WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Council on Education and GED Testing Service LLC v. Geigo, Inc
Case No. D2013-1371
1. The Parties
The Complainants are American Council on Education (“ACE”) and GED Testing Service LLC (“GEDTS”), of Washington, D.C., United States of America (USA), and of Bloomington, Minnesota, USA, respectively, both represented by Kilpatrick Townsend & Stockton LLP, USA.
The Respondent is Geigo, Inc., of Panama City, Panama, represented by Victor Ramirez.
2. The Domain Name and Registrar
The disputed domain name <ged.org> is registered with URL Solutions, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2013. On August 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 7, 9 and 13, 2013, the Center sent reminders to the Registrar requesting registrar verification. On August 15, 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 Complainants on August 15, 2013, providing the registrant and contact information disclosed by the Registrar and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 20, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2013. The Response was filed with the Center on September 11, 2013.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 26, 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
General Educational Development (GED) is the name given to a standard of educational competence in the USA similar to high school graduation. Persons who may not have gained a high school diploma can choose to study for and be examined through the GED test in order to further their prospects of employment or for other personal reasons.
ACE, which was founded in 1918, is an organization that represents presidents, administrators and executives of institutions of higher education in the USA. The GED test was for many years administered by GEDTS as a division of ACE. More recently, a joint venture company was formed between ACE and another company, Pearson VUE, to control GEDTS as a separate legal entity. ACE licenses GEDTS to operate the GED test and to protect the GED brand.
ACE holds a number of trademarks for GED with and without a design and for GED in combination, including GED TESTING SERVICE, GED CONNECTION, GED MARKETPLACE, GED READY, and GED ACCESSPOINT, for goods and services related to educational testing. Representative trademarks registered in the name of ACE at the United States Patent and Trademark Office (USPTO) are:
GED, service mark, USPTO principal register, registration number 2,613,984, registered September 3, 2002, class 41;
GED TESTING SERVICE, service mark, USPTO principal register, registration number 3,448,412, registered June 17, 2008, class 41; and
GED (design), service mark, USPTO principal register, registration number 1,321,397, registered February 19, 1985, class 42.
The Respondent states that it is based in the Republic of Panama and that its business is concerned with Internet advertising.
The disputed domain name was first registered on May 5, 1998.
5. Parties’ Contentions
The Complainants contend that they have rights in numerous trademarks for GED alone or in combination and have produced copies of the relevant certificates of registration, including those for the trademarks detailed in section 4 above.
The Complainants contend that the disputed domain name fully incorporates the GED trademark and is identical or confusingly similar to that trademark. The presence of the generic top level domain “.org” is not relevant in the determination of confusing similarity. The Respondent’s redirection of visitors to purported sources of “GED Testing”, “Free GED Online Classes”, “GED Programs”, “GED Diploma” and “Online Education Degree” adds to the confusing similarity between the disputed domain name and the GED trademark.
The Complainants further contend that the Respondent has no legitimate interest in the disputed domain name. The Complainants state that, upon information and belief, the disputed domain name was registered by the Respondent on or about April 4, 2012, when the registration details became concealed by a privacy service. This is later than the date of registration of a number of the Complainants’ trademarks including those detailed in section 4 above.
The Complainants contend that the Respondent had constructive notice of the existence of the GED trademark. The GED trademark is so well known that, in line with previous decisions under the Policy, there can be no legitimate use of it by the Respondent.
The Complainants state that the Respondent cannot establish any rights or legitimate interests in the disputed domain name. There is no relationship between the Complainants and the Respondent. The Respondent has not been granted permission to use the Complainants’ trademark. The Respondent is not known by a name related to the disputed domain name.
The Complainants contend that the Respondent does not use the disputed domain name for a bona fide offering of goods or services but uses it to divert visitors to the websites of others including competitors of the Complainants. The Respondent is not making a fair use of the disputed domain name.
The Complainants further contend that the disputed domain name was registered and is being used in bad faith by the Respondent. It is submitted that in certain previous decisions under the Policy, the registration and use of a domain name comprising another’s well-known trademark was taken to be indicative of bad faith.
The Complainants state that the Respondent, for commercial gain, uses the disputed domain name and the Complainants’ trademark to attract Internet users by confusion and to direct visitors to click-through links leading to other websites.
The Complainants also contend that the Respondent registered the disputed domain name with false details of itself by means of the use of a private registration service.
The Complainants state that there is a pattern of bad faith registration of domain names by the Respondent, based on the decision in the case of Twitter, Inc., v. Geigo, Inc., WIPO Case No. D2011-1210.
The Complainants cite a number of previous decisions under the Policy that they consider to be relevant to the present case.
The Panel is requested to order transfer of the disputed domain name to the Complainant GEDTS.
The Respondent denies the Complaint. In the context, the Respondent’s references to the Complainant are generally to GEDTS.
The Respondent contends that the disputed domain name is not identical or confusingly similar to a trademark in which the Complainants have rights that are superior to those of the Respondent. The Respondent submits a list of 23 alternative definitions of “GED”, including for example General Engineering Degree.
The Respondent contends that numerous trademarks exist that incorporate “GED”, and submits a copy of the registration document relating to one example:
GED, word mark, with design, USPTO principal register, registration number 3,220,426, registered March 20, 2007, classes 7, 9, 37; registered to GED Integrated Solutions, Inc., Twinsburg, Ohio, USA.
The Respondent further contends that the Respondent does have rights or legitimate interests in respect of the disputed domain name. It has been used, prior to notice of the dispute, in connection with a bona fide offering of services, namely Internet advertising, without any confusion of visitors. The website parking page automatically displays advertisements that may be of interest to visitors, and according to previous decisions under the Policy, the generation of revenue in this way is a legitimate and fair use.
The Respondent states that the disputed domain name was first registered on May 5, 1998, and has been serving Internet advertisements without confusion or complaints for over fifteen years. The Respondent does not intend to divert visitors misleadingly or to tarnish the relevant trademarks.
The Respondent further contends that the disputed domain name was not registered in bad faith and is not being used in bad faith. It has been registered continuously since May 5, 1998. It was not acquired primarily for the purpose of selling it to the Complainant, and there is no evidence that it was. The Respondent had no knowledge of the Complainant at the time the disputed domain name was registered and the Complainant’s main website, “www.gedtestingservice.com”, was registered on February 17, 2011, more than a decade after the disputed domain name.
The Respondent states that the disputed domain name was not registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Complainant and the Respondent are not competitors and the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant’s business. The Complainant’s business is in the USA, and is not known in Panama, the Respondent’s place of business.
The Respondent contends that the disputed domain name was not registered to attract Internet users intentionally by confusion with the Complainant’s trademark and the Respondent has displayed no allusion to or association with the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identity of the Parties
The Complaint is presented in the names of ACE and GEDTS, which have different addresses and joint representation in this case. The Complainants state in a footnote, “Under its contractual obligations to Complainant ACE, Complainant GEDTS is the administrator of domain names that include Complainant ACE’s GED® Marks.” As to any remedy, the Complainants request the transfer of the disputed domain name to the Complainant GEDTS specifically. The Panel agrees that the Complainants have a specific common grievance against the Respondent and will therefore generally refer to the Complainants jointly without distinction between ACE and GEDTS.
The Respondent was initially named as Domain Admin PP-SP-001, Privacy Protect ID 10760, as shown on the DomainTools WhoIs website. The use of a privacy service can be for entirely legitimate reasons. The Registrar in this case disclosed the name provided by the registrant of the disputed domain name to be Geigo, Inc. Since there is no disparity between the Amended Complaint and the Response as to the name of the Respondent being Geigo, Inc., that Respondent name will suffice in this proceeding.
B. Identical or Confusingly Similar
The Complainants are required to prove that they have rights in a trademark to which the disputed domain name is confusingly similar. The Panel is satisfied by the evidence presented that the Complainants have rights in the registered trademark GED standing alone. The disputed domain name is <ged.org>, of which the generic top level domain “.org” may generally be disregarded in the determination of confusing similarity under the Policy. What remains is “ged”, which clearly is identical to the Complainants’ registered trademark GED.
The Complainants have rights also in trademarks embodying GED, including GED TESTING SERVICE, GED CONNECTION, GED MARKETPLACE, GED READY and GED ACCESSPOINT. Each of these trademarks leads with GED, and to that extent, there is a confusing similarity between the disputed domain name and the trademarks embodying GED. It is sufficient, however, to proceed on the basis of the identity between the disputed domain name and the trademark GED.
The Respondent says that GED is a common acronym and produces in evidence a list of 23 definitions of GED. The Respondent also produces evidence of a company named GED Integrated Solutions in the field of engineering and components, which holds a trademark for GED and implies that other GED trademarks exist.
The question to be answered, however, is not whether GED has multiple meanings, nor which company or entity may be most deserving of the disputed domain name. The question focuses solely on whether the disputed domain name is confusingly similar to the Complainants’ trademark, and the timeframe of comparison is the present. Clearly <ged.org> is not only confusingly similar to the Complainants’ trademark GED but in fact identical, and the Panel so finds in the terms of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainants are required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainants state that they have no relationship with the Respondent and have not licensed or authorised the Respondent to use the Complainants’ trademark in any way.
Paragraph 4(c) of the Policy provides for the Respondent to establish that it has rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The above circumstances are illustrative and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
The Respondent described its use of the disputed domain name as being for Internet advertising. The business model known as click-through or pay-per-click advertising is well recognised. Visitors to a website may be shown advertisements or information about other websites that can be reached by clicking on the link provided. In return for providing these advertisements and links, the website operator collects revenue from the advertisers. A pay-per-click business may be entirely legitimate and often is. The website may be actively managed or, as in the present case, the domain name may be parked passively with an Internet service provider that provides selected advertising and links as an additional service.
Thus, the disputed domain name is not noncommercial in terms of paragraph 4(c)(iii) of the Policy, and the Respondent cannot reasonably claim to be commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
The Respondent claims to have been using the disputed domain name for a bona fide offering of Internet advertising services, prior to any notice of the dispute, by implication qualifying for legitimacy under paragraph 4(c)(i) of the Policy. A pay-per-click website operated as a revenue-generating business, as is the Respondent’s stated purpose, must necessarily attract Internet visitors, which usually relies on appearance of the website in search results or on people guessing or trying to remember the URL. The attraction of visitors to a website by the unauthorised incorporation of another’s trademark, in which the website operator does not have rights, cannot form the basis of a bona fide offering of goods or services, especially when the links appearing on the website relate to the Complainant and/or its competitors.
The Panel finds for the Complainants under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainants must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Paragraph 4(b)(iv) of the Policy is pertinent. As found above by the Panel, the disputed domain name is confusingly similar and in fact identical to the Complainants’ trademark and the Respondent’s intention is to attract Internet visitors to its corresponding website. The Complainants have produced in evidence an annex running to about 140 pages containing screen shots of the Respondent’s website at <ged.org> and of some websites to which it offers links. The Respondent’s website (July 31, 2013) featured numerous headings or links related to GED in the sense of educational testing, for instance “GED Testing”, “GED Diploma”, “Free GED Online Classes” and “GED® Testing Alternative”, the last example being annotated “Students Can Access Classes 24/7 For Only $196. Start Today!” The Complainants’ evidence includes examples of other links offered by the Respondent, such as to Kaplan, Inc., which offers paid tuition for the GED qualification (but does provide an acknowledgement that ACE is the owner of the GED trademark and that ACE does not sponsor or endorse Kaplan, Inc.’s product).
The Panel finds on the balance of probabilities, having regard to all the evidence, that the Respondent intended the disputed domain name to attract Internet visitors by confusion with the Complainants’ trademark as to the sponsorship or endorsement of the Respondent’s website and the services it featured, constituting use of the disputed domain name in bad faith.
The date when the Respondent acquired the disputed domain name is uncertain. The initial creation date was May 5, 1998, however the Complainants say that on information and belief, the Respondent acquired it on or about the date when the registrant details showed the adoption of a privacy service, namely April 4, 2012. The Respondent, having received the Complaint containing this assertion, does not deny the later date, but makes a number of statements that stop short of clarifying when it acquired the disputed domain name. For example, the Respondent states: “The domain name was first registered on May 5, 1998 and the domain name has been serving internet advertisements without confusion or complaints for over fifteen years”. That does not state who was the first registrant or when the Respondent acquired it. Later the Respondent states, in connection with its Internet advertising services: “The Respondent has provided these services for over a decade without any complaints and the domain name was not registered in bad faith”. The Respondent’s decade of business in Internet advertising is not incompatible with it having acquired the disputed domain name in April 2012, or much later than May 5, 1998.
According to the WayBack Machine (“www.web.archive.org”) cited by the Respondent, at least as late as mid-2001, the disputed domain name was evidently not owned by the Respondent but was used by members of the Global Equity Derivatives Group of the former Union Bank of Switzerland. After that, unless the WayBack Machine failed to crawl the disputed domain name, it appears to have lain dormant until early 2007. The inescapable conclusion is that the Respondent was not the original 1998 registrant of the disputed domain name.
Nevertheless, the Respondent’s precise acquisition date for the disputed domain name is inevitably pre-dated by the Complainants’ rights. The Complainants’ trademarks include GED, registration number 1,321,397, granted on February 19, 1985, with first use in commerce stated to be in 1971 and GED, registration number 4,283,140, granted on January 29, 2013, showing first use in commerce as early as December 31, 1946. Irrespective of the date of the Respondent’s acquisition of the disputed domain name, the Respondent ought to have been aware of the Complainants’ well-known trademark. The Internet is international and the Respondent’s assertion of domicile in Panama is of no consequence in this case. The business conducted through the disputed domain name is in any case directed primarily towards the USA where the GED test is operative. The Panel finds on the balance of probabilities that the disputed domain name was acquired and thereby registered by the Respondent for the purpose for which it has been used, constituting registration in bad faith.
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 <ged.org> be transferred to the Complainant GED Testing Service LLC.
Dr. Clive N.A. Trotman
Date: October 10, 2013