WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Teaching Company, LLC, d/b/a The Great Courses v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Domain Admin, Private Registrations Aktien Gesellschaft
Case No. D2014-0456
1. The Parties
The Complainant is The Teaching Company, LLC, d/b/a The Great Courses, of Virginia, United States of America (USA), represented by Venable, LLP, USA.
The Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org, of Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <thegreatcourse.com> is registered with PDR 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 March 24, 2014. On March 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2014, 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 April 8, 2014 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 April 8, 2014. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 13, 2014.
The Center verified that the Complaint together with the amendments 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 May 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 16, 2014. 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
According to the Complainant, its business is in the field of educational media. The Complainant was founded in 1990 and is a leading provider of pre-recorded high school and college level courses. In the USA it is the leading developer and marketer of premium-quality media for learning and enrichment. The Complainant’s course materials are distributed via computer and mobile applications and on solid media.
The Complainant collaborates with partners such as the National Geographic Society and the Culinary Institute of America and has a catalogue of nearly 500 expert-level lectures.
The Complainant is the holder of registered trademarks including the following:
THE GREAT COURSES, design with words and torch, United Kingdom Intellectual Property Office (UKIPO), registration recorded June 21, 2010, registration number EU008571317, classes 9, 16, 35;
THE GREAT COURSES, design with words and torch, United States Patent and Trademark Office (USPTO), registration recorded October 29, 2013, registration number 4423703, classes 9, 16, 35.
The Complainant uses the domain name and website <thegreatcourses.com> as one of its major outlets, and has websites in various countries. The Complainant engages in affiliate marketing which depends on accurate Internet traffic.
Nothing is known about the Respondent except for such information as was provided to the Registrar in order to register the disputed domain name, which was registered on January 9, 2006.
5. Parties’ Contentions
The Complainant contends that it has rights in the registered and current trademarks listed in section 4 above and has produced documentation in the form of copies of online registration documents.
The Complainant contends that its trademark has been used since the 1990s decade and is well publicised. The trademark is well known internationally including in Australia where the privacy service used by the Respondent is located. A Google search for “great courses” lists almost exclusively references to the Complainant.
The Complainant says that its trademark is not descriptive and the disputed domain name can only refer to the Complainant’s trademark, thereby constituting cybersquatting. The disputed domain name is confusingly similar if not identical to the Complainant’s trademark except that it does not have the last letter “s”.
The Complainant further contends that the Respondent has no legitimate rights in the disputed domain name. The Complainant says that its first use of its trademark was in 1998, which precedes the registration date of the disputed domain name in 2006.
The Complainant further contends that the disputed domain name was acquired in bad faith and is being used in bad faith. The disputed domain name has not been used in connection with a bona fide business. It is used as a pay-per-click website that trades on the Complainant’s trademark, and the Respondent does not thereby acquire any rights or legitimate interests. Internet users searching for the Complainant’s Internet presence are likely to be diverted to the disputed domain name and the Respondent’s website, which offers links to other resources in higher and continuing education.
The Complainant contends that the Respondent’s use of a private registration service is, in the present circumstances, further evidence of bad faith. The Complainant has endeavoured to communicate with the Respondent in order to send an email letter giving reasons for demanding the transfer of the disputed domain name. It found that the only way to send an email to the Respondent was by completing a form on the privacy service website. The email demanding transfer of the disputed domain name was sent in this way on or about November 11, 2013. There was no reply.
The Complainant has produced a Declaration under penalty of perjury (the “Declaration”) signed and dated March 22, 2014 by the Chief Marketing Officer for The Teaching Company LLC. The Declaration states, among other matters, that the Complainant has successfully used its business model for approximately 24 years, that the Complainant’s website “www.thegreatcourses.com” was registered in 1999, and that the Complainant’s business has averaged USD 117 million in sales annually over the past five years.
The Complainant has cited a number of previous decisions under the Policy that the Panel is invited to take into account.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
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 Respondent
Paragraph 1 of the Rules defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. According to a WhoIs record made on February 19, 2014, the addresses of the disputed domain name registrant, administrative and technical contacts were declared to be: name: Domain Admin; organization: Privacy Protection Service INC d/b/a PrivacyProtect.org; street address: not stated, a code number occupied this entry; city: Nobby Beach (Queensland, Australia). A note stated: “Visit PrivacyProtect.org to contact the domain owner/operator”.
The Complainant on March 24, 2014 certified that the Complaint “has been sent or transmitted to the Respondent and Registrar”, presumably using the available contact details as cited above. On March 26, 2014, the Registrar informed the Center that the registrant, administrative and technical contacts were different, namely: Domain Admin, […]@privateregistrations.ws, Private Registrations Aktien Gesellschaft, Kingstown, Saint Vincent and The Grenadines.
According to a WhoIs record made on May 19, 2014, being the date of the Notification of Complaint and Commencement of Administrative Proceeding, the registrant, administrative and technical contacts were the same as on the February 19, 2014 record. The Complainant has elected to name both Privacy Protection Service INC d/b/a PrivacyProtect.org and Private Registrations Aktien Gesellschaft as Respondents. Since it would appear probable that a single guiding mind or entity is the registrant of the disputed domain name, the word Respondent is deemed to include this guiding mind or entity and it will be convenient to refer to the Respondent in the singular.
Communications sent to the supplied physical address of Domain Admin, Private Registrations Aktien Gesellschaft, received the courier report “address information needed”. Communications sent to the supplied physical address of Privacy Protection Service INC d/b/a PrivacyProtect.org, received the courier report “delivery arranged no details expected”. Communications were also sent to all available Respondent email addresses; the automated reply from firstname.lastname@example.org was that it could not be contacted.
It is not possible to know whether in this instance either of the Respondent in person or the Respondent entity has received the Complaint and attendant communications, or has not received them, or has contrived to avoid doing so. As the Hon. Sir Ian Barker QC said in the Decision in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703:
“[the Center] goes to some lengths to ensure that proper service is effected on the named registrant at the place disclosed in the WHOIS database or in the information supplied to the domain name Registrar. Some registrants provide only a post office box number or a convenience address. If the place of service does not happen to be the Respondent’s address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance”.
The Panel is satisfied that the Center has fulfilled its obligations to attempt to contact the Respondent in service of the Complaint in accordance with paragraph 2 of the Rules.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy is framed in the present tense and does not concern the date of registration of a trademark. On the evidence, the Panel is satisfied that the Complainant has rights in the registered trademark THE GREAT COURSES. A “.com” domain name can comprise only alphanumeric and certain punctuation characters, and font case and style are of no consequence. Insofar as the Complainant’s trademark comprises a design with words and a torch, and taking into account that the Complainant does business under the trade name “The Great Courses”, the Panel is satisfied that for the purposes of the Policy the Complainant has trademark rights in the expression “The Great Courses”.
The generic Top-Level Domain (gTLD) designation of the disputed domain name may generally be disregarded in the consideration of confusing similarity. What remains is “thegreatcourse”, which may be read easily as “The Great Course” and differs from the alphanumeric component of the Complainant’s registered trademark solely by the omission of the final letter “s”, or in other words, by being in the singular. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has the onus of proof under paragraph 4(a)(ii) of the Policy that the Respondent does not have any right or legitimate interest in the disputed domain name.
Paragraph 4(c) of the Policy provides that the Respondent may seek to establish rights or legitimate interests in a disputed domain name by demonstrating, for example, but without limitation:
“(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.”
Since the Complainant has the burden of proving in the negative that the Respondent does not have the required rights or legitimate interests, it is conventional for the Complainant to seek to establish that it has not granted such rights to the Respondent and to make reasonable enquiries to counter any showing the Respondent might make in the terms of paragraph 4(c) of the Policy.
The Complainant’s submission under the heading of legitimate rights reads in its entirety: “Complainant’s rights predate Respondent’s registration. The Great Courses’ first use date as set forth in its U.S. Trademark registration is 1998”. An established early date of first use of an unregistered trademark, coupled with a business of substance, may be persuasive. The Panel can find no such first use date in the documentation produced in evidence, however; on the contrary, first use appears to be June, 2010.
The Complainant’s case is less than straightforward because the disputed domain name was registered on January 9, 2006, some years earlier than the Complainant’s trademarks, which show dates of filing and registration on September 24, 2009 and June 21, 2010 for the UKIPO registration; and September 27, 2010 and October 29, 2013 respectively for the USPTO registration. Whilst it is not necessarily fatal to a complaint for a domain name to be found to predate a trademark registration (for instance if creation of the trademark was foreseeable), it would appear in this instance that the Complainant must rely on such rights in its unregistered trademark as it may have held prior to January 9, 2006.
The Panel is required to decide the Complaint on the basis of the statements and documents submitted (Rules, 15(a)) and the absence of a Response does presage a decision by default. Nevertheless the Panel may draw such inferences as it deems appropriate from the Respondent’s failure to avail itself of the provision to provide a Response (Rules, 14(b)). The sources of the Complainant’s rights in the trademark THE GREAT COURSES prior to registration of the disputed domain name must therefore be examined.
In the Complaint, certified as being complete and accurate, the Complainant states that its parent The Teaching Company, LLC, was founded in 1990. The Declaration states, insofar as it may be relevant to this issue, that the Complainant’s business model has been used successfully for about 24 years; and that the scale of the business in recent years has averaged USD 117 million in sales annually.
The Complaint states that the trademark THE GREAT COURSES has been used “since the 1990s”, by inference unregistered initially. In the Declaration it is stated that the Complainant’s domain name <thegreatcourses.com> was registered in 1999. This lends some support to the Complainant’s claim to have been using its trademark, prior to its registration, at least as early as 1999.
On the balance of probabilities, taking into account the scale and duration of the Complainant’s business, and the evidence of the unregistered trademark having been in use in 1999, all of which is uncontested by the Respondent, the Panel finds it more probable than not that the Respondent is without rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant is required to 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 that shall be evidence of the registration and use of a domain name in bad faith by a respondent:
“(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.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
A screenshot of the website to which the disputed domain name resolved on February 19, 2014, was headed prominently “thegreatcourse.com” beside which was an enquiry box with a button labelled “Search Ads”. On the page was a set of education-related link headings titled “Video Courses”, “Audio Courses”, “Fundamentals of Photography”, “Professional Courses”, “Mathematics Courses”, “A Business Degree”, “Online Teaching Degree” and “Masters Online Education”. Another set of link headings were titled “Masters Degree Programs”, “Photography Education” and “Project Management Education”.
The disputed domain name thus resolves to what may reasonably be interpreted as a conventional pay-per-click website. In the pay-per-click business model, the website displays advertising links to other websites, the operators of which pay a fee for referrals of Internet visitors to them. The pay-per-click business model may be entirely legitimate in and of itself and is widely used to generate income that may defray the operating costs of an informative or public service website or as a stand-alone business. The pay-per-click operation cannot succeed as a business, however, unless it is able to attract visitors in the first place. If this is done or attempted to be done by the display of another’s trademark without right or authorisation in the structure of a domain name, with intent to confuse Internet visitors as to the endorsement of that domain name, then that use of the domain name can have no legitimacy.
On the evidence and on the balance of probabilities the Panel finds the disputed domain name to have been used in bad faith under paragraph 4(b)(iv) of the Policy, and further finds the disputed domain name to have been registered for the bad faith purpose for which it has been used.
Significantly, the website also has a statement: “Inquire about this domain”. This may reasonably be taken to mean that the owner of the disputed domain name invites offers for its purchase. A conventional and easily recognised pattern of conduct, in the context, is for a domain name to be registered in anticipation that it may ultimately become saleable for profit, either to the relevant trademark owner or to a competitor of the trademark owner. Whilst the domain name owner awaits a sufficiently attractive offer, which may take some time, the domain name is commonly “monetised”, that is to say, it leads to a website displaying links that may earn revenue, and may incidentally provide the domain name owner with a count of visitors as an indication of its attractiveness and value.
Since the Respondent is making no significant use of the disputed domain name and it remains in token use 8 years after registration, but is evidently for sale, the Panel finds on the balance of probabilities that the prospect of eventual sale was the primary purpose of its registration. It is inherently unlikely that the Respondent would have acquired the disputed domain name to sell other than for profit. The Panel finds additionally that the disputed domain name was registered and used in bad faith in the terms of paragraph 4(b)(i) of the Policy.
The Complainant has asserted that the Respondent’s use of a privacy service is further evidence of bad faith. The Panel does not accept the Complainant’s suggestion of a narrow range of circumstance in which the adoption of a privacy service may be justified, or accept that a person desirous of innocent privacy in a free society should need to have any reason. The situation is different, however, if the facility for privacy is exploited intentionally in anticipation of obstructing the service of a proceeding, i.e., for the purpose of cyberflight.
According to the available facts, the Respondent’s privacy was constructed in such a way that the service of documents directly to the person or entity of the Respondent would be delayed or impossible, and verification of service would be impossible. It was not possible to get any closer than the privacy service and it is not known whether the documents reached the underlying person or entity of the Respondent, since there has been no reply. Furthermore, the evidence supports the Complainant’s contention that the Respondent’s purported contact details were changed contemporaneously with the filing of the Complaint, which, if the Respondent received the letter from the Complainant dated November 11, 2013, demanding transfer of the disputed domain name, would have been anticipated.
As the learned panelist said in the Decision in Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696: “‘Cyberflying’ is the term used to describe an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint. The Panel agrees with the conclusion of other UDRP panelists that this conduct is itself an indication of bad-faith registration and use under Paragraph 4(b) of the Policy.”
The Panel finds the Respondent to have attempted to engage in cyberflight, constituting an aggravating factor in bad faith registration and use of the disputed domain name.
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 <thegreatcourse.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: June 23, 2014