World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pearson Education, Inc. v. Evan Zheng

Case No. D2012-1789

1. The Parties

Complainant is Pearson Education, Inc. of New Jersey, United States of America represented by Day Pitney LLP, United States of America.

Respondent is Evan Zheng of GuangDong, China.

2. The Domain Name and Registrar

The disputed domain name <funbrain100.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 6, 2012. On September 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On September 11, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 3, 2012.

The Center appointed Roberto Bianchi as the sole panelist in this matter on October 12, 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

Complainant is a leading player in educational publishing, providing print and digital programs to help students learn at their own pace. Complainant administers programs in all subjects, for every age and level of student, from pre-kindergarten to year 12 through to higher education and into professional life, through publications, educational tools and testing services for professional development, training and certification. Complainant’s other primary operations include the Financial Times Group and the Penguin Group.

Complainant operates the “www.funbrain.com” website through Family Education Network, a part of Complainant’s business.

Complainant owns a federal trademark registration for FUNBRAIN, Reg. No. 4,124,501, Reg. date April 10, 2012, filed on April 29, 2011, covering “Educational and entertainment services, namely, providing a website featuring online electronic educational quizzes featuring a variety of subjects for elementary and middle school level students and online electronic educational games” in International Class 41 and claiming a date of first use/first use in commerce of 1997.

Funbrain.com, L.L.C, initially owned United States Trademark Reg. No. 2,395,317, Reg. dated October 17, 2000, filed on June 9, 1999, and covering “Educational services, namely, providing online quizzes and educational games” in International Class 41, claiming a date of first use/first use in commerce of 1997. However, the registration inadvertently lapsed, and was cancelled on May 20, 2011.

Around 2000, Funbrain.com became a part of Family Education Network, which in turn is a part of Complainant’s business.

The disputed domain name was registered on December 13, 2010.

A printout of the website at the disputed domain name obtained during a look-up visit conducted by the Center on September 12, 2012 shows that at the website of the disputed domain name, under the title “FunBrain100 – Play Free Games at Funbrain100.com” are numerous online games for children being offered, including “Super Mario Cross”, “Highway Pursuit 2”, “Mario ATV Trip”, “Stunt Master”, “Crush The Castle 2”, “Street Fighter Alpha” amongst others.

On October 24, 2012, the Panel visited the website at the disputed domain name. During this visit the Panel confirmed that the user of the website, upon clicking on the name or frame corresponding to one of these games, is shown commercial advertising from third parties. This action presumably generates income for Respondent via a pay-per-click system.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends as follows:

Complainant’s FUNBRAIN brand was developed by Funbrain.com, L.L.C., a business unit of Complainant. Complainant acquired Funbrain.com, L.L.C., and all its trademark and intellectual property rights through a series of mergers and acquisitions ending in 1999. Since 1997, Complainant has substantially, continuously, and exclusively used the FUNBRAIN mark in connection with the “www.funbrain.com” website and the services offered thereon. Complainant has acquired common law trademark rights in and to the FUNBRAIN mark through its extensive use of such mark in connection with this website.

Complainant has long-standing rights in and to the FUNBRAIN trademark by virtue of its trademark registration and its acquired common law rights.

Respondent is using a confusingly similar variation of Complainant’s valuable FUNBRAIN trademark to divert traffic to Respondent’s website, which not only earns unwarranted financial rewards for Respondent, but also harms Complainant by diverting visitors from the “www.funbrain.com” website. The disputed domain name is identical or confusingly similar to Complainant's FUNBRAIN mark, as it fully incorporates the FUNBRAIN mark. Respondent has simply taken Complainant’s FUNBRAIN mark and added generic numbers to it and then created a site remarkably similar to the site operated by Complainant. This type of typosquatting is a blatant form of cybersquatting. The mere addition of the number “100” to the FUNBRAIN mark is of no importance.

Given the notoriety and unique character of Complainant’s FUNBRAIN mark and the similarity of the goods and services offered on the website associated with the disputed domain name, there can be no doubt that consumers on seeing such domain name, will reasonably believe that it is related to Complainant. Moreover, users who search the Internet for information concerning Complainant’s FUNBRAIN games or products are likely to be misdirected to the disputed domain name believing they are accessing a website connected to or authorized by Complainant, thus creating a likelihood of confusion. For instance, on September 4, 2012, <funbrain100.com> was listed as the second result in response to a Google search for the term “Funbrain.”

Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. Respondent registered the disputed domain name long after Complainant had established rights in its FUNBRAIN mark. As Complainant’s mark is so well-known and recognized, there can be no legitimate use by Respondent. Further, as Complainant’s adoption and extensive use of the FUNBRAIN mark in 1997 significantly predates the first use of the disputed domain name on December 13, 2010, the burden is on Respondent to establish rights or legitimate interests. Here, Respondent cannot demonstrate or establish any such rights or legitimate interests. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s FUNBRAIN mark. Certainly, the disputed domain name is not, nor could it be contended to be, a name or nickname of Respondent, nor is it in any other way identified with or related to any rights or legitimate interests of Respondent.

Additionally, at the time that Respondent registered the disputed domain name, Complainant was the owner of an incontestable registration for FUNBRAIN. Therefore, Respondent had constructive notice of Complainant’s rights in the mark. It is clear that Respondent’s adoption of the disputed domain name was not accidental or coincidental. The disputed domain name was clearly intended to benefit from the brand recognition gained by Complainant based on more than ten years of investment and stewardship of the FUNBRAIN brand. Moreover, since registering the disputed domain name, Respondent has used it solely for commercial gain. An Internet user who types into a browser the address of the disputed domain name is connected to the “www.funbrain100.com” website, which hosts a multitude of children’s games, but also violent games inappropriate for children, and third party advertisements, which tarnishes Complainant’s reputation for providing a safe website for children. When a user clicks on these games, they are taken to pages prominently featuring third-party advertisements. It is well-established that the use of a domain name containing a complainant’s mark on a website that offers and/or advertises competing services is not regarded as a bona fide offering of goods or services such as to give rights or legitimate interest protected under the Policy. Indeed, third party pay-per-click advertisements used at the disputed domain name do not represent a use in connection with a bona fide offering of goods and services. Significantly, the website at the disputed domain name contains no privacy policy and, based on the advertisements that appear on the site, it is doubtful that the site is compliant with the laws governing websites targeting persons under the age of 13.

Complainant alleges that Respondent derives a financial benefit from advertisers based on the traffic of the website at the disputed domain name. According to Alexa.com, the website at the disputed domain name has a high traffic rating.

Respondent registered and is using the disputed domain name in bad faith for commercial gain and to profit from the resulting consumer confusion that the disputed domain name is connected with Complainant. Respondent’s bad faith registration is established by the fact that the disputed domain name fully incorporates Complainant’s famous FUNBRAIN mark, and was acquired long after the mark attained its fame. Moreover, under 15 U.S.C. § 1072, Respondent had constructive notice of Complainant’s FUNBRAIN mark. Registration of a domain name despite knowledge of Complainant’s rights, alone, is sufficient to establish evidence of bad faith.

Moreover, Respondent is making substantial commercial gain by servicing advertisements. Respondent’s registration and use of the disputed domain name in bad faith is confirmed by the fact that Respondent offers goods and services that directly compete with Complainant’s official Funbrain website. The fact that Respondent has targeted Complainant is clear from the notoriety of Complainant’s mark. Clearly, Respondent only could have registered the disputed domain name to capitalize on Complainant’s hard-earned and valuable goodwill. Respondent’s bad faith registration and use is further established by the fact that Respondent has sought to profit in bad faith from the disputed domain name. As set forth above, Respondent is deriving a financial benefit from the disputed domain name by earning a profit from third-party advertisers based on the traffic levels of the “www.funbrain100.com” website. Respondent’s use of Complainant’s FUNBRAIN mark to offer competing goods and services and to derive a financial benefit is not a use in connection with bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name, but a pure act of bad faith.

Respondent’s registration and use of the disputed domain name in connection with click-through revenue demonstrates bad faith use and registration. Based on all of the above, it is evident that Complainant has met the requirements of the Policy by demonstrating not only its own legitimate interest in the FUNBRAIN mark, as evidenced by its use and registration of that mark, but also that Respondent’s sole interest in the disputed domain name is to unlawfully profit from it.

B. Respondent

Respondent did not reply to Complainant’s contentions, and is in default.

6. Discussion and Findings

Under Policy, paragraph 4(a), a complainant must make out its case 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.

A. Identical or Confusingly Similar

As seen at section 4, Complainant has shown that it has rights in the FUNBRAIN mark.

The disputed domain name incorporates the FUNBRAIN mark in its entirety, only adding the number “100” and the gTLD “.com”. It is well-established that the addition in a domain name of generic or descriptive terms, in general, or of a number, in particular, to a mark, is insufficient to distinguish the domain name from the mark. See Eli Lilly and Company v. media/broadcasting, Lee Shung, WIPO Case No. D2010-1079, (finding that the addition of the number “36” does not dispel confusing similarity with the complainant’s protected CIALIS mark); see also Pfizer Inc. v. David Lavery, WIPO Case No. D2004-0581 (“It is an established principle that the mere addition of a common term or number does not create a different trademark in which Respondent has rights and cannot be considered sufficient to avoid confusion between the Domain Name and Complainant’s trademark”).

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

B. Rights or Legitimate Interests

Complainant contends that its FUNBRAIN mark is so well-known and recognized by the public that there can be no legitimate use of it by Respondent. Complainant also contends that there is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s mark. Complainant adds that the disputed domain name is not, nor could it be contended to be, a name or nickname of Respondent, nor is it identified with or related to any rights or legitimate interests of Respondent. Finally, Complainant contends that Respondent’s use of the disputed domain name, offering goods and services competing with Complainant to derive a financial benefit, is not a use in connection with bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, but a pure act of bad faith.

Taken together, these contentions and supporting evidence are apt, in the Panel’s view, to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

Moreover, the website at the disputed domain name imitates Complainant's offering of online games for children, thus allowing that Internet users presumably looking for Complainant are being shown commercial advertising from third parties shown at the website. This use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name, because it is clearly aimed at obtaining profit from diverting Internet users presumably looking for Complainant's website.

It is the consensus view of UDRP panels that once a complainant makes out a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Since Respondent has not submitted any comments or evidence whatsoever in its own favor, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant’s FUNBRAIN mark is famous in the field of educational products and services. See Pearson Education, Inc. v. William M. Dees, WIPO Case No. D2011-1088, relating to <funbrain-arcade.com> and <funbrainworld.com> (“Respondent’s decision to register the Domain Names, which are comprised entirely by Complainant’s famous Mark, constitutes bad faith.”) Also, the Panel has confirmed through a visit to the “Wayback Machine” (“www.archive.org)” that the use of the disputed domain name at the “www.funbrain.com” website by Complainant and its predecessor in interest Funbrain.com LLC predates by over 12 years the registration of the disputed domain name. Further, Complainant has shown that Respondent on the website at the disputed domain name is offering online games for children, thus imitating Complainant’s own website.

Moreover, Respondent’s very choice of the disputed domain name, where it added a generic number to Complainant’s distinctive mark, implies that it had full knowledge of the FUNBRAIN mark at the time when it registered the disputed domain name. Accordingly, the Panel concludes that Respondent must have known of the FUNBRAIN mark and website, and of the products and services thereon at the time of the registration of the disputed domain name, i.e., Respondent must have contemplated Complainant’s then existing rights in the FUNBRAIN mark when it registered the disputed domain name. See “WIPO Overview 2.0”, paragraph 3.1.

The fact that Complainant filed its application for the FUNBRAIN trademark Reg. No. 4,124,501 on April 29, 2012, after Respondent had registered the disputed domain name (on December 13, 2010), does not mean that Complainant had no existing rights in the FUNBRAIN mark at the time of the registration of the disputed domain name. Complainant’s predecessor, Funbrain.com, LLC, owned rights in the FUNBRAIN trademark as per US Reg. No. 2395317, valid and in force until the cancellation date of May 20, 2011, after the date of registration of the disputed domain name. See section 4 above. Complainant acquired Funbrain.com, L.L.C., and all its trademark and intellectual property rights through mergers and acquisitions ending in 1999.

As to use in bad faith, Complainant has shown that on the “www.funbrain100.com” website, Respondent is offering online games for children, causing third-party commercial advertising to be shown to Internet users presumably looking for Complainant’s website, products and services by means of a pay-per-click or similar system. In the Panel’s opinion, Respondent, by using the disputed domain name in this manner, has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. This is a circumstance of registration and use in bad faith pursuant to Policy, paragraph 4(b)(iv).

Further, the exchange of communications between the Center and the courier firm entrusted with delivering the Complaint and documents in hard copy to Respondent shows that this delivery could not be made because Respondent’s address is incorrect. Since the Center confirmed that the only available address of Respondent was the one it provided to the registrar of the disputed domain name, the Panel cannot but conclude that Respondent furnished a false or incomplete address to the Registrar, which is a further indication of bad faith. See Yapi ve Kredi Bankasi A.S v. Burak Balibey, WIPO Case No. D2006-0571 (“The fact that Respondent has provided a false address and telephone number, while not an express ground of bad faith under paragraph 4(b), has been widely recognized by Panels as a further indication of bad faith: see Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Kurtsan Ilaçlari A.S. v. Ismail Ahmet Tokcan/Nedim Aya, WIPO Case No. D2006-0168; and many others.”)

Finally, Respondent is in default, and has not contested any of Complainant’s contentions.

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, <funbrain100.com>, be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Dated: October 26, 2012

 

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