WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Jigsaw Edu Solutions Private Limited, Vivek Raheja

Case No. D2012-0244

1. The Parties

1.1 The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America (“USA”), represented by Jones Day, USA.

1.2 The Respondent is Jigsaw Edu Solutions Private Limited, Vivek Raheja of Delhi, India, represented by Rajneesh Sood & Company, India.

2. The Domain Name and Registrar

2.1 The disputed domain name <powerprepenglish.com> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2012. On February 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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”).

3.3 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 February 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2012. The Respondent filed with the Center a late Response on March 9, 2012.

3.4 On March 12, 2012, the Complainant submitted a notice with the Center that it had changed its legal counsel in this case (to that recorded in paragraph 1.1. of this decision) and later that same day its new counsel filed a supplemental filing on its behalf.

3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 15, 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

4.1 The Complainant is a not-for-profit corporation organized and existing under the Education Law of the State of New York, with its principal place of business in Princeton, New Jersey, USA. It was founded in 1947 and claims to be the largest private not-for-profit educational research and measurement institution in the world. Since 1995, the Complainant has used the term “Powerprep” for test preparation materials it provides in relation to tests that it provides under the mark GRE.

4.2 The Complainant has used, registered and applied to register the mark POWERPREP in many jurisdictions around the world for a variety of goods and services, including software for preparing and practicing standardized tests. These marks include:

(i) Community trade mark No. 13821 for the word mark POWERPREP in classes 9, 16, 41 and 42 filed on April 1, 1996 and registered on July 10, 1998; and

(ii) United States trade mark No. 4,002,449 for the word mark POWERPREP in class 9 filed on December 23, 2010 and registered on July 26, 2011.

4.3 However, the Complainant does not claim to be the owner of any granted registration for this term in India.

4.4 The Complainant also owns registrations for various domain names that contain the POWERPREP mark including <toeflpowerprep.com>, <powerprep.biz>, <powerprep.info> and <powerprep.us>. The first of these, <toeflpowerprep.com>, was registered on October 6, 2010.

4.5 The Respondent is a company incorporated and existing in India since August 18, 2006. Its activities include teaching and training in the oral and written English. The exact nature and extent of the Respondent’s activities is disputed, but it claims to have used the term “Powerprep” since January 2007.

4.6 On April 22, 2010, the Respondent filed an application at the Indian trade mark registry for the mark POWERPREP ENGLISH. The application is for “Education, organizing training courses, seminars, symposiums and competitions” in class 41.

4.7 The Domain Name was registered by the Respondent on April 28, 2010. The exact nature of the Respondent’s use of the Domain Name is disputed, but it clearly has been used for some time and possibly since registration for a website that promotes the Respondent’s services.

4.8 On February 4, 2011, the Complainant filed an application at the Indian trade mark registry for the mark POWERPREP. The application is for “Software program downloadable from the internet for preparing for and practicing standardized test” in class 9.

4.9 On March 9, 2011, the Complainant’s Indian trade mark attorneys sent a letter to the Respondent. It claimed that the Complainant was “the proprietor of the trademark POWERPREP which is currently pending registration” but did not identify any particular application whether by number class or otherwise. It further asserted that the Respondent’s use of the term “Powerprep” was contrary to the Indian law of passing off.

4.10 On September 21, 2011, the Complainant’s Indian trade mark attorneys sent a further letter, this time to the Respondent’s Indian lawyers. It repeated many of the claims made in its letter of March 9, 2011 and complained that it had not received a response to that letter. It stated that it had recently become aware of the Respondent’s trade mark application and claimed that this had been applied for services that were the “same, similar, or cognate to our client’s core services”. It demanded that the application be withdrawn.

5. Parties’ Contentions

A. Complaint

5.1 The Complainant refers at some length to the various tests (such as the “GRE”) that it provides identifying the numbers of persons who have taken the test that it administers. For example, it claims that in 2010, 47,000 individuals took its GRE tests in India. However, so far as its use of the trade mark POWERPREP is concerned, it is less specific. It asserts that it has spent considerable sums of time, effort and money for the research and development of its products and services under that mark and claims it has promoted products and services under that term throughout the world. It claims as a consequence the mark has acquired “worldwide recognition”. However, what form that promotion has taken is not explained.

5.2 It claims that the Domain Name comprising its mark and the term “English” is confusingly similar to a mark in which it holds rights, and cites various WIPO UDRP decisions and a US trade mark text book in support of that proposition.

5.3 It asserts that the Respondent has no rights or legitimate interests in the Domain Name and claims that the Respondent is not known commonly known by the terms embodied in the Domain Name citing the case of Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 which is said to be authority for the proposition that to claim such an interest, the Respondent must “provide adequate extrinsic proof that a corresponding group of consumers who are likely to access its website associates the POWERPREP portion of the Domain Name with Respondent rather than with Complainant”.

5.4 It further claims that the Respondent is using the Domain Name to bait the Complainant’s customers to the Respondent’s language products and services.

5.5 It asserts that the “Respondent may argue that it has a legitimate interest because it offers English language learning materials, which are helpful in preparing for the GRE test or for preparing to study for the GRE test using Complainant’s POWERPREP materials” but cites various WIPO UDRP decisions which are said to be authority for the proposition that a reseller does not have the right to incorporate the trademark of the resold goods into its domain name.

5.6 The Complainant also claims that the Respondent is breaching the warranty contained in its Registration Agreement by using the Domain Name in a way which would directly or indirectly infringe the legal rights of a third party (i.e. the Complainant).

5.7 So far as bad faith registration is concerned, the Complainant claims that the Respondent has attempted to capitalise unfairly on the goodwill of the Complainant’s well known POWERPREP trade mark. Further, it contends that the Respondent had had actual and/or constructive notice of the Complainant’s business and its ownership and use of the POWERPREP mark prior to registering the Domain Name.

5.8 So far as bad faith use is concerned, the Complainant contends that the Respondent is using the domain name to sell its own language courses. It exhibits copies of various web pages said to come from the website operating from the Domain Name. It also claims that this website links to the Respondent’s main website at <jigsawabacus.com>. Again, copies of pages operating from that website are provided. One of these pages has the heading “Power-Prep English” and provides details of a 1 year four module programme under that name. The term “Powerprep English” is also used on at least one other page of that site. It claims that the Respondent’s acts “can only be construed as bad faith attempts to capitalize on the fame of the POWERPREP mark and Complainant’s well-known reputation in the English Language learning field to attract Internet traffic for commercial gain.”

B. Response

5.9 The Respondent claims that it currently has approximately 5,000 students enrolled on its various programmes and has a network of 153 franchisees across India. It denies that it is competing under the POWERPREP name asserting that the Complainant’s marks are for software in class 9. It further refers to a webpage on the Complainant’s own website that associates the POWERPREP mark with software only (although it appears to admit that the different activities are both “within the realm of rendering services related to English language”).

5.10 It denies that the Domain Name is “identical” or “creates any element of confusion in the minds of customers” given the different business activities it claims the parties are engaged in.

5.11 It asserts that while conceiving the mark “Powerprep English” “it had no prior information and knowledge whatsoever in respect of the existence of the trade mark POWERPREP as originating from the Complainant” referring to the fact that the parties are based in different countries. It contends that it was unaware of the Complainant at the time the Domain Name was registered or at the time it made its Indian trade mark application. It further denies that the Complainant’s mark is famous in India.

5.12 The Respondent claims it has legitimately been using the “Powerprep English” mark since January 2007 relying on the statement to that effect in its trade mark application. It also asserts that it has documents that show use of the “Powerprep” name from that date, although the materials annexed to the Response do not clearly evidence this.

5.13 So far as the rights or legitimate interests test is concerned, it accepts that the burden of proof of showing such rights can pass to a respondent but asserts that for this to happen, a complainant has to put forward a prima facie case in this respect and claims the Complainant has failed to do so in this case.

5.14 The Respondent denies that it has registered and used the Domain Name in bad faith. In particular, it denies that any of the examples of circumstances indicating bad faith set out in paragraph 4(b) of the UDRP applies in this case.

Complainant’s Supplemental Submission

5.15 Although the Complainant filed a supplemental submission in the proceedings, the Panel has reached the conclusion that it would generally be inappropriate to take into account the contents of that document in reaching it decision in this case. The reasons for this are addressed later on this decision. However, the Panel has considered the Complainant’s submissions as to whether the Respondent’s Response should be similarly disregarded given that it was served one day late. Again, this issue is addressed in greater detail later on in this decision.

6. Discussion and Findings

6.1 According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.

6.2 Before doing so, it is first necessary to address the Complainant’s contention that the Response in this case should be disregarded and whether it is appropriate to take into account the Complainant’s Supplemental Submission.

A. Procedural Issues

6.3 In Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994 this Panel refused to consider a response that was served 2 days late. Its reasoning was as follows:

“4.2 In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 and 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 panels have held that late responses should be disregarded “absent good cause”.

4.3 This Panel also addressed the issue of late responses in its decision in HQ UK Limited v Head Quarters, WIPO Case No. D2003-0942. In that decision the Panel noted that an “exceptional case” was required under paragraph 10(c) of the Rules for extensions of time under the Rules and expressed the view that the circumstances that must be shown for a late submission to be accepted are at least as strict. In that decision the Panel went on to note as follows:

“Further, the comments of the majority of the panelists in 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 would seem to suggest that panels are now likely to take a stricter view on whether a party has shown good cause than might have been the case when the UDRP process was still relatively new”.

4.4 Indeed, as was more recently pointed out by the panel in the case of Museum of Science v Jason Dare, WIPO Case No. D2004-0614, “many panels have disregarded late filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and Respondents will regularly submit late responses”.

6.4 Given this analysis, the Panel concluded that notwithstanding the very short delay, the respondent in that case had failed to show the necessary exceptional circumstances.

6.5 In the present case, the Respondent’s lawyers asserted in an email sent to the Center with the Response that the reason why it served its Response late was because the date upon which the Response was due was “a national holiday in India on account of the festival ‘Holi’”.

6.6 The Complainant in response contends that “Holi” is not an official holiday recognised by WIPO and refers to various WIPO UDRP decisions that suggest that a strict approach should be taken when it comes to the timetable for filing a response.

6.7 The Panel is unpersuaded by the Complainant’s reference to the list of official holidays on the WIPO website. Were the date for filing a Response to fall on an official public holiday in India, the Panel would have been minded to allow the Respondent to file a Response one day late. But as far as the Panel can tell, and notwithstanding the Respondent’s lawyers assertions, March 8, 2012 was not an official public holiday in India.

6.8 Nevertheless, regardless of whether the March 8, 2012 was such a holiday, there is another factor that suggests that the Respondent should be given some latitude in this case. This is that the Panel has reached the conclusion that the Complainant has been less than forthcoming in its Complaint about what it knew about the Respondent. In particular, it is clear from the correspondence attached to its Supplemental Submission that there was correspondence from the Complainant to the Respondent before it filed the Complaint. More significant than the correspondence itself is the fact that it is clear from that the material before it that the Complainant knew about the existence of the Respondent’s Indian trade mark application long before it filed these proceedings. Indeed, once this is known, it becomes reasonably apparent that the Complaint has been skilfully drafted, particularly so far as the issue of rights or legitimate interests is concerned, to avoid addressing this issue.

6.9 If a complainant fails to include in its complaint information and material of which it is aware and that is clearly and obviously relevant to the proceedings, a panel is unlikely to have much sympathy with a demand that a respondent must strictly comply with timetables where by failing to place the full story before the panel in the first place it has placed an additional burden on the respondent in preparing its response. These comments of the Panel should not be understood as providing a green light to respondents to seek a delay in putting in a response on the grounds that the complaint is in some way partial. Proceedings under the Policy are adversarial and it should be no surprise to one party that another party has sought to put its case in what is for it the best possible light. But where there is a clear and compelling omission of the sort that there has been in this case, a party should not be surprised that a panel may well be prepared to allow a late submission that sets the record straight.

6.10 Usually it would be for a respondent to put forward an argument that due to this sort of failure it requires more time. Further, as the Complainant correctly contends the Respondent could and should have made its request for more time prior to the 20 day deadline coming to an end. Paragraph 5(d) of the Rules provides the Provider (in this case the Center) with the power (albeit limited to exceptional circumstances) to grant such requests. If a respondent’s lawyer fails to make such a request when it is apparent that the deadline cannot be complied with, it is taking a wholly unnecessary risk with its client’s case.

6.11 However, in the present case, given that the omission on the part of the Complainant was clear and compelling and the delay in filing was only one day, the Panel has been prepared to consider the Response.

6.12 Given that the Panel has decided to consider the Response, the next procedural question that arises is whether the Panel should consider the Supplemental Submission of the Complainant in Reply (insofar as it addresses issues other than the status of the late Response).

6.13 As is recorded in paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the consensus view among panelists is that they can accept unsolicited supplemental submissions for parties to the proceedings. Nevertheless, it is rare that supplemental submissions will be considered by the panel. As was stated in DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780:

“As is by now well established the Rules do not provide any right of reply. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938. Although supplemental submissions may be accepted to address new legal developments, see e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, or to rebut unexpected factual assertions, see e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237, they should be allowed sparingly.”

6.14 Further, as is recorded in the WIPO Overview 2.0 “the party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.”

6.15 The Complainant contends that the Supplemental Submission in this case should be allowed so that the Complainant can “correct inaccurate factual allegations made by the Respondent” and “because [the additional submissions in that document] address topics which the Complainant could not have addressed in the Complaint”.

6.16 Having carefully considered the Supplemental Submission, the Panel is unconvinced that this is the case. Part of the submission seeks to counter the Respondent’s case based upon its application for a trade mark in India. However, as has already been explained, the Panel is of the view that this issue could and should have been addressed in the initial Complaint. Ironically, it is the pre-action correspondence appended to the Supplemental Submission that clearly shows that the Complainant was well aware of the Respondent’s application before it commenced these proceedings. Otherwise the submission consists of not much more than further argument amplifying and expanding upon the points made in the original Complaint.

6.17 In the circumstances, save for the additional correspondence attached to the Supplemental Submission, the Panel declines to take the Supplemental Submission into account. However, it is worth recording that had it done so, it is unlikely to have made a difference to the outcome in this case.

B. Identical or Confusingly Similar

6.18 Although the Respondent’s submissions on the issue of identical or confusingly similar are detailed the Panel has not found them particularly helpful or persuasive. In particular, the Respondent seeks to make great play of the fact that the Complainant’s marks are in class 9 for software (something that so far as the Complainant’s Community Trade Mark is concerned is not correct), and that as its activities are in a different field, there can be no confusing similarity in this case.

6.19 As is recorded in paragraph 1.2 of the WIPO Overview 2.0:

“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms .. typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”

6.20 Therefore, the comparison is merely between mark and domain name, and the way in which a respondent is using the domain name is unlikely to be relevant. The class of the mark may sometimes reinforce a finding of confusing similarity (see, for example, Williams Electronics Games, Inc. v. Ventura Domains, WIPO Case No. D2005-0822). In other cases it may lead a panel to conclude that aspects of the domain name are so generic that confusing similarity does not exist (see Jobs on the Net Limited, Andrew Middleton v. International New Media Limited, WIPO Case No. D2011-1531). However, neither of these sorts of arguments arise in this case (at least so far as the class 9 marks are concerned).

6.21 Further (although to be fair to the Complainant this is little more than as aside in the Complaint), references to US law (or the laws of any other country) are not likely to be particularly helpful in conducting this analysis.

6.22 With this in mind the Panel has no hesitation in concluding that the Domain Name is confusingly similar to a number of trade marks in which the Complainant has rights, including the marks identified in the Factual Background section of this decision. An obvious and sensible reading of the Domain Name is as the terms “Power”, “Prep” and “English” in combination with the “.com” gTLD. The Domain Name therefore can be read as the entirety of the Complainant’s POWERPREP mark in combination with the word “English” and the addition of the term “English” does not so distract from or change the meaning of the term “Powerprep” as to stop a finding of confusing similarity.

6.23 In the circumstances the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

6.24 On the question of rights or legitimate interests the Respondent appears to rely, among other things, on its Indian trade mark application. The question of whether a Respondent can rely upon a trade mark application to found rights for the purposes of paragraph 4(a)(ii) (rather than 4(a)(i)) of the Policy) is not an easy question. It was considered in some detail by this Panel in BECA Inc. v. CanAm Health Source, Inc., WIPO Case No. D2004-0298 and the Panel concluded that in some cases this might be sufficient.

6.25 However, as was also discussed in the BECA case, the fact that a trade mark has been applied for, or even granted, is not an absolute bar to a finding of a lack of rights or legitimate interests. In that decision this Panel considered in some detail the pre-existing decisions (including, for example, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847) on this issue and distilled these into a set of non-exhaustive guidelines that have subsequently been cited in a number of subsequent decisions (see, for example, British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817). The guidelines are as follows:

“(i) When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.

(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent's domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.

(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant's rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.

(iv) The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is ‘legitimate.'”

6.26 So far as the Domain Name is concerned, the Panel has reached the conclusion that there is insufficient evidence to lead it to conclude that the trade mark application was merely to bolster the Domain Name registration. From the chronology of events, it is noticeable that the application was made prior to the Domain Name registration and almost a year before the Complainant’s trade mark attorneys first approached the Respondent. The registration and application occurring at broadly the same time are no doubt linked, but there is nothing in the timing that suggests that the application was simply to bolster the registration.

6.27 Further, there is no lack of connection between the Respondent and the jurisdiction in which the application was made. Given the fact that the Respondent is incorporated and does business in India, India was the obvious jurisdiction in which to apply for a mark.

6.28 So far as knowledge is concerned, the Respondent flatly denies that it was aware of the Complainant prior to choosing the “Powerprep English” name. The issue is addressed in greater detail under the heading of bad faith below. However, in short, the Panel is un-persuaded by the Complainant’s evidence that denial can be disregarded.

6.29 Given the Panel’s findings on the question of bad faith, it is unnecessary to reach a final conclusion on the issue of rights or legitimate interests in this case. However, if it had been necessary for the Panel to decide this issue, the Panel would likely have concluded that the Complainant has failed to make out its case in this respect. The Respondent’s application is consistent with its contention that the application and registration were pursuant to the Respondent’s decision to adopt the “Powerprep English” name and either that application provides a right or legitimate interest for the purposes of the Policy in its own right, or alternatively forms part an example of a demonstrable preparation to use a name corresponding to the domain name in connection with a bona fide offering of goods or services (as per paragraph 4(c)(i) of the Policy). It does not seem to this Panel that the Complainant has succeeded in showing that the Respondent’s business and plans are illegitimate.

D. Registered and Used in Bad Faith

6.30 At the heart of the Complainant’s case against the Respondent is the allegation that the Respondent both knew about and sought to trade off of the reputation of the mark POWERPREP in India.

6.31 The Complainant at one point seems to rely upon the concept of constructive notice. However, constructive notice is a difficult and controversial concept. In ServiceMaster Brands LLC v. Riel Roussopoulos, WIPO Case No. D2007-0346 this Panel stated as follows:

6.11 Since at one point the Complainant alludes to constructive rather than actual knowledge, the Panel wishes to make it clear that in the circumstances of this case it is actual and not constructive knowledge that is key. It now seems reasonably clear from numerous decisions that the doctrine of constructive notice does not apply where, as here, the parties to proceedings are not both from the USA (see, for example, Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 and Sallie Mae, Inc. v. Chen Huang, WIPO Case No. D2004-0880). Further, the recent decision of the three person panel in Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), NAF Case Number: FA0509000567039 would suggest that even where both parties are from the USA, “constructive notice (of trademark rights) is not enough under the Policy” to satisfy the requirement of bad faith. The panel in that case went on to say that:

“The Policy makes no mention of constructive notice being enough to satisfy this requirement…[and]…if Complainant’s position were adopted, it would essentially establish a per se rule of bad faith any time a domain name is identical or similar to a previously-registered trademark, since constructive notice could be found in every such case. Such a result would be inconsistent with both the letter and the spirit of the policy, which requires actual bad faith”.

6.12 The Panel accepts that there are some cases that suggest that in unusual circumstances a limited version of the doctrine of constructive notice may have a role to play. These cases include Red Nacional De Los Ferrocarriles Espanoles v. Ox90, WIPO Case No. D2001-0981, Sibyl Avery Jackson v. Jan Teluch, WIPO Case No. D2002-1180 and Mobile Communication Service Inc. v. Webreg, RN, WIPO Case No. D2005-1304). The Mobile Communication Service Inc. v. Webreg, RN, WIPO Case No. D2005-1304 decision is actually cited by the Complainant. However, these cases are controversial (see the decision in Promatic International Limited v. Name Administration Inc., WIPO Case No. D2006-0673). More importantly, for present purposes, the unusual circumstances that existed in these cases do not exist in the case now before the Panel.

6.32 These comments apply equally in this case and are also echoed at paragraph 3.4 of WIPO Overview 2.0. Further, even if constructive notice were to apply in this case, the obvious question that then follows is “constructive notice of what mark in what registry”? Given that the Respondent (who is not from the USA) would appear only to do business in India, can it reasonably have been expected to make searches elsewhere? And if it should have searched the Indian trade mark registry, there is no Indian trade mark or trade mark application relied upon by the Complainant that pre-dates the Domain Name. In these circumstances, to try and apply the doctrine of constructive knowledge to the Respondent strikes the Panel as highly problematic.

6.33 If actual knowledge is needed, then the problem for the Complainant is that there is simply no evidence before the Panel that the Complainant used the term “Powerprep” with the Respondent’s knowledge (or indeed with the requisite intent to target the Complainant’s mark in particular) prior to registration of the Domain Name. And even if the Complainant had showed that it had used the term prior to that date, there is no evidence of the extent to which that term had any fame or reputation in India at the time of registration. The Complainant has made claims that it engaged in significant activities in India prior to August 2006, but even if these are taken at face value (and the Panel is quite prepared to do so) it does not follow that the term “Powerprep” had been extensively used in a trade mark sense prior to that date. There is simply no evidence of this; merely assertion on the part of the Complainant.

6.34 Sometimes that sort of evidence is unnecessary because the nature of the domain name itself is so unusual that the only credible explanation for the choice of that name is because of its associations with the trade mark of another. In this case, the term “Powerprep” is far from generic or descriptive. However, it is not so unusual that the only credible explanation for its choice as part of the term “Powerprep English” is that it copied the term used by the Complainant. “Prep” is a common shortening of the words “preparation” and “preparatory” that are commonly used in connection with education. It also does not stray beyond the bounds of credibility to suggest that the Respondent independently choose to combine that word alliteratively with the word “Power”.

6.35 Further, there is the fact that the term appears not to have been used by the Complainant on the Internet prior to the registration of the Domain Name.

6.36 That is not to say that the Respondent’s evidence is particularly compelling. If, as the Respondent contends, it has been using the term since January 2007, one would expect it to be able to provide positive evidence in the form of pre-existing documents in which the term “Powerprep” is used (as opposed to a 2010 document claiming use from 3 years earlier). No such material is provided.

6.37 However, ultimately the Complainant bears the burden of proving on the balance of probabilities that the Respondent registered and used the Domain Name in bad faith, and in this particular case that means showing as an initial step that the Respondent was aware of the Complainant’s POWERPREP mark at the time that the Domain Name was registered. The Complainant has failed to carry that burden in this case. In the circumstances, the Complainant has not made out the requirements of paragraph 4(a)(iii) of the Policy.

6.38 Of course the present Decision is taken under the Policy and in no way restricts potential application to relevant courts under national law or otherwise.

7. Decision

7.1 For all the foregoing reasons, the Complaint is denied.

Matthew S. Harris
Sole Panelist
Dated: March 29, 2012