World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pearson Education, Inc. v. Webmaster Design

Case No. D2011-2149

1. The Parties

The Complainant is Pearson Education, Inc., Upper Saddle River, New Jersey, United States of America, represented by Kilpatrick Stockton LLP, United States of America (“United States”).

The Respondent is Webmaster Design, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <prenticehall-textbooks.com> is registered with GoDaddy.com, LLC .

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 7, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On December 8, 2011, GoDaddy.com, LLC . transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 December 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2012.

The Center appointed Adam Taylor as the sole panelist in this matter on February 3, 2012. 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 a major educational publisher. The Complainant’s brands include “PRENTICE HALL”, which dates back to 1913. The Complainant currently publishes over 35,000 different educational titles in the United States, generating sales in excess of $1.3 billion annually.

Since 1997, the Complainant has offered many of its titles for sale via its own website at “www.prenticehall.com”

The Complainant owns the following United States trade marks for PRENTICE-HALLL: no. 1,332,044 (dated 17 August 1984 in international class 16), no. 1,332,639 (dated 21 August 1984 in international class 42) and no. 1,375,654 (dated 7 June 1985 in international class 9). (The registration certificates provided by the Complainant show “Prentice-Hall, Inc” as the proprietor of all three marks, but the Panel has determined from online searches at the United States Patent and Trademark Office that these trade marks have all been assigned to the Complainant.)

The Respondent registered the disputed domain name on July 5, 2010.

The Respondent has used the disputed domain name for a website headed “Prentice Hall Textbooks a name you Can Trust.” and “Pearson Prentice Hall Textbooks New and Used – buy or sell with us”. The website included sponsored links to third party book-related and publishing-related websites.

On August 15, 2011, the Complainant’s attorneys sent a cease and desist letter to the Respondent. There was no response.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant’s marks are not only strong performers in the marketplace but they are arbitrary marks, in that they have no meaning relating whatsoever to the goods and services offered by Complainant. It is well established that arbitrary marks are conceptually strong marks and entitled to the greatest protection.

The disputed domain name is identical or confusingly similar to the Complainant’s mark as it fully incorporates the mark. The mere addition of the common term “textbooks” is of no import.

Given the notoriety and unique character of Complainant’s marks, the similarity of the goods and services offered on the website associated with the disputed domain name, as well as the references to the Complainant on that website, there can be no doubt that consumers seeing the disputed domain name will reasonably believe that it is related to Complainant. Moreover, users who search the Internet for information concerning Complainant’s goods or services are likely to be misdirected to the disputed domain name and to believe that they are accessing a website connected to or authorized by Complainant, thus creating a likelihood of confusion.

Rights or Legitimate Interests

The Respondent registered the disputed domain name long after the Complainant had established rights in its mark through extensive use. Where, as here, the Complainant’s mark is well known and recognized, there can be no legitimate use by the Respondent.

The burden is on the Respondent to establish rights or legitimate interests in the disputed domain name. Here, the Respondent cannot demonstrate or establish any such rights or legitimate interests. There is no relationship between the Complainant and the Respondent giving rise to any licence, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s mark.

Moreover, since registering the disputed domain name the Respondent has used the disputed domain name solely for commercial gain.

Given the fame of the Complainant’s mark, as well as the fact that the Respondent has no rights in this mark, it is plain that the Respondent did not register the disputed domain name for any legitimate or fair-use purpose. Rather, the Respondent registered the disputed domain name in order to use the Complainant’s mark to profit from the web traffic generated by consumers seeking to purchase the Complainant’s products or services, or from the association and goodwill between the disputed domain name and the Complainant’s well-known mark.

Registered and Used in Bad Faith

The Respondent registered and is using the disputed domain name in bad faith for commercial gain and to profit from the resulting consumer confusion. Here, the Respondent’s bad faith registration of the disputed domain name is established by the fact that the disputed domain name fully incorporates the Complainant’s famous mark, and was acquired long after the mark attained its fame.

The fact that the Respondent has targeted the Complainant is clear from the notoriety of the Complainant’s mark. Clearly, the Respondent only could have registered a disputed domain name confusingly similar to the Complainant’s mark in order to capitalise on the Complainant’s hard-earned and valuable goodwill.

The Respondent’s bad faith registration and use is further established by the fact that the Respondent has sought to profit in bad faith from the disputed domain name. The Respondent is deriving a financial benefit from the disputed domain name by earning a profit from third-party advertisements that appear on the website.

Moreover, the Respondent failed to respond to the cease and desist letter it received from Complainant. This too is indicative of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has rights in the mark PRENTICE-HALL arising from its registered trade mark. The Complainant has also acquired common law rights deriving from its extensive use of the mark over many years.

The disputed domain name consists of the Complainant’s trade mark combined with the descriptive term “textbooks”. That term is insufficient to differentiate the disputed domain name from the trade mark; on the contrary it enhances the connection given that the Complainant’s mark is used in the field of educational publishing.

The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

Here, the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.

There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.

The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Although the Respondent is located in the United Kingdom and the Complainant is in the United States, in the Panel’s view it is obvious that the Respondent registered the disputed domain name with the Complainant’s distinctive trade mark in mind. Indeed the Respondent’s website purports to offer the Complainant’s products for sale.

Furthermore, despite this claim, there is no indication that the Respondent does indeed resell the Complainant’s products. On the contrary, it appears that the sole purpose of the site is to divert users to sponsored links to sites selling products competing with the Complainant. There is therefore no need to consider this case under reseller principles.

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <prenticehall-textbooks.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Dated: February 17, 2012

 

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