World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pearson Education, Inc. v. Identify Protect Limited / Brian Benedict M Lu

Case No. D2012-0743

1. The Parties

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

The Respondent is Identify Protect Limited / Brian Benedict M Lu of Surrey, United Kingdom of Great Britain and Northern Ireland (“U.K.”) and Davao, Phillipines, respectively.

2. The Domain Names and Registrar

The disputed domain names <poptropica101.com> and <poptropica360.com> are registered with Mesh Digital Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2012. On April 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 11, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 12, 2012.

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 April 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2012.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on May 8, 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 has submitted evidence that it is the owner of the trademark POPTROPICA in class 41 with U.S. registration No. 3,599,286, filed on July 3, 2007 and registered on March 31, 2009.

The domain name <poptropica101.com> was registered on October 18, 2011 and <poptropica360.com> was registered on October 20, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant is an international educational publishing and technology company that owns and operates the POPTROPICA online game and offers many related products and services under the POPTROPICA trademark. POPTROPICA is an online, animated, educational role-playing game located at “www.poptropica.com”. The POPTROPICA trademark is a fanciful, arbitrary mark and as such an inherently distinctive trademark subject to the broadest scope of trademark protection.

Since 2007, the Complainant has provided a safe and controlled environment for school aged children to interact and play online. With over 80 million worldwide users, the POPTROPICA brand has acquired significant goodwill at least four years before the disputed domain names <poptropica101.com> and <poptropica360.com> were registered in October 2011.

The disputed domain names are alphabetically identical to the Complainant’s trademark POPTROPICA. The disputed domain names include the POPTROPICA trademark in its entirety, with the addition of the insignificant numbers “101” and “360”, which do not differentiate the disputed domain names from the trademark.

The websites, to which the disputed domain names resolve, prominently display the Complainant’s POPTROPICA trademark at the top and display copyright notices on the bottom of the pages that are almost identical to the Complainant’s copyright notices. The Respondent does not list the “101” and “360” numbers contained in the disputed domain names in the copyright notices. Thus, the Respondent’s copyright notices states “COPYRIGHT 2012 POPTROPICA”. As a result, Internet users are likely to believe that the disputed domain names and the services offered therein are offered by, affiliated with, or sponsored by the Complainant and/or its trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent does not own any trademark or service mark registrations encompassing the disputed domain names, nor any variations thereof. The Respondent is not commonly known by the disputed domain names and is not making a legitimate, noncommercial fair use of the disputed domain names.

The Respondent is diverting consumers looking for the Complainant’s services and profits from the Complainant’s trademarks by placing sponsored advertisements on the websites to which the disputed domain names resolve. The Respondent’s use is not regarded as a bona fide offering of goods or services which would give rights or legitimate interests in accordance with the Policy.

The disputed domain names were registered anonymously two days apart on October 18, 2011 and October 20, 2011. The Respondent’s registration and use of the disputed domain names put the Complainant at risk of irreparable injury because the Complainant cannot control the Respondent’s use. Children looking for the Complainant’s games are likely to be exposed to inappropriate content, such as games featuring guns and violence.

The Respondent attempts to confuse consumers and forces sponsored advertisements on consumers when clicking on links to games on the websites to which the disputed domain names resolve.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark POPTROPICA.

The disputed domain names <poptropica101.com> and <poptropica360.com> incorporate the Complainant’s trademark POPTROPICA in its entirety with the addition of the numbers “101” respectively “360”. The Panel agrees with the Complainant’s contention that the ability for the numbers to distinguish the disputed domain names from the trademark of the Complainant is very limited.

Having the above in mind, it is the opinion of this Panel that the disputed domain names <poptropica101.com> and <poptropica360.com> are confusingly similar to the Complainant’s trademark POPTROPICA and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant’s trademark registration for POPTROPICA predates the Respondent’s registration of the disputed domain names <poptropica101.com> and <poptropica360.com>. The Complainant has not licensed, approved or in any way consented to the Respondent’s use of the trademark in any of the disputed domain names.

From the submitted evidence in this case, it is clear that the Respondent’s websites, to which the disputed domain names resolve, contain sponsored commercial links to third party websites. The Respondent’s use of the disputed domain names serves the purpose of generating revenue via pay-per-click advertisements and it has been held in previous cases that such use does not represent a use in connection with a bona fide offering of goods and services.

Despite given the opportunity, the Respondent has not submitted any evidence in this case indicating that the Respondent owns any trademark rights similar to the disputed domain names or that the Respondent is or has been commonly known by the disputed domain names.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names <poptropica101.com> and <poptropica360.com>. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain names’ registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or

(ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain names have intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

The evidence submitted by the Complainant demonstrates that the Respondent registered and used the disputed domain names in connection with websites containing sponsored advertising links to commercial third party websites promoting and/or offering third party products and services. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of registration and use in bad faith according to previous case law. See e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451.

Furthermore, the evidence indicates that the Respondent registered and used the disputed domain names <poptropica101.com> and <poptropica360.com> to provide online games to children. Considering that the disputed domain names are used for the same type of service for which the trademark POPTROPICA is registered and in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark when the Respondent registered the disputed domain names.

Thus, the evidence in the case before the Panel indicates that the disputed domain names <poptropica101.com> and <poptropica360.com> have intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the websites.

There is no evidence in the case that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain names <poptropica101.com> and <poptropica360.com> have been registered and used in bad faith.

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 names <poptropica101.com> and <poptropica360.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Dated: May 14, 2012

 

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