WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Houghton Mifflin Harcourt Publishing Company v. Nandlal Khandelwal
Case No. D2015-1915
1. The Parties
Complainant is Houghton Mifflin Harcourt Publishing Company of Boston, Massachusetts, United States of America (“U.S.”), represented by Powley & Gibson, P.C., United States of America.
Respondent is Nandlal Khandelwal of Bangalore, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <cogat-test.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2015. On October 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response confirming that 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” 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2015. The Response was filed with the Center on November 25, 2015.
The Center appointed David Perkins as the sole panelist in this matter on December 2, 2015. 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
4.A.1. Complainant is a leading global education and learning company. It is one of the world’s largest providers of materials for pre-k-12 learning, including materials relating to testing and test administration. The Panel understands “k-12” to relate to kindergarten (4 to 6 year olds) through twelfth grade (17 to 19 year olds). Complainant creates, publishes and sells the Cognitive Abilities Test, including student test booklets, answer sheets, examiner’s manuals and score reports under the COGAT trade mark.
4.A.2. Complainant states that its CogAT product is a respected and widely used group administered abilities test designed to test reasoning and problem-solving skills of all students, including for eligibility into gifted and talented programs. It measures abilities in three domains: verbal, quantitative and nonverbal reasoning, using multiple-choice items, and is available for students in kindergarten through twelfth grade. In addition to being used to determine eligibility for accelerated instruction, the assessment is often used in conjunction with the Iowa Assessments to pinpoint significant gaps between expected and actual achievement.
4.A.3. Complaint states that COGAT was first published as the Lorge-Thorndike Intelligence Tests in 1954 as a measure of general abstract reasoning tests at grades 3 and higher. It was renamed as the “Cognitive Abilities Test” in the 1960s. The most recent edition of CogAT is Form 7, which was first available for purchase in the fall of 2013. It may be administered either in paper-pencil or online, and users have a choice of getting student results through paper or web-based reports.
The COGAT trade mark
4.A.4. Complainant is the proprietor of registered U.S. trade mark 1,492,201 for the mark COGAT in Class 16. Application for that mark was filed on September 24, 1987 and the mark was registered on June 14, 1988. The COGAT mark was first used in commerce on May 12, 1987.
4.A.5. A print out of Complainant’s website is exhibited to the Complaint. That website is accessed through the <riversidepublishing.com> domain name. The Riverside Publishing Company and Complainant are affiliates.
4.B.1. Respondent is the registrant of the disputed domain name, which was created on December 28, 2013.
4.B.2. The disputed domain name resolves to a website that provides detailed information about Complainant’s CogAT product and, according to Complainant, facilitates the sale of test preparation materials. A print out of that website is exhibited to the Complaint.
4.B.3. In Respondent’s reply dated September 23, 2015 to a cease and desist letter from Complainant’s counsel dated September 15, 2015 Respondent stated:
“I write articles and run on this website to provide information and I do not endorse or sell anything virtually or materialistic. Basic purpose was to run website to provide information and nothing else.”
In that reply Respondent further stated:
“As per your objection I have changed the copyright part at the bottom of my website. ‘Copyright © cogat-test.com -we provide information’. Added following information at the top of ‘ABOUT US’ page so that it does not mislead or misguide anyone. ‘This website is for providing information only. We are not selling or trading any information through our website. We are not sponsored, authorised or endorsed by Institute or Company or anyone.’”
4.B.4. In its reply dated October 12, 2015 to a second cease and desist letter from Complainant’s counsel dated October 2, 2015 Respondent stated the following:
“Once again I want to let you know that am not diverting any of my traffic on my website to any other place. ..... I have made my point clear to my visitors by adding the following lines mentioned below so that it will not confuse visitors and they will be aware that my website is in no way linked or affiliated to you. I have not pasted any of the articles from your website.
Additionally added the below information in ‘About Us’ page on my website.
‘All the information provided on this website is based on the information collected over Internet from various websites and articles. Some information might be wrong or misleading and I request the readers to check the facts and actual information from the original website of HMH Publishing Company. My website is no way linked or affiliated to HMH Publishing Company or Riverside Publishing Company.’”
4.B.5. In that Response Respondent also states:
“Feel free to let me know if you wish to buy this domain.”
5. Parties’ Contentions
Identical or Confusingly Similar
5.A.1. Complainant’s case is that, since the disputed domain name incorporates the COGAT mark in its entirety, it is confusingly similar to that mark.
Rights or Legitimate Interests
5.A.2. First, Complainant says that, because its COGAT trade mark uniquely identifies itself and its product, Respondent’s use of that mark in the disputed domain name cannot be a legitimate use.
5.A.3. Second, Complainant says that Respondent is not licensed or otherwise authorised to use the COGAT trade mark.
5.A.4. Third, Complainant says that Respondent is not commonly known by the disputed domain name.
5.A.5. Fourth, Complainant asserts that Respondent’s use of the disputed domain name is neither a legitimate noncommercial or fair use. As to noncommercial use, Complainant points to Respondent’s website displaying sponsored advertisements for which, Complainant states, Respondent is likely compensated. As to fair use, Complainant refers to Respondent’s answer dated October 12, 2015 to its said second cease and desist letter dated October 2, 2015. That letter identified examples of instances in which Respondent’s website to which the disputed domain name resolves contains incorrect and misleading information about the CogAT product. Respondent’s answer - which is reproduced in part in paragraph 4.B.3 above - is, Complainant says, an admission that Respondent’s original website contained such incorrect and misleading information.
Registered and Used in Bad Faith
5.A.6. As to registration in bad faith, Complainant asserts that from the content of Respondent’s website to which the disputed domain name resolves it is obvious that Respondent registered the disputed domain name with full knowledge of Complainant’s rights to the COGAT mark. Further, Complainant points to the copyright notice used in Respondent’s original website - “Copyright © CogAT Test - Cognitive Abilities Test” - and to the modified copyright notice set out in paragraph 4.B.2 above. The fact that both those notices fully incorporate Complainant’s COGAT mark also indicates, Complainant says, that Respondent had full knowledge of Complainant’s trade mark rights when registering the disputed domain name and creating the website to which it resolves.
5.A.7. As to use in bad faith, Complainant’s case is that the facts fall within paragraph 4(b)(iv) of the Policy. This is because, Complainant asserts, consumers are likely to be confused as to the source of Respondent’s website and could believe that the website is sponsored, endorsed or otherwise affiliated with Complainant and its products and services. Further, Complainant contends that Respondent has been unjustly enriched by misappropriating Complainant’s goodwill and creating a likelihood of confusion at the expense of Complainant. In support of that proposition, Complainant relies upon four cases decided under the Policy. They are Ross-Simons v. Henry Chan, WIPO Case No. D2003-0970; NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; Tarjeta Naranja S.A. v. Mr. Dominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295; and AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001-0289.
5.A.8. Finally, the Complaint identifies the respects in which Complainant says that certain content of Respondent’s website provides false or misleading information about Complainant’s CogAT product. By Respondent’s use of the disputed domain name, which Complainant asserts is confusingly similar to its COGAT trademark, Complainant contends that consumers will be lead to believe that Respondent’s website is sponsored, endorsed or otherwise affiliated to Complainant. Complainant says such false and misleading information is harmful to the goodwill it has established under its COGAT trademark.
5.B.1. In its Response, Respondent refers to its earlier emails of September 23, 2015 and October 12, 2015:
“Earlier I have received emails from complainant with few objections in my website and I have resolved all of them. (Attaching copy of my reply to the complainant).”
Extracts from Respondent’s earlier emails dated September 23, 2015 and October 12, 2015 are respectively reproduced in paragraphs 4.B.2 and 3 above. In that respect, in Respondent’s email dated October 12, 2015, he refers to additional wording to his website which includes the statement:
“My website is in no way linked or affiliated to HMH publishing Company or Riverside Publishing Company.” See, paragraph 4.B.3 above.
5.B.2. Respondent’s case is summarised in the Response in the following terms:
“I have informed them earlier through emails and I would like to bring to your notice that am just a blogger and I have collected information on my website based on articles available online and made articles easy to read for ordinary person. I have confirmed that I am not selling anything nor am I doing any affiliate work and diverting my website traffic.”
5.B.3. Other than the above, the Response does not specifically deal with Complainant’s case under paragraphs 4(a)(i) to (iii) of the Policy, which is summarised in section 5.A above.
6. Discussion and Findings
6.1. The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that disputed domain name has been registered and is being used in bad faith.
6.2. The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name.
6.3. The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4. As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5. Complainant has demonstrated that it has rights in the registered COGAT trademark, see paragraph 4.A.4 above. Since the disputed domain name incorporates that trademark in its entirety, the Panel finds that it is confusingly similar to that mark. Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.6. The Panel takes the view that Respondent’s blog is not dissimilar to a fan site. In that respect, both views reported in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) indicate that where Respondent seeks to derive commercial advantage from its registration and use of Complainant’s trademark through a disputed domain name that is confusingly similar to such mark, that is not a legitimate use. For example, it would not normally qualify as legitimate use where the site to which the disputed domain name resolves includes pay-per-click links or automated advertising. Panels have noted that such activity by a respondent prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet.
6.7. In this case, Respondent’s website to which the disputed domain name resolves does contain links to sponsored advertisements from which Complainant asserts that Respondent is likely compensated: paragraph 5.A.4 above. In its Response, this is not denied by Respondent. Indeed, Respondent states that its blog is his only source of income.
6.8. In the circumstances, the Panel concludes that the Complaint has satisfied the requirement of paragraph 4(a)(ii) of the Policy in establishing that Respondent cannot demonstrate rights or legitimate interests in respect of the disputed domain name.
Registered and Used in Bad Faith
6.9. Given the content of Respondent’s website, it is clear that Respondent was acutely aware of Complainant, its products and its use of the COGAT mark which is prominently featured on its website and includes the ® symbol indicating that it is a registered trademark.
6.10. As to use of the disputed domain name, Complainant’s case is, as stated, advanced under paragraph 4(b)(iv) of the Policy. On the basis that Respondent is generating revenue from the sponsored advertisements displayed at its website - which Respondent has not denied - the Panel’s conclusion is that Complainant has demonstrated sufficient evidence to satisfy that paragraph of the Policy.
6.11. However, the Panel does not find the four cases cited by Complainant (see paragraph 5.A.6 above) persuasive. That is because, unlike the facts in the present case, in each of those cases the links were directed to competitors of the complainant trademark owner. In the Ross-Simons case the links were to competitor jewellery retailers, in the NetWizards case to competitor Internet service providers, in the Tarjeta Naranja case to a competitor store card provider and in the AutoNation case to Internet providers of competitor automotive related services. By comparison, in this case - as noted in paragraphs 4.B.2 and 5.B.2 above - Respondent is not directing its websites to Complainant’s competitors.
6.12. Also to be considered is whether the disclaimer Respondent included on its website after being put on notice of Complainant’s complaint - see, paragraphs 4.B.2 and 4.B.3 above - is sufficient to avoid a finding of use in bad faith. In that respect, the consensus view in paragraph 3.5 of the WIPO Overview 2.0 is that a disclaimer cannot by itself cure bad faith. This is by reason of “initial Internet confusion” as explained in the WIPO Overview 2.0.
6.13. Finally, in its Response Respondent urges the Panel not to find against it since the website to which the disputed domain name resolves “...is the only source of income for me”. In that respect, the Panel’s finding does not prevent Respondent from continuing to post its blogs. This case is only concerned with the disputed domain name and the Panel’s finding does not itself preclude Respondent from continuing to post material relating to Complainant’s CogAT product and services generated from the sources referred to by Respondent in its email of October 12, 2015. See paragraph 4.B.3 above.
6.14. In the light of the foregoing, the Panel finds that the Complaint satisfies paragraph 4(a)(iii) 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 <cogat-test.com> be transferred to Complainant.
Date: December 21, 2015