World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Study in the U.S.A., Inc. v. EI Group Ventures, LTD d/b/a/ The EI Group

Case No. D2011-0348

1. The Parties

The Complainant is Study in the U.S.A., Inc. of Seattle, Washington, United States of America, represented by Black Lowe & Graham PLLC, United States of America.

The Respondent is EI Group Ventures, LTD d/b/a/ The EI Group of Victoria, British Columbia, Canada, represented by Jones Emery Hargreaves Swan, Canada.

2. The Domain Names and Registrar

The disputed domain names <studyintheusa-bh.com>, <studyintheusa-co.com>, <studyintheusa-id.com>, <studyintheusa-kw.com>, <studyintheusa-om.com>, <studyintheusa-sa.com>, <studyintheusa-th.com>, and <studyintheusa-tr.com> (the “Domain Names”) are registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2011. On February 22, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Names. On February 22, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 26, 2011. The Center verified that the Complaint together with the amendment to the 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 Response was filed with the Center on March 19, 2011.

The Center appointed Alan L. Limbury as the sole panelist in this matter on March 28, 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 was incorporated in 1977 under the name Actualities, Inc. In 1978 it started the business of promoting and advertising educational opportunities in the United States to potential students from other countries. In 1982 the name of the Complainant was changed to Study in the U.S.A., Inc. Since 1988 the Complainant has participated in student educational fairs in certain countries. It has used the domain name <studyusa.com> for its website since 1996.

On June 20, 1989, the Complainant became the proprietor of United States of America federally registered trademark No.1,544,382, being a logo mark incorporating the words “Study in the USA” with stars between the letters USA (“the Complainant’s logo”), on the Principal Register, in class 16, with a claim to first use in commerce on June 1, 1984 (this trademark was subsequently cancelled on January 23, 2010).

In or about October, 1998, the President of the Respondent, made an unsuccessful offer to purchase the educational fair rights held by the Complainant, after having visited the Complainant’s office and having received from the President of the Complainant an overview of the Complainant’s history, business lines and future plans.

On November 18, 2008, the Complainant became the proprietor of United States of America federally registered service mark No.3,533,675 STUDY IN THE USA, being a word mark, on the Principal Register, in classes 35 and 41, with a claim to first use in commerce on May 21, 1995.

On June 30, 2009, the Complainant became the proprietor of United States of America federally registered trademark No.3,647,171 STUDY IN THE USA, being a word mark, on the Principal Register, in class 16, with a claim to first use in commerce on May 21, 1995.

The Domain Names were registered on August 17, 2009. They resolve to websites promoting, in different languages, educational opportunities in the United States of America, with a logo incorporating the words “Study in the USA”, with a depiction of stars and stripes (“the Respondent’s logo”). The stars are not between the letters “USA”.

In December, 2010, the Complainant applied in the United States of America to register the Complainant’s logo in classes 16, 35 and 41. This application, serial No. 85190617, is pending.

5. Parties’ Contentions

A. Complainant

In addition to its registered trademark rights, the Complainant claims common law rights in the STUDY IN THE USA mark since at least 1983 and that its mark has become famous. It says the Domain Names are confusingly similar to its mark; that the Respondent has no rights or legitimate interest in the Domain Names, which were registered and are being used in bad faith.

As to legitimacy, the Complainant says the Respondent has no permission from the Complainant to register or use the Domain Names and is trading on the Complainant’s mark for financial benefit; that the Respondent’s logo is so similar the Complainant’s logo that it gives an impression of legitimacy that the Complainant has worked for decades to develop, thereby luring Internet users into believing the Respondent’s websites are those of the Complainant.

As to bad faith, the Complainant says the Respondent has had full knowledge of the nature of the Complainant’s business since at least 1998. Registration of a domain name incorporating a trademark of one of the parties that have discussed a potential business relationship is evidence of a bad faith registration: Kapula Candles (Proprietary) Limited v. Wayne Stuart Dixon, WIPO Case No. D2002-0945. In each instance of registration of the Domain Names, the Respondent sought impermissibly to use and exploit, and create a likelihood of confusion with, the Complainant’s mark by using the mark for its own commercial gain in unsanctioned websites. Even assuming that none of the specific circumstances of bad faith specified in the Rules, paragraph 4(b) were present, the totality of the factual circumstances indicates that the Domain Names are being used in bad faith and should, accordingly, be transferred to the Complainant.

B. Respondent

The Respondent denies “full knowledge” of the nature of the Complainant’s business since October, 1998. It admits the discussions at about that time which led to its unsuccessful offer to buy the Complainant’s educational fair rights and says that at that time, the Complainant had no registered trademark consisting of the phrase “study in the USA”. The Respondent denies any knowledge of the Complainant having common law rights and says it became aware of the Complainant’s registered trademark rights upon being informed of them by the Complainant’s President in about October, 2010.

The Respondent says the Complainant’s mark is highly descriptive and therefore the Complainant has limited ability to prevent others from comparable use of the term in a domain name, citing Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635. The Respondent denies that the Complainant’s mark is famous.

As to legitimacy, the Respondent says that since 1999 it has been operating websites offering educational opportunities in Canada and North America; that in about July, 2008, it began creating networks of websites and that the Domain Names are now part of one of its networks comprising over 100 websites and known as the “CollegesintheUSA.com Network”. The Respondent’s strategy for this network involved creating top level domain websites for a variety of countries with the name “studyintheusa”, a name selected solely on an assessment that it would provide optimum search engine optimization, given the Respondent’s target audience. The Respondent says it began to implement this strategy before the Complainant’s trademark registrations were issued and accordingly the Respondent cannot be charged with being on constructive notice of the Complainant’s rights, citing Warm Things, Inc., v. Adam S. Weiss, WIPO Case No. D2002-0085.

The Respondent says that when it registered the Domain Names, it had no knowledge of the Complainant’s trademark, nor did it intend to benefit from any association with the Complainant. Rather, the Respondent simply used the phrase “studyintheusa” in a manner that was consistent with common public use as it was entitled to do. See Rollerblade, Inc., v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427.

As to bad faith, the Respondent denies each of the circumstances set out in the Policy, paragraph 4(b) and says it had no knowledge of the Complainant’s mark when registering the Domain Names and did not select them to take advantage of the Complainant’s mark. Accordingly, there can be no finding of bad faith: Aspenwood Dental Associates, Inc., v. Thomas Wade, WIPO Case No. D2009-0675.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements with respect to each of the Domain Names:

(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.

A. Identical or Confusingly Similar

The Complainant has registered trademark rights in STUDY IN THE USA. All the Domain Names incorporate that mark in its entirety and the mark is the most significant element of each of the Domain Names. The Panel notes that the Domain Names incorporate also the terms “bh”, “co”, “” id”, “kw”, “om”, “sa”, “th” and “tr”, which are abbreviations of geographical terms. The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s registered mark.

As to the submission that the Complainant has limited ability to prevent others from comparable use of a highly descriptive mark in a domain name, the learned three-member panel held in Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635, that “the holding of a registered mark is sufficient for the purposes of the Policy”, citing Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653 and Hola S.A. and Hello Limited v. Idealab, WIPO Case No. D2002-0089.

The Complainant has established this element of its case.

B. Rights or Legitimate Interests

The Panel has found that the Domain Names are confusingly similar to the Complainant’s mark. It is clear that the Complainant has not authorized the Respondent to use that mark in a domain name or otherwise. There is no suggestion that the Respondent is commonly known by any of the Domain Names, nor that the Respondent has been making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain. Accordingly, neither paragraph 4(c)(ii) nor paragraph 4(c)(iii) of the Policy applies. The Complainant has thus established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Names. The burden therefore shifts to the Respondent to produce credible evidence that it was using the Domain Names in connection with a bona fide offering of goods or services before it received notice of the present administrative proceeding (Paragraph 4(c)(i) of the Policy), or that it has some other basis for claiming a right or legitimate interest in the Domain Names.

The phrase “study in the USA” is a descriptive phrase comprising dictionary words, and is apt to describe part of the business of the Respondent. A domain name registrant with no knowledge of the Complainant or of its marks would have a legitimate interest in registering a domain name incorporating that phrase for the purpose of promoting study in the United States of America by students from other countries. The Respondent’s prior knowledge of the Complainant is critical to the outcome of this proceeding and to the findings of the Panel in relation to the second and third elements which the Complainant is required to prove.

The Respondent says it began to implement its strategy of creating websites for a variety of countries with the name “studyintheusa” before the Complainant’s trademark registrations were issued. However, by the time the Respondent registered the Domain Names, on August 17, 2009, the Complainant had already registered three trademarks. Knowing of the Complainant and its corporate name, and having sought unsuccessfully to acquire part of the Complainant’s business in 1998, the Respondent set out, by registering the Domain Names, to compete with the Complainant (unlike the respondent in Warm Things, Inc., v. Adam S. Weiss, WIPO Case No. D2002-0085, cited by the Respondent). The registration agreement, which incorporates the Policy, contains a warranty that, to the registrant’s knowledge, the registration of the domain name will not “infring[e] the legal rights of a third party”. In these circumstances, if the Respondent failed to conduct a trademark search, which would have revealed the Complainant’s registered trademarks, the Respondent was willfully blind to their existence. Hence the Panel finds that the Respondent has not shown that its use of the Domain Names, prior to receiving notice of this administrative proceeding, was bona fide.

Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant has established this element of its case.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires proof of both registration in bad faith and use in bad faith. The circumstances set out in paragraph 4(b) as evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy are expressed to be non-exclusive. None of those circumstances are applicable here.

The Respondent cites Aspenwood Dental Associates, Inc. v. Thomas Wade, WIPO Case No. D2009-0675 for the proposition that there can be no finding of bad faith where a respondent had no knowledge of the complainant’s trademark at the time of the registration of the disputed domain name. In that case the domain name was registered before the complainant filed its trademark application. The panel in that case held that, to meet the burden of proving that a respondent registered the disputed domain name in bad faith, a complainant must ordinarily demonstrate (not simply allege) that the respondent had actual knowledge of the complainant’s mark and selected the disputed domain name to take advantage of it. The word “ordinarily” is of critical importance here, because, as the WIPO Overview of WIPO Panel views on selected UDRP questions, second edition (“WIPO Overview 2.0”) explains at 3.1: “In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found” [cited cases omitted]. That is the situation where the Complainant’s trademark rights arose after the domain name registration.

Here, prior to the registration of the Domain Names, the Complainant had registered three trademarks and the Respondent had made an offer to buy part of the Complainant’s business. Even assuming that the Respondent was unaware of the Complainant’s registered trademarks, it had known of the Complainant and its corporate name since 1998. Both parties were and still are in the same line of business. When the Respondent decided to register the Domain Names as part of its strategy to extend its business to promote educational opportunities in the United States of America, it was fully aware of the Complainant and its corporate name and that it would be in competition with the Complainant. The Panel finds that the Respondent must have appreciated that the Domain Names would be likely to confuse anyone familiar with the Complainant and its business and must have intended to take advantage of that confusion. Accordingly, the Panel finds that the Domain Names were registered in bad faith, whether or not the Respondent was aware of the Complainant’s registered trademarks at the time.

The Respondent’s logo, used prominently on the home page of each of the websites to which the Domain Names resolve, is not identical to the Complainant’s logo but the Panel finds it to be sufficiently similar to be likely to lead Internet users familiar with the Complainant to believe they had reached the Complainant’s website. Given the Respondent’s prior knowledge of the Complainant, the Panel finds that the Respondent’s use of the Domain Names to lead to such websites is use in bad faith.

The Complainant has established this element of its case.

7. Decision

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 <studyintheusa-bh.com>, <studyintheusa-co.com>, <studyintheusa-id.com>, <studyintheusa-kw.com>, <studyintheusa-om.com>, <studyintheusa-sa.com>, <studyintheusa-th.com>, and <studyintheusa-tr.com> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Dated: April 9, 2011

 

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