WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Apex Learning Inc. v. Contact Privacy Inc. Customer 124780175 / Jason Dare, Jason Dar

Case No. D2021-2050

1. The Parties

Complainant is Apex Learning Inc., United States of America (“United States”), represented by K&L Gates LLP, United States.

Respondent is Contact Privacy Inc. Customer 1247801754, Canada / Jason Dare, United States, Jason Dar, United States.

2. The Domain Names and Registrars

The disputed domain names <apexhomelearning.org> and <apexhomelearning.net> are registered with Google LLC.

The disputed domain name <apexhomelearning.com> is registered with 1&1 IONOS SE (collectively with Google LLC, hereinafter referred to as the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2021. On June 29, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On June 29 and June 30, 2021, the Registrars transmitted by email to the Center their verification responses 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 Complainant on July 26, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 28, 2021.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2021. An informal communication was filed by a third party with the Center on August 4, 2021. A second informal communication was filed by the third party with the Center on August 12, 2021. The Center acknowledged receipt of the third party email and searched for clarification of any relationship of the third party with Respondent on August 13, 2021. The third party did not answer to the Center communication. The Respondent did not submit a formal Response. Accordingly, the Center informed the Parties that it would proceed with the Panel appointment process on September 8, 2021.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on October 4, 2021. 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.

Preliminary Issue Regarding the Request for Consolidation of Respondents

Complainant has submitted a request for consolidation of Respondents Jason Dare and Jason Dar in the same proceeding. In determining whether a single consolidated complaint can be brought against multiple respondents, panels typically look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See section 4.11.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Based on the evidence submitted, which is not contested by Respondent, the Panel accepts Complainant’s contention that the disputed domain names are subject to common control. All three disputed domain names resolve to the same website at the domain name <higherlevellearning.org>, the contact street address and city disclosed by the Registrars for the disputed domain names is the same, and all three disputed domains names were registered in June or July 2020 (with two through the same registrar on July 26, 2020). Moreover, an informal communication to the Center from an individual using the name Jason and purporting to come from an email address using the domain name <higherlevellearning.org> referred to the “3 domains” at issue in this proceeding, thereby further confirming that the disputed domain names are subject to common control. In totality, the Panel accepts that Respondents Jason Dare and Jason Dar on are one and the same party and thus finds that consolidation would be fair and equitable to all parties. (Respondents in this proceeding will hereinafter be referred to collectively as “Respondent” in the singular form.)

4. Factual Background

Complainant, Apex Learning Inc., is a provider of digital curriculum services for secondary and post‑secondary students. Complainant has provided its educational products and services under the name and mark APEX LEARNING. Complainant is the owner of multiple trademark registrations for the APEX LEARNING mark as a word mark or in a stylized form with a logo in numerous jurisdictions around the world. Of particular relevance to this proceeding, Complainant owns several registrations for APEX LEARNING and APEX as word marks in the United States in connection with its educational products and services (Registration No. 2,724,678 for APEX LEARNING, registered on June 10, 2003; Registration No. 2,791,691 for APEX LEARNING, registered on December 9, 2003; Registration No. 2,798,077 for APEX LEARNING, registered on December 23, 2003, and Registration No. 4,046,217 for APEX, registered on October 25, 2011), all of which issued to registration prior to 2012. Complainant also owns and uses the domain name <apexlearning.com> for its primary website concerning its educational products and services.

Respondent registered the <apexhomelearning.com> disputed domain name on June 12, 2020 and the <apexhomelarning.org> and <apexhomelearning.net> disputed domain names on July 26, 2020. At some point shortly thereafter, the disputed domains apparently resolved to a website at <apexhomelearning.com> that featured a logo with the name “Apex Home Learning” and offering online learning services.

On August 17, 2020, Complainant’s representative sent a demand letter to the purported operator of the website at <apexhomelearning.com> and a further letter on September 9, 2020. No response was received to either letter. On October 27, 2020, Complainant’s representative sent a letter to the registrar for the <apexhomelearning.com> disputed domain name that resulted in the removal of the website at <apexhomelearning.com>. The <apexhomelearning.org> and <apexhomelearning.net> disputed domain names thereafter started to resolve to the website at <higherlevellearning.org> which provides online educational services. Complainant’s representative sent a further demand letter on December 4, 2020 to the operator of <higherlevellearning.org> and on February 11, 2021, to the Registrar for the <apexhomelearning.org> and <apexhomelearning.net> disputed domain names. Complainant did not receive a response. In May 2021, the <apexhomelearning.com> disputed domain name was restored and began to resolve to the website at <higherlevellearning.org>. Currently, all three disputed domain names resolve to the website at <higherlevellearning.org>.

5. Parties’ Contentions

A. Complainant

Complainant maintains that it has strong rights in the APEX LEARNING mark on account of its longstanding use and registration of the APEX LEARNING mark in connection with its digital educational products and services. Complainant further maintains that its APEX LEARNING mark has developed a reputation as a source of superior educational products and services.

Complainant asserts that the disputed domain names are nearly identical or confusingly similar to Complainant’s APEX LEARNING mark as they merely add the generic word “home” between the words “apex” and “learning”.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names as Respondent (i) does not own any trademark registrations or business names that incorporate “Apex Home Learning”, (ii) is not commonly known by the disputed domain names, (iii) has never obtained any license or authorization from Complainant to use the APEX LEARNING mark, and (iv) has used, and continues to use, the disputed domain names to redirect web users to a website that directly competes with Complainant’s educational products and services under a name unrelated to the disputed domain names.

Lastly, Complainant argues that Respondent has registered and used the disputed domain names in bad faith as Respondent likely had at the very least constructive knowledge of Complainant’s longstanding use and registration of the APEX LEARNING mark in connection with educational products and services. Complainant also argues that Respondent has acted in bad faith by registering and using the disputed domain names, which are based on the APEX LEARNING mark, to redirect web users to websites offering competing goods and services.

B. Respondent

Respondent did not formally respond to Complainant’s contentions. However, on August 11, 2021, the Center received an email from an individual using the name “Jason” via an email address associated with the domain name <higherlevellearning.org> asking about this UDRP proceeding and claiming that the disputed domain names have not been used maliciously, copying an email from “Jason” to Complainant’s counsel. In the copied email, the individual maintained that “we had no intention of infringing or affecting your business” and offered to sell the disputed domain names to Complainant. On August 12, 2021, “Jason” sent a communication about the possibility of settlement. Having considered these communications, the Panel finds that they do not impact the outcome of this dispute, and so there is no need to make a determination as to whether the communications from “Jason” should be taken as Respondent communications. No further communications were received by or on behalf of Respondent.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

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

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

Here, although Respondent has failed to formally respond to the complaint, this does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See WIPO Overview 3.0 at section 4.3; see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns trademark registrations for and has used the APEX LEARNING mark in connection with its educational products and services well before Respondent registered the disputed domain names in June and July 2020.

With Complainant’s rights in the APEX LEARNING mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.com,”, “.org”, and “net”) are identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s APEX LEARNING mark as the APEX LEARNING mark is clearly identifiable in the disputed domain names. The addition of the common word “home” does not prevent a finding of confusing similarity. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s APEX LEARNING mark and in showing that the disputed domain names are confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Based on the evidence submitted in this proceeding, none of which is contested, it appears that Respondent has only used the disputed domain names in connection with a competing website that prominently featured the name “Apex Home Learning” (with the word “Apex” slightly larger) and then to a website for competing online learning at <higherlevellearning.org>. As there is no evidence showing that Respondent is known by the name “Apex Home Learning” or owns any rights in APEX LEARNING, it appears that Respondent has used (and is using) the disputed domain names, which are based on the APEX LEARNING mark, to attract web users to Respondent’s website. Respondent’s use of the disputed domain names, which are likely viewed by consumers as connected to Complainant or some home or other online version of Complainant’s APEX LEARNING educational services, appears to be nothing more than an effort to piggy back on the reputation and goodwill of Complainant in order to offer competing services. Such use does not constitute a bona fide offering of goods and services or a legitimate interest. See WIPO Overview 3.0 at section 2.5.3.

Given that Complainant has established with sufficient evidence that it owns rights in the APEX LEARNING mark , and given Respondent’s above noted actions and failure to appear in this matter, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case

C. Registered and Used in Bad Faith

In view of Respondent’s actions and lack of rights in the APEX LEARNING mark, as noted above, and its failure to appear in this proceeding, it is easy to infer that Respondent’s registration and subsequent use of the disputed domain names with a website to promote competing educational products and services for Respondent’s profit has been done in bad faith. Given that Complainant has well established rights in the APEX LEARNING name and mark in connection with its educational products and services and developed such prior to when Respondent registered the disputed domain names in June and July 2020, it is evident that Respondent opportunistically registered and used the disputed domain names for purposes of profit at the expense of Complainant and its rights in the APEX LEARNING mark.

The fact that Respondent did not respond to any of the demand letters sent by Complainant’s representative and continued use of the disputed domain names to attract and redirect web users to a competing website, even after the takedown of Respondent’s website at the <apexhomelearning.com> disputed domain name, further confirms that Respondent did not act in good faith and merely sought to use Complainant’s APEX LEARNING mark, or a potentially confusing variant thereof, for its own benefit. That Respondent arguably may not have intended to infringe or affect Complainant’s business, as was claimed in the informal communication received by the Center, does not excuse Respondent’s failure to respond to demand letters and takedowns of its website, or Respondent’s continued use of the disputed domains names based on the APEX LEARNING mark to attract web users to a website offering directly competing goods and services.

Accordingly, the Panel finds that Complainant succeeds under this element 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 names, <apexhomelearning.com>, <apexhomelearning.net>, and <apexhomelearning.org>, be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: October 18, 2021