WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adelante Educational Services LLC v. Domains by Proxy Inc. / David Koneck
Case No. D2008-0532
1. The Parties
Complainant is Adelante Educational Services LLC, Mission Viejo, California, United States of America, represented by the law firm Knobbe, Martens, Olson & Bear, LLP, United States of America.
Respondent is Domains by Proxy Inc., Scottsdale, Arizona, United States of America / David Koneck, Mission Viejo, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <adelanteed.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2008. On April 8, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 9, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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”), 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 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2008. The Respondent did not submit any response; accordingly, the Center notified the Respondent’s default on May 6, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 13, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On May 24, 2008, Complainant submitted a proposed supplemental filing. The Panel advised the parties that the supplemental filing would not be considered. Under the Consensus View in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview), paragraph 4.2, unsolicited supplemental filings should be considered only in exceptional circumstances. The most frequent demonstration of exceptional circumstances occurs when the Response raises an issue or includes evidence that the complainant could not reasonably have anticipated. As there was no Response in this proceeding there is no basis for a supplemental filing.
4. Factual Background
The following facts are all supported by competent evidence attached to the Complaint.
Complainant provides educational services to students by entering into service contracts with school districts. These services are provided within the United States, particularly in Southern California. Complainant began providing educational services to students in early 2006. Since that time Complainant has continuously offered and promoted its services under the ADELANTE mark. The primary target of Complainant’s promotional efforts are school-aged children and their parents.
In May 2006 Complainant filed a trademark application in the United States Patent and Trademark Office (USPTO) for the word mark ADELANTE in connection with various educational services. This application has been published without opposition and is currently pending. Complainant also has utilized the marks ADELANTE EDUCATIONAL SERVICES and ADELANTE ED in promoting its educational training and services.
Respondent David Koneck first registered the disputed domain name, with a different registrar, with himself as the registrant, on March 28, 2006. The whois information furnished by the present registrar, GoDaddy.com, Inc. to the Center also indicates lists Koneck as registrant, and the Panel’s search of the whois database similarly indicated Koneck as registrant. In late March 2008, after expiry of the initial registration, Domains by Proxy appeared as the registrant on a WHOIS search conducted by Complainant’s counsel.1
In early March 2008, before expiry of the initial registration, the disputed domain name resolved to a website indicating that the disputed domain name was for sale, and Complainant became aware that the email service connected with <adalanteed.com> no longer functioned.
Shortly thereafter the “for sale” sign was removed and a new home page for <adalanteed.com> was put up in its stead. This new home page depicted a naked woman scantily covered by Complainant’s logos and the ADELANTE mark. Above the image is a sentence written in Spanish, the literal translation of which is: “Welcome to Adalanteed.com. We are taking a lead in the education of sexual techniques with today’s best classification.”
The Complainant immediately contacted the new registrar, GoDaddy.com Inc., and requested that the site be disabled. Go Daddy.com Inc. complied and disabled the site. After several days the site reappeared with a similar image, but this time with a sentence in Korean, the literal translation of which is: “This is what you get for stabbing me in the back you [expletive deleted].”
5. Parties’ Contentions
Rights in a Mark. Complainant has rights in ADELANTE by reason of its pending USPTO application and its continuous promotional activity using that mark in connection with educational services. Complainant has common law rights in the trademarks ADELANTE EDUCATIONAL SERVICES and ADELANTE ED by reason of its continuous promotional activity using these marks in connection with educational services since February 2006. Except for the TLD identifier “.com”, the disputed domain name is identical to one of these marks and confusingly similar to the others.
Factual Contentions. Complainant’s contentions under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy to some extent depend upon certain factual allegations for which there is little if any evidentiary support. These are discussed in more detail in the following section but are mentioned here for a better understanding of Complainant’s legal contentions. Respondent is said to be an ex-employee of Complainant who, when directed to register this domain name with the original registrar in Complainant’s name and for Complainant’s use, instead listed himself as registrant. According to the Complaint Koneck’s employment with Complainant ended in January 2007, and he is now a competitor of Complainant in the provision of educational services.
Rights or Legitimate Interest. Respondent is not affiliated with or related to the Complainant and has never been authorized by Complainant to use the ADELANTE marks. Respondent is not generally known by the disputed domain name and has not acquired rights in Complainant’s marks. Respondent’s use of the domain name does not qualify as bona fide because it prevents existing and future clients of Complainant from accessing Complainant’s advertising and promotional materials. The posting of obscene photographs at a website using the mark does not qualify as a legitimate noncommercial use of the domain name.
Bad Faith. Respondent registered the domain name in bad faith, in his own name, without authorization from Complainant to do so. Respondent currently provides educational services, thereby competing with Complainant. Respondent seeks to disrupt Complainant’s business, an example of bad faith given in paragraph 4(b)(iii) of the Policy. Bad faith is also shown by Respondent’s transfer of the domain name to a privacy service to conceal his identity and his posting of pornographic images targeting Complainant. Instead of viewing Complainant’s promotional materials, customers and potential customers – including children – find themselves viewing pornographic images. The pornographic content alone demonstrates that the domain name is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to demonstrate first that Complainant possesses a valid right in the mark and second that the disputed domain name is identical or confusingly similar to that mark.
Complainant’s evidence shows continuous use of the marks ADELANTE and ADELANTE EDUCATIONAL SERVICES as early as February 2006 and thus has satisfied the first requirement. Common law trademark rights suffice to invoke the Policy; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview), paragraph 1.7. The dominant feature of the disputed domain name is the distinctive word ADELANTE, so it is confusingly similar to Complainant’s marks. Especially is that so when the additional letters in the disputed domain name, ED, are a common American colloquial abbreviation for “Education,” the second word in one of Complainant’s marks. See eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068.
The disputed domain name is confusingly similar to marks in which Complainant has rights.
B. Rights or Legitimate Interests; Bad Faith
Before analyzing the second and third Policy elements the Panel must consider Complainant’s unsupported factual contentions that Respondent was a former employee of Complainant who had been directed to register the disputed domain name in Complainant’s name, and that Respondent presently competes with Complainant. On the second contention Complainant submits material dated no later than 2006,2 but nothing to demonstrate that Respondent now competes with Complainant. On the allegation of employment status there is no evidence whatever. The absence of evidence on these points is puzzling, as the other allegations of the Complaint are fully documented, and both contentions (particularly status as a former employee) concern issues for which Complainant should have ready access to simple proof: employment records, a termination agreement, a supervisor’s affidavit. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383. Unlike a civil action in the United States of America,3 in a Policy proceeding a failure to deny an allegation does not constitute an admission of the pleaded matter. WIPO Overview, paragraph 4.6. A complainant in a Policy proceeding must prove each Policy element. Policy, paragraph 4(a)(“In the administrative proceeding, the complainant must prove that each of these three elements are present.”); Rules, paragraphs 3(b)(xv) and 10(d); DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939 (“So there must be evidence, it must be evaluated and it must prove the particular element contended for.”). Counsel’s averments of factual matters in a pleading are not evidence, particularly when actual evidence (if it exists) is within Complainant’s control. Without evidence the Panel cannot accept these two factual contentions and will proceed to its decision without considering them.
Complainant has made out a prima facie case that Respondent lacks rights or a legitimate interest. Respondent has not been known by the disputed domain name and has not been authorized by Complainant to use its marks. Respondent, who declined to respond to the Complaint, has come forward with no evidence to the contrary. Placing the disputed domain name up for sale renders paragraph 4(c)(iii) unavailable to Respondent,4 and use of another’s mark – in this proceeding a fanciful mark that no one can claim is “common” or “generic” or “descriptive” – for general business purposes with no obvious connection to the mark is not legitimate under the Policy.
When a word appears to be an arbitrary or a fanciful term, and not one that Respondent would choose unless intent to create an impression of association with the Complainant existed, Respondent does not have rights or legitimate interests in the domain name. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. When used in relation to educational services, as used by Complainant, the mark ADELANTE is arbitrary. There is no obvious connection between Complainant’s services and the trademark, other than the connection intentionally created by Complainant through advertising and promotional materials. Similarly, when the mark ADELANTE is used in relation to pornographic images, it too is arbitrary as there is no obvious connection between the trademark and Respondent’s website. The domain name was clearly chosen by Respondent with the intent to create an impression of association. Especially is that true here, where Respondent used the disputed domain name with pornographic images that include Complainant’s name and mark in a manner that parrots Complainant’s educational services. Such conduct reveals both knowledge of Complainant and a clear targeting of Complainant in a manner certain to tarnish Complainant’s marks and likely intended to do so.
Respondent lacks rights or any legitimate interest in the disputed domain name.
For similar reasons the content on the website also demonstrates obvious use of the domain name in bad faith. Respondent uses the ADELANTE mark in a font and style identical to Complainant’s; he similarly targets Spanish speakers by writing text in Spanish; and, just like Complainant, he references educational services, albeit of a more nefarious variety.
Though Respondent registered the disputed domain name two years before any demonstrated bad faith use, the Panel in the circumstances of this proceeding may (and does) infer registration in bad faith. The disputed domain name was originally registered and is today registered in Respondent’s name, but at Complainant’s address, giving inferential support to Complainant’s allegation of employee misconduct. Complainant has demonstrated that prior to expiry of the original registration in March 2008 Complainant used the website at the disputed domain name for customer inquiries. There is little doubt that Respondent knew of Complainant when he registered the disputed domain name.
Under the “warehousing” doctrine the Panel may infer bad faith registration from Respondent’s long non-use of a domain name containing another’s mark, Telstra Corporation Limited v. Nuclear Marshmallows, supra, combined with (a) a distinctive mark, (b) no connection of Respondent with the mark at issue, (c) Respondent’s knowledge of Complainant and its marks at the time of registration, and (d) Respondent’s illegitimate use immediately following his re-registration of the disputed domain name with a new registrar. With no legitimate use at any time and no demonstrated authority from Complainant to make use of its marks “the most reasonable inference [. . .] is that Respondent did in fact know of Complainant and its trademark rights and registered the disputed domain name hoping to sell or exploit it in some manner in the future.” Michelman, Inc v. Internet Design, WIPO Case No. D2007-1369.
This case differs in one telling respect from the line of “consent to register” cases, see Greyson International Inc. v. William Loncar, WIPO Case No. D2003-0805, as to which the undersigned Panel has expressed his doubts as to whether the language of the Policy permits an inference of registration in bad faith following a period of legitimate use by the respondent. Id n. 14 and accompanying text; Damon’s Restaurants, Inc. v. JBR Enterprises, Inc., WIPO Case No. D2007-1603. Here Respondent has shown no legitimate use at any time, nothing to suggest that Complainant explicitly or implicitly authorized or sanctioned Respondent’s personal registration of the disputed domain name.
Complainant has established that Respondent registered and used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <adalanteed.com> be transferred to the Complainant.
Richard G. Lyon
Dated: May 21, 2008
1 A review of the current registrar’s website indicates that a term in GoDaddy.com Inc.’s registration agreement is: “We will share your information in order to comply with ICANN’s rules, regulations and policies.” It thus appears likely that Respondent’s use of the privacy service registration may have been ended by commencement of this proceeding.
2 The evidence submitted is undated but its text indicates an expiration date of June 30, 2006, implying that the document predates that date.
3 Fed. R. Civ. P. 8(d).
4 WIPO Overview, paragraph 2.4 (“This section only concerns sites that practice genuine, non-commercial criticism.”) (emphasis supplied). The Panel expresses no opinion on whether the site’s content constitutes criticism.