WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laureate Education, Inc., Walden University, LLC v. YellowfinState, LLC, Michael Preneur
Case No. D2011-2301
1. The Parties
The Complainant is Laureate Education, Inc. of Baltimore, Maryland, United States of America, together with Walden University, LLC of Minneapolis, Minnesota, United States of America, represented by Venable, LLP, United States of America.
The Respondent is YellowfinState, LLC, Michael Preneur of Toulouse, France.
2. The Domain Name and Registrar
The disputed domain name <waldenuniversity.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2011. On December 29, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 29, 2011, eNom 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 January 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2012.
The Center appointed Keith Gymer as the sole panelist in this matter on February 1, 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, Laureate Education, Inc. operates an international network of institutions of higher education. One of these is Walden University, owned by Walden University, LLC, a wholly-owned subsidiary of Laureate Education, Inc. These joint Complainants are collectively referred to herein as the Complainant.
Laureate’s institutions offer hundreds of career-focused, undergraduate, master's, and doctoral degree programs.
One of Laureate's flagship institutions in the United States is Walden University. Walden University is a leading institution of higher education in distance learning and online formats. Walden University operates a website at “www.waldenu.edu”.
Walden University offers Bachelor of Science, Master of Science, Master of Business Administration, Master of Public Administration, Master of Public Health, Ed.S. (Education Specialist), Ed.D. (Doctor of Education), D.B.A. (Doctor of Business Administration), and Ph.D. (Doctor of Philosophy) degrees, in a number of academic fields.
A United States certificate of registration 2,712,892 for the mark WALDEN UNIVERSITY in Class 41 was issued on May 6, 2003, in the name of Walden University, Inc., based on a claim to first use dating from March 1, 1978.
The Registrant (Respondent) for the disputed domain name, <waldenuniversity.com>, is identified on the WhoIs record as YellowfinState, LLC, Michael Preneur, with an address in France. The WhoIs record indicates that the disputed domain name was first registered on May 18, 2004.
5. Parties’ Contentions
The Complainant’s contentions, which were supported by various Exhibits and a sworn declaration given by Mr. Tognola (Tognola Declaration), Executive Director for Marketing for Walden University, LLC., are summarized as follows:
The Complainant claims prior registered rights in the name and mark WALDEN UNIVERSITY, and common law rights in WALDEN by virtue of use since 1978.
The disputed domain name is confusingly similar to the Complainant's WALDEN UNIVERSITY and WALDEN marks.
The disputed domain name is identical to the Complainant’s registered mark WALDEN UNIVERSITY.
The Respondent has no rights or legitimate interests to the name WALDEN UNIVERSITY.
The Complainant’s rights predate the Respondent’s registration of the disputed domain name. The Complainant’s first use date as set forth in its United States Trademark registration for WALDEN UNIVERSITY is 1978. The Respondent is not an authorized user of the WALDEN or WALDEN UNIVERSITY service marks.
The disputed domain name has been registered and is being used in bad faith.
As at the date of the Complaint, the Respondent uses the disputed domain name to redirect Internet users to a website at “www.classesandcareers.com” which contains an advertisement for Walden University. The Respondent is intending to divert current and future Walden University students, educators, and business partners to this site. The Complainant believes that the Respondent does this in order to generate revenue from lead generation.
Since Walden University provides online educational services, Walden’s students come from all over the world. Walden University pays “eduportals” for leads. These leads are individuals who have expressed an interest in learning more or about enrolling with Walden University.
For example, a person searching for “online business degree” might end up being presented with Walden University as a viable match based on their information submitted on the eduportal website. One of the “eduportals” Walden University works with is called One On One Marketing, through an intermediary, Datamark.
It came to the Complainant’s attention that a third party had registered the disputed domain name <waldenuniversity.com> and that the disputed domain name redirects to a website called “www.classesandcareers.com”. This website is an eduportal associated with One On One Marketing. The user is redirected to a page on “www.classesandcareers.com” that contains information about Walden University, but also provides links to information about the Complainant’s competitors.
The Complainant does not agree to pay for leads that are generated using the Complainant’s own name and registered service mark. The Complainant’s contract with One On One Marketing specifically prohibits the use of “Walden University” as a paid search term. The Complainant’s general advertising guidelines for outside marketing partners also prohibit use of the Complainant’s trademark for leads that offer any information about its competitors. The Complainant asserts that the Respondent has gamed the legitimate lead system by getting eduportals to pay him for leads generated from the disputed domain name using the Complainant’s own name, which then introduce the potential students to information about competitive educational programs.
It appears that the disputed domain name <waldenuniversity.com> was registered and is used to generate leads at the Complainant’s expense and to provide information about the Complainant’s competitors.
Further evidence of use in bad faith is the amount of difficulty the Complainant has had, going through its business partners, in attempting to fix this problem. For example, the Complainant received an email from Datamark, which indicated that the Complainant would have to pay six figures for the disputed domain name and in the meantime would need to pay for the leads it was generating. This suggests that the Respondent is holding the disputed domain name for ransom. When this communication failed to fix the problem, the Complainant’s counsel tried to contact the Respondent directly by email, but got no reply.
In view of the above, the Complainant requests that the disputed domain name be transferred to the Complainant Laureate Education, Inc.
The Respondent did not reply and offered no response to any of the Complainant’s contentions.
6. Discussion and Findings
In order for a panel to decide to grant the remedy of transfer or cancellation of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that
(i) the domain name is 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 name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a formal Response to the Complaint in this case does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate.”
Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
A. Identical or Confusingly Similar
The disputed domain name is <waldenuniversity.com>.
The Complainant has demonstrated United States registered trademark rights in WALDEN UNIVERSITY, originally issued in 2003 in the name of Walden University, Inc. Although the Complainant did not expressly point out that Walden University, Inc., has subsequently changed its name to Walden University, LLC (which can readily be confirmed by inspection of the official United States Patent and Trademark Office record for the registration), the Panel would have accepted the Complainant’s unchallenged claim to rights in the registration in any event. The Complainant clearly also has a justifiable claim to have established significant common law rights as well, for example, through longstanding use of its name and website using the domain name <waldenu.edu>, which the WhoIs records show was first registered in 1994.
The generic top-level domain suffix “.com” is not pertinent to consideration of confusing similarity.
The Panel therefore concludes that the disputed domain name is identical to a trademark in which the Complainant has rights, and the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has made no claims to any relevant prior rights of its own. Clearly, the Respondent is not itself known by the disputed domain name, nor does the Respondent claim to have made any legitimate use of the disputed domain name. The Complainant has affirmed that the Respondent is not an authorized user of the WALDEN UNIVERSITY mark.
The evidence supports the view that the Respondent has simply registered the disputed domain name for use for a website in order to take advantage of the Complainant’s own paid-for, lead generation programme, by passing themselves off as being associated with, or authorized by, the Complainant.
Consequently, the Panel accepts the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the requirements of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following are pertinent examples of the sort of conduct which the Panel may take (without limitation) as evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 website or location or of a product or service on the respondent’s website or location.
The disputed domain name was first registered in May 2004. That was a year after the Complainant’s United States trademark was registered and over 25 years since Walden University was established. The Panel has seen no evidence to suggest that the disputed domain name might have been innocently registered without knowledge of the existence of the Complainant or its rights. The Respondent has offered no challenge to the assertion that the disputed domain name was registered in bad faith. Indeed, on the evidence, the Panel considers it improbable that the disputed domain name could have been registered with anything other than a deliberate, bad faith, intention to exploit the established reputation, goodwill and rights of the Complainant in the WALDEN UNIVERSITY name and mark.
There might have been a question as to why it has apparently taken the Complainant over seven years to raise a complaint about this disputed domain name, and whether it might have knowingly tolerated the registration and use of the disputed domain name during that extended period. The Complainant has not indicated when it actually first became aware of the existence and use of the disputed domain name, simply stating that “It came to our attention that a third party had registered www.waldenuniversity.com” and “It came to our attention that the domain name www.waldenuniversity.com redirects to a website called www.classesandcareers.com.” However, in this case the Respondent has not raised this issue and there is also no evidence of when the redirection and links complained of were first put in place by the Respondent. It is quite conceivable that use of the disputed domain name had been at a low level that, until recently, it would not have come to the Complainant’s attention. In this Panel’s experience, domainers are well aware that cost/benefit analysis can dictate that companies will often just put up with unauthorised, but low-level, parasitic use of confusingly similar domain names, because the cost of pursuing them may exceed the estimated losses due to the parasitic activities.
In the present case, the Complainant’s evidence strongly suggests that the disputed domain name has been used for click-through, affiliate-related fraud, whereby a site is set up using a relevant domain name (i.e. <waldenuniversity.com>) and either populated with related, paid-for, click-through links itself or redirected to another site which is so populated (i.e. the “eduportal” “www.classesandcareers.com”, in the present case), and used to artificially inflate the number of prospective leads apparently passed on by the “eduportal” and for which the Complainant is charged a fee (c.f. paragraph 4(b)(iv) of the Policy). Although there is no evidence that the “eduportal” or its intermediary agent is directly connected with the Respondent, the evidence of the Tognola Declaration suggests that the “eduportal” and the intermediary were aware of the redirections from the disputed domain name and were themselves in contact with whoever was managing them for the Respondent.
(The Panel notes, for the record, that since the Complaint was filed, the previously evidenced redirection to “www.classesandcareers.com” had been changed. When the Panel accessed the URL “www.waldenuniversity.com” it was redirected to “www.bestschools.com”, a site also populated with links to various educational resources, and not limited to Walden University. The WhoIs records show that the domain name <bestschools.com> is also in the Respondent’s name.)
In the Panel’s view, the Complainant’s evidence, which has not been rebutted or challenged by the Respondent, establishes to the Panel’s satisfaction that the Respondent has registered and used the disputed domain name for the purpose of operating a website using the Complainant’s name and mark, for unauthorized commercial gain, indirectly through pay-per-click abuse.
The example of paragraph 4(b)(iv) of the Policy is therefore directly applicable to the present dispute.
As reported in the Tognola Declaration, when the Complainant pointed out that it did not agree to payment for leads generated using the Complainant’s own WALDEN UNIVERSITY name and mark and did not authorize any such use, it received the following response from the intermediary agent:
“We have confirmed that the domain will get picked up by one of our competitors within 48 hours that may not have a relationship with Walden.
There is likely chance that this new group will drive traffic to one of your competitors which could significantly disrupt the Walden brand.
This will damage the confidence we have built with the domain owner through the domain management partner because the owner will see that we are not committed to running and managing this domain. (It's similar to having a renter that misses a payment). I can tell you that one on one Marketing spends thousands of dollars per month for the rights to manage this domain. The probability that the owner will ask well over six figures to purchase the domain is high.”
The message clearly conveyed is that the Complainant should carry on paying for leads coming from the unauthorized use of its name because if the disputed domain name were dropped it could be picked up and further misused by some other “new group”, who might make even more abusive exploitation of the disputed domain name. And if the Complainant wanted to try to purchase the disputed domain name it would have to pay “well over six figures”.
Unsurprisingly, the Complainant has taken exception to that wholly unethical line of argument, and decided to file this Complaint.
What degree of collusion there may have been between the intermediary agent, the “eduportal” and the Respondent is uncertain, but there is a strong implication there that the disputed domain name could have been held for ransom for considerably more than the out-of pocket costs directly related to the disputed domain name.
The example of paragraph 4(b)(i) of the Policy is therefore also applicable to the present dispute.
Accordingly, for the purposes of the Policy, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is also met.
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 <waldenuniversity.com> be transferred to the Complainant Laureate Education, Inc.
Dated: February 3, 2012