WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pearson Education, Inc. v. William M. Dees

Case No. D2011-1088

1. The Parties

Complainant is Pearson Education, Inc. of Upper Saddle River, New Jersey, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

Respondent is William M. Dees of Bridgeview, Illinois, United States of America.

2. The Domain Names and Registrar

The disputed domain names <funbrain-arcade.com> and <funbrainworld.com> (together, the “Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2011. On June 28, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 29, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Names.

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 July 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 22, 2011.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on July 28, 2011. 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, Pearson Education, Inc. (“Complainant”), is an educational publishing company that provides scientifically research-based print and digital programs to a worldwide audience.

In 1997, Complainant developed and launched the FUNBRAIN (the “Mark”) brand and launched its website, “www.funbrain.com”. The website “www.funbrain.com” is a gaming website designed to provide web-based educational entertainment to children. To date, “www.funbrain.com” has 65,000 registered teachers and averages 60,000 visits per day.

Complainant’s predecessor-in-interest, Funbrain.com LLC, is the owner of United States Trademark Registration No. 2,395,317 (issued Oct. 17, 2000).

Complainant is the applicant for United States Trademark Application No. 85/309,737 (filed May 2, 2011), which covers FUNBRAIN for use in connection with “downloadable educational games in reading and math for elementary and middle school level students; downloadable computer games.”

Respondent William M. Dees (“Respondent”), a resident of Illinois, is the owner of the disputed Domain Names, <funbrain-arcade.com> and <funbrainworld.com>, utilizing a private registration service, PrivacyProtect.Org.

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

Respondent’s use of the Domain Names is confusingly similar to Complainant’s trademark rights. First, the Domain Names fully incorporate Complainant’s Mark. Second, the Domain Names offer similar services (educational digital games) on websites similar in appearance. Third, Respondent has impliedly conceded confusing similarity by offering an (ineffective) website disclaimer of a relationship with Complainant.

Respondent has no legitimate interest in the Domain Names. The Domain Names’ registration occurred subsequent to the formalization of Complainant’s trademark interests. And, without authorization, Respondent continues to utilize Complainant’s trademark for commercial gain.

Respondent’s registration and use of the Domain Names are in bad faith for four reasons: (a) with full awareness of Complainant’s trademark interests; (b) the Domain Names seek commercial gain through the exploitation of Complainant’s trademark interests by: (c) utilizing an identity protection service to; (d) offer website services in direct competition with Complainant’s.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To prevail on its Complaint, Complainant must prove: (i) The 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 Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. Sony Kabushiki Kaisha aka Sony Corp. v. Sony Holland, WIPO Case No. D2008-1025.

In view of the lack of a Response filed by Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Thus, “[i]n considering those three matters,”this Panel“ is entitled to draw such inferences as it considers appropriate from the failure by a Respondent to respond to a Complaint.” Debevoise & Plimpton LLP v. Marketing Total S.A., WIPO Case No. D2007-0451. In that regard, and without deciding this proceeding solely on the basis of Respondent’s default, the Panel makes the following specific findings.

A. Identical or Confusingly Similar

The Panel finds that the Domain Names are confusingly similar to Complainant’s Mark.

UDRP panels have consistently concluded that a domain name’s inclusion of a registered mark in its entirety generally results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a Domain Name wholly incorporates a Complainant's registered Mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (<playboysportsbook.com> was found confusingly similar to the PLAYBOY Mark); Adaptive Molecular Technologies, Inc. v. Piscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (the distinctive features of the Domain Name were the complainant's Mark). Thus the Panel finds that Respondent’s inclusion of the entirety of Complainant’s Mark is compelling evidence of confusing similarity.

Respondent’s addition of the generic words (“arcade” and “world”) to its incorporation of the Complainant’s Mark, “only serves to increase the likelihood of confusion between that Mark and the Domain Name.” World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. 2008-0642. That likelihood is amplified by Respondent’s use of descriptive words suggestive of the website services offered—services that are in competition with Complainant’s. Id. (“Forming a domain name by adding to a complainant’s mark a word which is descriptive or suggestive of the very services offered by the complainant under that mark, effectively ensures that the domain name will convey the same idea, or impression, as the mark.” Where the domain name <pronaturalmuscle.com> was found confusingly similar to the complainant’s mark PRO NATURAL).

That Respondent’s websites display disclaimers denying a relationship with the Complainant are further probative of material confusion. A.B.C. Carpet Co., Inc. v. ABC Carpet and Rug Repair Services, WIPO Case No. D2011-0773 (finding that respondent’s website offered services identical to those offered by complainant and its disclaimer concedes material confusion).

And finally, Respondent’s use of a top-level domain (“.com”) is irrelevant to paragraph 4(a)’s “confusing similarity” inquiry and is thus disregarded. Altria Group v. Daniel Cheng, WIPO Case No. D2009-1764.

B. Rights or Legitimate Interests

The Panel concludes that Respondent lacks legitimate rights or interests in the Domain Names.

Although Complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of Respondent. Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762. Accordingly, Complainant need only make out a prima facie case that Respondent lacks rights or legitimate interests. Id. Upon such a showing, the burden shifts to Respondent to demonstrate its rights or interests in the Domain Names. Id.

The Panel finds that Complainant has made a prima facie showing of its ownership interests in the mark FUNBRAIN. Complainant has averred, and Respondent has not contested, that the Domain Names’ use of the Mark is without authorization from the Mark’s owner. It is therefore incumbent upon the Respondent to demonstrate its rights or interests in the Domain Name. Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762 (upon a prima facie showing, the burden shifts to the Respondent to demonstrate its rights or interests in the Domain Name; and failure to satisfy its burden of proof is sufficient for a determination in favor of Complainants, pursuant to 4(a)(ii) of the UDRP. Citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.)).

Respondent has offered no rebuttal. The rules governing this Panel permit the use of negative inferences in light of a respondent’s default. Id. citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 4.6. Such an inference is especially apt in this case because Respondent has offered no responsive showing of a legitimate right or interest in the disputed Domain Names. Id.

Thus, based on the evidence of record here, the Panel finds that no basis exists that would appear to legitimize a claim by Respondent, were it to have made one, for the Domain Names under paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

The Panel concludes that Respondent’s registration of the Domain Names was in bad faith.

Respondent’s decision to register the Domain Names, which are comprised entirely by Complainant’s famous Mark, constitutes bad faith. Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd., WIPO Case No. D2007-0809, which states:

“This Panel concurs with previous WIPO UDRP decisions holding that incorporating a widely-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. As decided before, ‘knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith'. Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.”

Furthermore, Respondent’s use of the Registrar’s privacy protection feature suggests an effort to disguise its identity, providing further evidence of bad faith. Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453 (noting that the use of a registrar’s privacy function to hide Respondent’s identity may be further evidence of bad faith).

In the absence of a Response, Respondent’s apparent intent in registering and using the Domain Name appears to be to disrupt the relationship between Complainant and its current and potential customers by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

In sum, the above facts are sufficient to indicate bad faith pursuant to paragraph 4(b)(iii) and (iv) of the Policy. Therefore, the Panel concludes that Respondent registered and used the Domain Name in bad faith.

7. Decision

Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <funbrain-arcade.com> and <funbrainworld.com> be transferred to Complainant.

Maxim H. Waldbaum
Sole Panelist
Dated: August 8, 2011