WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pearson Education, Inc. v. Domainmonster.com Privacy Service, Identity Protect Limited, John Doe / Brian Benedict M Lu
Case No. D2013-1200
1. The Parties
The Complainant is Pearson Education, Inc. of Upper Saddle River, New Jersey, United States of America (the “USA”), represented by Day Pitney LLP, USA.
The Respondent is Domainmonster.com Privacy Service, Identity Protect Limited, John Doe of Godalming, Surrey, United Kingdom of Great Britain and Northern Ireland / Brian Benedict M Lu of Davao, Davao Del Sur, Philippines.
2. The Domain Name and Registrar
The disputed domain name <poptropica247.com> is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 11, 2013. On July 9, 2013, the Respondent sent an email communication to the Center stating that “Poptropica247.com is not the same in terms of content such us POPTROPICA.COM. We provide online free flash games and there no such content or game/s that are the same or like POPTROPICA.COM. Poptropica247.com is a flash game provider 24hours 7 days a week. These dispute shall be null and void against dispute or a violation of copyright”.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on July 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2013. The Respondent did not file a formal Response. On August 8, 2013, the Center informed the Parties about the commencement of the Panel appointment procedure.
The Center appointed Alexandre Nappey as the sole panelist in this matter on August 20, 2013. 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
The Complainant is Pearson Education, Inc, a company based in New Jersey, USA. The Complainant is an international educational publishing and technology company, which owns the “Poptropica” online game and offers numerous related products and services.
The Complainant is the holder of a number of registered trademarks based on or incorporating the word “Poptropica”, among which are the following:
- POPTROPICA US trademark registration No. 3 599 286 filed on July 3, 2007 and registered on March 31, 2009, for services in class 41;
- POPTROPICA US trademark registration No. 4 161 663 filed on July 23, 2009 and registered on June 19, 2012, for products in classes 16, 25 and 28;
- POPTROPICA Australian trademark registration No. 1347298 was deemed registered as of November 19, 2009, for products and services in classes 16, 25 and 28 and 41;
- POPTROPICA CTM registration No.10 28 467 was deemed registered as of November 19, 2009, for products and services in classes 16, 25 and 28 and 41.
The Complainant also owns various domain names consisting or including “poptropica”, notably the following gTLD:
- <poptropica.com>, which operates the Complainant’s main website since 2007.
The disputed domain name <poptropica247.com> was registered on October 20, 2011.
5. Parties’ Contentions
POPTROPICA is an online animated, educational role-playing game located at “www.poptropica.com”. The Complainant claims that the POPTROPICA trademark is a fanciful, arbitrary mark and as such an inherently distinctive trademark subject to the broadest scope of trademark protection.
The Complainant further asserts to have provided since 2007 a safe and controlled environment for school aged children to interact and play online. With over 80 million worldwide users, the POPTROPICA brand has acquired a significant goodwill at least four years before the disputed domain name <poptropica247.com> was registered in October 2011.
The domain name in issue incorporates the trademark POPTROPICA in its entirety, with the mere addition of the number “247”, which does not serve to distinguish the disputed domain name from the trademark.
The website operated under the domain name prominently displays the POPTROPICA mark at the top of the website, contains links to online games in the middle of the page and lists Poptropica, Cool Poptropica Game World, Poptropica Games, and Poptropica as its Top Search Terms. Moreover, World almost identical copyright notices on the bottom of the page, i.e. “© copyright 2012 Poptropica”. The Respondent’s website offers a category of “poptropica” games which are described as “educational games” and are thus, directly competing with the Complainant’s and using its well-known POPTROPICA mark. As a result, users are likely to mistakenly believe that the domain name and related services are offered by, affiliated with, or sponsored by the Complainant.
The Complainant further claims that the Respondent has no right of legitimate interest in respect of the domain name: it does not own any trademark encompassing the disputed domain name, nor the domain name comprises the legal name of the respondent. The Respondent did not, prior to notice of the dispute, use the domain name in connection with a bona fide offering of goods or services. The Respondent has not made a legitimate non-commercial or fair use of the domain name. On the contrary, the Complainant reminds that the Respondent’s website offers competing third-party online game providers and directly competes with the Complainant.
Finally, the Respondent registered the disputed domain name more than four years after the date on which the Complainant’s trademark and domain name <poptropica.com> were registered. The Respondent’s adoption and use with knowledge of the Complainant’s rights shows evidence of its intent to deceive and bad faith.
Such registration and use puts the Complainant at risk of irreparable injury because it has no control over the Respondent’s use of the disputed domain name. Inappropriate content, such as games featuring guns and violence is being hosted on the disputed domain name which is likely to draw children looking for the Complainant’s Poptropica game.
Finally, the Respondent is trying to attempt in bad faith to confuse consumers into visiting the disputed domain name, cause confusion and force advertisements on consumers when click on links to games on the website.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate.”
Having consideration to the parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following:
A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark POPTROPICA.
The disputed domain name <poptropica247.com> incorporates the Complainant’s trademark POPTROPICA in its entirety with the addition of the numbers “247”. The Panel agrees with the Complainant's analysis that the key identifier in the disputed domain names is the “Poptropica” element and that the “247” suffix in the disputed domain name merely refers to “24 hours a day” and is non-distinctive in itself (See for instance: Dyson Limited v. Spares 247 Limited, WIPO Case No. D2009-1091 (<dyson247.com> and <dyson24-7.com>).
The Panel concludes that the disputed domain name is confusingly similar with the trademark of the Complainant.
Therefore, the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name.
It is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a domain name, therefore previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
The Complainant has exclusive rights in the POPTROPICA mark. The Respondent is not affiliated with or related to the Complainant, nor is the Respondent licensed or authorized to use the POPTROPICA mark.
On the evidence before the Panel, the Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant in terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain names’ registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or
(ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain names have intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
In this case, the evidence indicates that the Respondent registered and used the disputed domain name <poptropica247.com> to provide online games to children. Considering that the disputed domain name is used for the same type of service for which the trademark POPTROPICA is registered and in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark when the Respondent registered the disputed domain name.
The Panel is convinced by the Complainant's submission that the Respondent has used the Disputed Domain Name intentionally to attract Internet users for commercial gain to its website by creating a likelihood of confusion as to the source or affiliation of its website under Paragraph 4(b)(iv) of the Policy.
This view is reinforced by the recent decision obtained by the Complainant against the Respondent in a closely similar case. See Pearson Education, Inc. v. Identify Protect Limited / Brian Benedict M Lu, WIPO Case No. D2012-0743 (<poptropica101.com> and <poptropica360.com>).
The Complainant has therefore established the third element in paragraph 4(a) of the Policy.
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 <poptropica247.com> be transferred to the Complainant.
Date: September 2, 2013