PRAXIS trademark before registering the Domain Names. The Respondents combined the PRAXIS trademark with the word “education,” which without more established the Respondent’s knowledge of the Complainant’s trademark and its application in the field of education.
Furthermore, it is highly unlikely that the Respondents selected the Domain Names without being aware of the Complainant’s well-known PRAXIS trademark, given that the Respondents use the Domain Names to operate pay-per-click websites that depend upon the notoriety of the PRAXIS trademark. To proceed with registration in the face of such knowledge clearly demonstrates bad faith on the part of the Respondents. See, e.g., Educational Testing Service v. International Names Ltd., WIPO Case No. D2007-0449 (bad faith registration and use found where “[t]he uncontested evidence shows that the Complainant’s trademarks ETS and TOEFL are distinctive and have been widely known for more than 45 years”, because “[under] these circumstances, the Panel is prepared to infer that the Respondent had actual knowledge of the Complainant’s trademark rights when it registered the confusingly similar domain name <etstoefl.org>.”); see also Educational Testing Service v. Jong-Cheol Seo, WIPO Case No. D2006-0056 (registration of domain name incorporating complainant’s widely known trademark with a strong reputation demonstrates bad faith on the part of respondent).
The Complainant submits that the Respondents registered the Domain Names with the specific intent to cause consumer confusion and to free ride on the vast goodwill associated with the Complainant’s PRAXIS trademark. Upon information and belief, the Complainant alleges that the Respondents registered the Domain Names with full knowledge that they are identical or confusingly similar to the Complainant’s PRAXIS trademark in order to re-route, to the Respondents’ websites, Internet traffic likely destined for the websites operated by the Complainant. Therefore, the Complainant contends, the Respondents registered the Domain Names in bad faith.
Not only have the Respondents registered the Domain Names in bad faith, they are also using the Domain Names in bad faith. Upon information and belief, the Complainants submit that the Respondents use the Domain Names to operate pay-per-click websites from which they derive substantial revenue through Internet advertising. The Respondents have created online directories at the websites for the Domain Names that, on the surface, resemble Internet portal sites such as Yahoo. However, in contrast to Yahoo’s listings, each of the listings in the Respondents’ directories is an advertiser-supported listing from which the Respondents derive income based upon the number of times visitors to the sites click on the listing. The Respondents’ chances for increased revenues rise in direct proportion to the amount of Internet traffic that the Respondents attract to their online directories. The Complainant submits that this is the primary reason the Respondents registered and use the Domain Names – to free ride on the vast goodwill associated with the Complainant’s well-known PRAXIS trademark –and the Internet traffic intended for the Complainant’s website. Copies of representative pages from the Respondents’ websites hosted at the Domain Names have been provided to the Panel.
Such use constitutes bad faith on the part of the Respondents. See, e.g., Dollar Rent A Car Inc. v. Albert Jackson, NAF Claim No. FA187421 (finding of bad faith appropriate where respondent operates pay-per-click website using domain name that incorporates complainant’s trademark); Credit Industriel et Commercial S.A. v. Richar J., WIPO Case No. D2005-0569; Société Air France v. Bing G Glu, WIPO Case No. D2006-0834; Société Air France v. WWW Enterprise, Inc., WIPO Case No. D2005-1160; WPT Enterprises, Inc. v. Kaneoka Senuchi, WIPO Case No. D2005-1144; Dr. Ing h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311; The Black and Decker Corporation v. Clinical Evaluations, NAF Claim No. FA0112629; Yahoo! Inc. v. Web Master a/k/a MedGo, NAF Claim No. FA0127717; and Lowermybills.com v. Michele Dinoia, NAF Claim No. FA0183728.
Furthermore, the Respondents’ use and registration of the Domain Names disrupts the Complainant’s business by depriving it of the right to host websites at the Domain Names and to provide information concerning its products and services to test candidates. Such acts of the Respondents constitute bad faith use and registration of the Domain Names, as illustrated by the examples set forth in paragraph 4(b) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant enjoys exclusive rights in the well-known PRAXIS trademark in respect of goods and services relating to educational testing by virtue of its registrations for the marks and its long-term and widespread use of the marks since 1991. The Complainant has never consented to the Respondents’ registration of the mark as a domain name.
The Complainant has never authorized the Respondents to use the PRAXIS trademark for any business or commercial purpose and any use of the Domain Names for such purposes would constitute infringing use. See Citigroup, Inc. v. Ghinwa et al., WIPO Case No. D2003-0494 (“There is nothing in the circumstances surrounding this registration to indicate that it would be possible for the Respondents to make any bona fide use of the said <citibankonline.biz> domain name to establish a website to exchange goods, services, or property of any kind, otherwise in the ordinary course of trade or business or to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business. Any such use would not by definition be bona fide as it would inevitably cause a conflict with the Complainants’ prior rights in its trademarks.”).
Accordingly, the Respondents’ use of the Domain Names suggests a false designation of origin or sponsorship for the Respondents’ goods and services and those of the businesses listed in its online directories. The Complainant submits that the Respondents undoubtedly chose the Domain Names: (1) in an effort to free ride on the goodwill associated with the distinctive PRAXIS trademark in which the Complainant enjoys exclusive rights; and/or (2) for the purpose of creating the false impression that the Respondents are authorized agents, licensees or representatives of the Complainant, which the Respondents are not.
Therefore, the Respondents have registered and are using the Domain Names in bad faith.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.
6. Discussion And Findings
To qualify for cancellation or transfer of the Domain Names, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases where the respondents failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, a panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In this case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the Domain Names incorporate what the Panel finds to be the Complainant’s well-known registered trademark PRAXIS. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information on the Complainant’s company and its products and services marketed under its well-known registered trademark PRAXIS.
The Panel agrees with the Complainant’s contention that the addition of the word “education“ to the PRAXIS trademark as part of the Domain Names and also the composite word “educationgroup” in the case of the last of the Domain Names is, in each case, descriptive and does not serve as a distinguishing feature, for trademark purposes. On the contrary, these additions create further confusion due to the fact that the Complainant is in the business of education and that the Complainant’s trademark relates to education and distinguishes the Complainant’s educational products and services, which it provides in the course of its business.
Also, the addition of the top level domains of <org>, <.net>, <.mobi>, <.biz> and <.info> to the disputed domain names does not constitute an element in the disputed domain names so as to avoid confusing similarity; but, in each case, is purely for domain name registration purposes. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.
In view of the above, the Panel finds that the Domain Names are confusingly similar to the Complainant’s well-known registered trademark PRAXIS, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in, and has used commercially for several years. The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain names (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of the Respondents’ use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services before any notice to the Respondents of the dispute;
- whether the Respondents (as individuals, business, or other organization) has been commonly known by the domain names, even if the Respondents have acquired no trademark or service mark rights;
- whether the Respondents are making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondents were acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain names. On the contrary, if the Respondents had any such rights or legitimate interests, the Respondents would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Nor is there any evidence before the Panel that the Respondents have been authorized or licensed by the Complainant to use the Complainant’s trademark, PRAXIS. In fact, in the view of the Panel, the adoption by the Respondents of domain names confusingly similar to the Complainant’s well-known registered trademark PRAXIS inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services (see further on this point below). Further, the Respondents may be consequently tarnishing the Complainant’s well-known and, therefore, valuable trademark PRAXIS, and also the attempt to usurp valuable goodwill that the Complainant has established in this trademark through advertising and commercial use of the same over several years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. In fact, the Respondents are using the Domain Names for commercial gain to divert consumers misleadingly to its website and, as mentioned by the Complainant above, are deriving advertising revenue from such use, which can hardly be described as bona fide.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain names; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain names.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. This list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the record, the Panel considers that the Respondent, by registering the Domain Names, is trading unfairly on the Complainant’s valuable goodwill established in its well-known registered trademark PRAXIS, of which the Respondents, in the opinion of the Panel, must have been aware at the time of registering the Domain Names.
Again, by registering and using the Domain Names incorporating the well-known registered trademark PRAXIS, the effect is to mislead Internet users and consumers into thinking that the Respondents are, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondents’ activities are approved or endorsed by the Complainant. None of which, on the basis of the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondents. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-0493, in which it was stated that, “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondents of the Domain Names is confusing and misleading and, in the view of the Panel, is yet a further indication that the Domain Names were registered and are being used in bad faith by the Respondents.
As the Domain Names resolve to a website operated by the Respondents, on which there are links to the products and services of competitors of the Complainant, this, in the view of the Panel, constitutes further evidence of registration and use of the disputed domain names in bad faith on the part of the Respondents. See Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462. See also The Procter & Gamble Company, Tambrands Inc. v. Reserved for Customers, MustNeed.com, WIPO Case No. D2009-0944. The Panel finds that this situation clearly amounts to bad faith on the part of the Respondents.
Finally, the failure of the Respondents to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondents. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, as well as those advanced above by the Complainant and supported by previous UDRP cases cited by the Complainant, the Panel concludes that the Respondents have registered and are using the disputed domain names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names:
be transferred to the Complainant.
Dated: April 9, 2011