WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Higher Education Loan Authority of the State of Missouri (MOHELA) v. To Thi Thanh Tam / Vietnam Domain Privacy Services
Case No. D2014-1602
1. The Parties
The Complainant is Higher Education Loan Authority of the State of Missouri (MOHELA) of Chesterfield, Missouri, United States of America, represented by Thompson Coburn LLP, United States of America.
The Respondent is To Thi Thanh Tam / Vietnam Domain Privacy Services both of Ho Chi Minh City, Vietnam.
2. The Domain Name and Registrar
The disputed domain name <mohlea.com> is registered with April Sea Information Technology Corporation (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2014. On September 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2104, 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 September 24, 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 amended Complaint on September 26, 2014.
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 September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 21, 2014.
The Center appointed Antony Gold as the sole panelist in this matter on October 24, 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
The Complainant is a public body, created in 1981 and organized and existing under the laws of the State of Missouri in the United States of America. The Complainant provides low-cost education loans to students. Its services are provided under the MOHELA trade mark and in June 2001 the Complainant registered a word and device service mark for MOHELA at the United States Patent and Trademark Office (USPTO).
The Respondent is believed to provide a privacy protection service, that is a shielding service which protects the actual registrant of the disputed domain name from public view.
The disputed domain name was registered on August 3, 2004. The Complainant's attorneys wrote to the Respondent on February 10, 2014, seeking for the transfer to it of the disputed domain name, but did not receive a reply.
The website to which the disputed domain name points, as at June 25, 2014, contains what appear to be sponsored links to third party websites, a number of which purport to provide services in connection with the provision of loans. These include links to "Student Loans", "College Loans" and "College Scholarship Search".
5. Parties' Contentions
The Complainant explains that since its creation in 1981, it has operated in the not-for-profit sector providing low-cost loans to students. It says that its services have been provided under the MOHELA trade mark for over 30 years. It has a service mark for MOHELA for the provision of student loan services which was registered in June 2001. It asserts that its MOHELA mark is among the best-known trade marks in the United States of America relating to the provision of student loans.
The Complainant contends that the disputed domain name <mohlea.com> is confusingly similar to its MOHELA trade mark. It points out that, if the applicable generic Top-Level Domain suffix ".com" is disregarded, the only difference between the disputed domain name and its trade mark is that the letters E and L have been transposed. The Complainant says that, even so, the disputed domain name remains phonetically similar to the Complainant's trade mark. It points to a number of previous decisions under the Policy in support of this contention including Higher Education Loan Authority of the State of Missouri v. Andrew Dennis, WIPO Case No. D2012-1882, in which the panel found that a number of domain names, including <mhela.com>, were confusingly similar to the Complainant's trade mark.
The Complainant says also that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name and, in particular, that none of the circumstances which the Policy stipulates would be indicative of rights or legitimate interests on the part of the Respondent to the disputed domain name are applicable. Specifically, the Complainant says that, to the best of its knowledge, the Respondent has never used the disputed domain name in connection with a bona fide offering of goods and services, that there is no evidence that the Respondent is commonly known by the name "mohela" and that the Respondent is neither a licensee of the Complainant nor has it ever been affiliated with, connected to or endorsed by the Complainant. Moreover, the Complainant says that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark in issue. The Complainant says that use of the disputed domain name purely for the purposes of pointing to a website which contains sponsored links does not qualify as bona fide use. It refers in this respect to MEB v.Domain Administrator, WIPO Case No. D2010-1737, in which the panel found that the respondent had no legitimate interest in a disputed domain name when it was merely attracting Internet users to its website for the purpose of offering them sponsored links to other websites which were in competition with those of the complainant.
The Complainant says that the disputed domain name has been both registered and used in bad faith. In support of its assertion of bad faith registration, the Complainant contends that the Respondent registered the disputed domain name primarily for the purpose of disrupting its business as a competitor, contrary to paragraph 4(b)(iii) of the Policy. It says that the provision of its services under the MOHELA mark has been widespread for over 30 years and that the likelihood of the Respondent having fortuitously chosen the disputed domain name without having been aware of the Complainant's rights in a very similar name are so low as to be capable of being discounted.
Moreover, the Complainant says that, having regard to the only known use to which the disputed domain name has been put, namely in order to point to a website which contains links to services many of which appear to compete with those of the Complainant, the Respondent must have registered the disputed domain name in order to derive unfair commercial advantage from it. Further or alternatively, the Complainant says that the Respondent should have made appropriate enquiries to ensure that the registration of the disputed domain name did not infringe or violate third party rights.
In respect of bad faith use, the Complainant says that its MOHELA trade mark has no connection with the provision of student loan services save for the reputation which the Complainant has established in it through its longstanding and extensive use. Accordingly, it says that the Respondent is not entitled to use its trade mark, or any similar word, for the purpose of attracting visitors to its website. The Complainant draws attention to the non-exclusive examples of bad faith use which are set out at paragraph 4(b) of the Policy and asserts that that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's MOHELA mark contrary to paragraph 4(b)(iv) of the Policy. In this respect the Complainant refers to Volvo Trademark Holding AB v Unasi, Inc., WIPO Case No. D2005-0556, in which the panel found that attracting Internet traffic and diverting it to websites selling products of the complainant's competitors by using an identical or confusingly similar domain name was evidence of bad faith use under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
- the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
The first issue which requires consideration is whether the Complainant has rights in the name "mohela". The service mark on which the Complainant relies is not strictly a word mark for MOHELA but a word and device mark in which a stylized representation of "MOHELA" in upper font is used in conjunction with a line drawing of an apple positioned before the "M" of "MOHELA". Protection is afforded primarily to the overall stylized word and device rather than to the word "MOHELA" in isolation.
However, the apple device is only a comparatively small part of the composite mark and it is evident from the extract of the Complainant's website which has been provided by the Complainant that the word "MOHELA" is frequently used without the apple device and that the Complainant will accordingly have acquired unregistered rights in the word "MOHELA" solus. Accordingly the Panel finds that the Complainant has rights in the word "MOHELA".
The Panel accepts the Complainant's submissions that the disputed domain name is confusingly similar to the word "MOHELA". First, as the Complainant has pointed out, the generic Top-Level Domain suffix ".com" is not taken into account for these purposes so the comparison is between "MOHELA" and "mohlea" and these words are the same, save that the fourth and fifth letters in the disputed domain name have been transposed. Second, both words remain phonetically, as well as visually, similar. Third, neither word has any known meaning in the English or Vietnamese language and so there are no distinguishing conceptual differences.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel accepts the Complainant's assertions that it has never licensed or authorized the Respondent to use the mark MOHELA, that the Respondent has no connection or affiliation with its products and that there is no evidence that the Respondent has been commonly known by the name "mohela" or any name which incorporates the mark MOHELA.
Having regard to the distinctive character of the MOHELA trade mark and the lack of any possible explanation as to why the Respondent might claim a legitimate entitlement to use the disputed domain name, the onus is on the Respondent to explain why it may claim a legitimate interest in the disputed domain name. As the panel concluded in MEB v.Domain Administrator, WIPO Case No. D2010-1737, a respondent has no legitimate interest in a disputed domain name when it is merely using the disputed domain name in order to attract visitors to its website for the purpose of offering them sponsored links to other websites which are in competition with those of the Complainant.
In the absence of any response from the Respondent and having regard to the facts and matters outlined above, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered in August 2004. The only evidence adduced by the Complainant as to the use made by the Respondent of the disputed domain name comprises copies of the home page of the website to which the disputed domain name pointed in June 2014. In other words, the Complainant has not provided and/or does not have documentary evidence as to the use, if any, which was made by the Respondent of the disputed domain name as at the date of its registration or at any period prior to 2014.
However, unless evidence is available from an Internet archive such as the "Wayback Machine" at "www.archive.org", there are inherent difficulties involved in obtaining primary evidence of the use to which a respondent first put a disputed domain name which was first registered over a decade ago. In these circumstances, it is appropriate for the Panel to consider whether any reasonable inferences can and should be drawn as to whether the registration was in bad faith.
In this respect, the Panel takes into account the following points. First, it accepts the assertion of the Complainant that it has used MOHELA as a trading style for over thirty years and that the trade mark is very well known, albeit it would have been helpful for the Complainant to have supplied rather more information about the nature of its actual use of the trade mark. Second, there is nothing in the known facts which points to a possible innocent motive on the part of the Respondent for registering the disputed domain name – as, for example, might be the case where a respondent has registered a name which is partially or wholly descriptive in character. Third, the only evidence available as to the use made by the Respondent of the disputed domain name is of bad faith use. This is dealt with below. Fourth, the use of a privacy service to conceal the identity of the true Respondent, whilst not determinative of either bad faith registration or bad faith use is consistent with it. Fifth, - and tellingly - the Respondent has not replied to either a demand letter sent to it in February 2014 by the Complainant's attorneys nor has it submitted a Response to the Complaint. If the Respondent had wished to attempt to disabuse the Panel of the inferences which the Complainant invites the Panel to draw, it had an opportunity to do so, which it has declined to take. These indicators, both individually and cumulatively, support a finding of bad faith registration.
So far as bad faith use is concerned, the website to which the disputed domain name points contains links to services which are similar to and/or compete with those of the Complainant. The Respondent is clearly hoping that it will obtain traffic to its website from Internet users seeking the Complainant's website but who mis-type its website address and arrive at the Respondent's website. It will then derive pay-per-click income from those Internet users who then proceed to click on any sponsored links. Use of a name similar to that in which the Complainant has rights for these purposes constitutes bad faith use. See, for example, BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc.Whois IDentity Shield and Vertical Axis, WIPO Case No. D2010-1187, in which the complainant had trade mark rights in BZZAGENT. It successfully argued that use of the domain name <bzzaget.com> by the respondent for the purpose of pointing towards a similar type of directory page as is complained of in these proceedings, constituted bad faith use of the domain name. Accordingly, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's MOHELA mark. This being the case, the Complainant's other submissions do not require consideration.
The Panel accordingly finds that the disputed domain name was registered and is being used 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 <mohlea.com> be transferred to the Complainant.
Date: November 7, 2014