WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NCS Pearson, Inc. v. Whois Privacy Protection Service, Inc. / Dong Khac Cuong

Case No. D2015-2061

1. The Parties

Complainant is NCS Pearson, Inc. of Bloomington, Minnesota, United States of America ("United States" or "U.S."), represented by Kilpatrick Townsend & Stockton LLP, United States.

Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Dong Khac Cuong of Hanoi, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <raventest.net>, <wechsleradultintelligencescale.net>, and <wechsleradultintelligencescale.org> are registered with Name.com LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2015. On November 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 16, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 17, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 20, 2015.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 16, 2015.

The Center appointed David Perkins as the sole panelist in this matter on December 23, 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. Complainant

4.A.1 Complainant is the owner of the Wechsler Tests and the Raven Tests, which have been used respectively since the 1950s and the 1930s.

The Wechsler and Raven Tests

4.A.2 The Complaint explains that the Wechsler and Raven Tests are psychological assessments developed by psychometricians and experts, and subject to years of clinical research and development of sound, reliable, and predicative normative data. All Wechsler and Raven Tests are individually administered by trained psychologists using a combination of verbal and performance tasks. Complainant restricts the sale, distribution and administration of the tests to qualified professionals, as specific normative data is required to convert raw scores to scaled scores. Neither test can be taken online except within a secure network environment under the supervision of a qualified professional.

4.A.3 The Complaint explains that Complainant's Wechsler Tests are some of the most widely used neurological tests available to assess intelligence in adults and older adolescents. The tests are administered to tens of thousands of people each year, beginning in 1953. They are designed to measure verbal comprehension, perceptual reasoning, working memory, and processing speed, and are the instrument of choice of qualified testing professionals for measuring intelligence in adults and older adolescents. There are different versions of the Wechsler Tests for each age level in order to reflect the natural learning curve, so that a particular score at one age should roughly correlate to the same score for a person at another age.

4.A.4 In order to protect the integrity of the Wechsler Tests, actual test questions are closely guarded and not made generally available. Professionals qualified to give Wechsler Tests are required to sign agreements that prohibit them from sharing the test questions except under very controlled circumstances.

4.A.5 The Complaint explains that Complainant's Raven Tests are amongst the most frequently used cognitive ability tests used in educational, clinical and research settings worldwide. They have been in existence since the 1930s and are used by trained professionals to assess intelligence through abstract reasoning. The matrices and vocabulary tests were developed to measure an individual's ability to think clearly and to make sense of complexity (deductive ability) as well as the individual's ability to store and reproduce information (reproductive ability). The tests are widely used in schools.

4.A.6 As with the Wechsler Tests, the sale, distribution and administration of the Raven Tests is restricted to qualified professionals trained in giving such tests and scoring the results, both of which require specific clinical skills. Again, professionals qualified to give such tests are required to sign agreements that prohibit them from sharing the test questions except under very controlled circumstances.

The WECHSLER trade marks

4.A.7 Complainant is the proprietor of the following U.S. registered trade marks (collectively the "WECHSLER marks"):

4.A.8 First use of those registrations was as follows:

U.S. 2,808,502: January 22, 1999

U.S. 2,033,953: December 1, 1945

U.S. 1,956,456: July 18, 1994

U.S. 1,768,960: May, 1949

U.S. 1,768,593: May, 1949

U.S. 1,768,631: 1939

U.S. 1,788,112: April 30, 1953

U.S. 1,788,100: March 1, 1990

4.A.9 For all the above registrations, other than U.S. 1,758,631 and 2,033,953 the words other than WECHSLER are disclaimed.

The RAVEN trade marks

4.A.10 Complainant is the proprietor of the following registrations:

The above U.S. registration 4,818,010 was first used in 1938. In addition to the above registered trade marks, Complainant asserts common law trade mark rights in the RAVEN mark based on its continuous and widespread use beginning in 1938.

4.B. Respondent

4.B.1 In the absence of a Response, what is known about Respondent appears from the Amended Complaint and its Exhibits.

4.B.2 The disputed domain names <wechsleradultintelligencescale.net> and <wechsleradultintelligencescale.org> (the "'Wechsler' disputed domain names") were both registered on July 15, 2013 and the disputed domain name <raventest.net> (the "'Raventest' disputed domain name") was registered on August 12, 2010. As Respondent used Whois Privacy Protection, Inc. its identity was unknown until the privacy shield was lifted by the Registrar.

4.B.3 The two "Wechsler" disputed domain names are both inactive. The "Raventest" disputed domain name resolves to a website which offers what purport to be tests similar to those of Complainant's Raven Tests. After completing the tests at that website, users are told that they can order their results upon payment of EUR 19.95, which is approximately USD 20.00. A print out of that website is exhibited to the Complaint.

4.B.4 Complainant states that it became aware of the "Raventest" disputed domain name and the website to which it resolves in 2011. The Complaint exhibits print outs of the various Privacy Services and Internet Service Providers ("ISPs") which Complainant says have been used by Respondent over the period December 17, 2010 and November 2, 2015 in order to mask its identity. The Complaint also exhibits some 14 letters written over the period January 11, 2011 to August 21, 2014 to the ISPs hosting the website to which the disputed domain name resolved objecting to Respondent's infringement of the RAVEN trade mark, demanding Respondent cease using the "Raventest" disputed domain name and requesting those entities to cease using its copyrighted material. The exhibit shows that in April, 2012 the then current Registrar replied to the effect that it had forwarded Complainant's letter to the registrant (i.e., Respondent) with a request that it should contact Complainant with a view to resolving the dispute. However, nothing was received from Respondent.

4.B.5 Complainant states that, when in 2011 it became aware of the website to which the disputed "Raventest" resolves, it conducted a review of available statistics to determine whether there was sufficient traffic to that website to justify the cost of taking action and concluded at that time that such traffic was sufficiently small not to warrant taking such action. However, in September, 2015 Complainant was contacted by a school in the District of Richland, South Carolina reporting that Respondent's website to which the "Raventest" disputed domain name resolves had been accessed by so many parents and students in the district that the district had decided to discontinue its use of Complainant's Raven Tests to identify students for placement in the district's gifted student program. Complainant's correspondence with the school is exhibited to the Amended Complaint. Since this represented a loss of significant revenue to Complainant, Complainant decided to bring this Complaint.

5. Parties' Contentions

5.A. Complainant

Identical or Confusingly Similar

5.A.1 Complainant's case can be summarised as follows. First, the two "Wechsler" disputed domain names are identical to Complainant's U.S. registered trade mark no. 1,788,112 WECHSLER ADULT INTELLIGENCE SCALE, which has been used since 1953 (see, paragraph 4.A.8 above).

5.A.2 Second, the "Raventest" disputed domain name includes Complainant's RAVEN trade mark in its entirety and, consequently, is confusingly similar to that mark. That trade mark has been in use since 1938 (see, paragraphs 4.A.1 and 4.A.10 above). The addition of the descriptive suffix "test" does not avoid confusing similarity. Indeed, the context in which it is used — namely, resolving to a website which offers what purport to be Complainant's genuine Raven Tests — adds to confusion by creating a purported affiliation with Complainant.

Rights or Legitimate Interests

5.A.3 Here, Complainant's case is based on the following four propositions. First, since Complainant's long established WECHSLER and RAVEN marks are so well known, Complainant says there cannot be any legitimate use by Respondent. In support of that contention, Complainant cites the decisions in Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397.

5.A.4 Second, Complainant has neither licensed nor otherwise authorised Respondent to use those marks.

5.A.5 Third, Respondent is not commonly known by any of the three disputed domain names (see Policy paragraph 4(c)(ii).

5.A.6 Fourth, Respondent is neither using the disputed domain names in connection with a bona fide offering of goods or services (Policy paragraph 4(c)(i)), nor is Respondent making a legitimate noncommercial of fair use of those domain names (Policy paragraph 4(c)(iii)). In the latter respect, Complainant's case is that Respondent is using the disputed domain names to profit from the web traffic generated by potential customers of Complainant seeking to obtain information about Complainant's Raven and Wechsler Tests and/or from the association and goodwill with Complainant's WECHSLER and RAVEN trade marks. The Complainant cites in that respect the decision in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847.

Registered and Used in Bad Faith

5.A.7 As to the "Raventest" disputed domain name, Complainant's case is based on the following five propositions which Complainant asserts demonstrate circumstances evidencing bad faith under paragraph 4(b)(iv) of the Policy. First, Complainant says that the fact that the disputed domain names are identical or confusingly similar to its well-known RAVEN and WECHSLER trade marks, both established and used for very many years before registration of those domain names, is a form of opportunistic bad faith. Complainant cites various decisions under the Policy in support of this contention, including Veuve Clicquot Ponsardin, supra.

5.A.8 Second, Complainant cites as demonstrating use in bad faith Respondent's use of the "Raventest" disputed domain name in connection with a website which, as summarised in paragraph 4.B.3 above, prominently features Complainant's RAVEN mark and misleads consumers by purporting to offer identical products and services to those offered by Complainant under that trade mark — namely, Complainant's Raven Tests, in order to profit off its purported affiliation with Complainant and Complainant's products and services. In this connection, Complainant cites decisions under the Policy where use of a domain name to attract users for commercial gain has been held to constitute bad faith use. Namely, Hilton Group plc v Forum LLC, WIPO Case No. D2005-0244; Caesars World, Inc. v. Mark Stephens, WIPO Case No. D2001-0553); and Caesars World, Inc. v. Universalinteractives, WIPO Case No. D2001-0951.

5.A.9 Third, Complainant points — as also demonstrating bad faith use — to Respondent's use of the "Raventest" disputed domain name as free-riding on the reputation and goodwill of Complainant's trade marks to divert Internet users to Respondent's website for commercial gain by offering goods and services which compete with those offered by Complainant.

5.A.10 Fourth, Complainant characterises as bad faith use, Respondent's continued use of the disputed domain names despite being put on notice of Complainant's rights in the RAVEN mark.

5.A.11 Fifth, as another demonstration of Respondent's bad faith, Complainant points to Respondent's practise of concealing its identity by using an identity protection service in connection with the disputed domain names, coupled with Respondent's exploitation for commercial gain of Complainant's trade marks.

5.A.12 As to bad faith registration and use of the "Wechsler" disputed domain names, Complainant's case is that the circumstances in this case constitute passive use of those domain names falling within the factors set out in the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

5.B. Respondent

5.B.1 As noted, no Response has been filed.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the 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 the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the 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 the 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 paragraphs 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 to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 First, Complainant has established that it has rights in the WECHSLER ADULT INTELLIGENCE SCALE mark and other WECHSLER marks, as well as in the RAVEN registered trademarks. As to the RAVEN mark, considering that its use dates from 1938 and has been and continues to be widespread, the Panel finds that Complainant also has common law trade mark rights in that mark which predate its registrations set out in paragraph 4.A.10 above.

6.6 Second, the "Wechsler" disputed domain names are identical or confusingly similar to Complainant's said WECHSLER marks.

6.7 Third, Complainant's case — summarised in paragraph 4.A.2 above — that the "Raventest" disputed domain name is confusingly similar to its RAVEN trade mark is well made out.

6.8 Consequently, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests.

6.9 The Panel also finds Complainant's case summarised in paragraphs 5.A.3 to 5.A.6 above well made out and not rebutted by Respondent. Therefore, the Complaint satisfies paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.10 The Panel accepts Complainant's case that the facts relating to the registration and use of the "Raventest" disputed domain name — summarised in paragraphs 5.A.7 to 5.A.11 above — demonstrate bad faith registration and use under paragraph 4(b)(iv) of the Policy.

6.11 As to the "Wechsler" disputed domain names, the Panel finds that the following factors listed in Telstra, supra, (see, paragraph 5.A.12 above) as indicating bad faith registration and passive holding of disputed domain names are present on the facts of this case. They are (1) that Complainant's WECHSLER marks have a strong reputation and are widely known in the areas in which they are used; (2) that there is no evidence from Respondent of good faith use of the disputed domain names; (3) that Respondent has taken active steps to conceal its true identity; and (4) that, taking all the circumstances into account, it is not possible to conceive of any plausible actual or contemplated use of the disputed domain names by Respondent that would not be illegitimate, such as by being a passing-off or an infringement of Complainant's rights under trade mark law.

6.12 In the circumstances, the Panel finds that the Complaint in relation to the three disputed domain names satisfies paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <raventest.net>, <wechsleradultintelligencescale.net> and <wechsleradultintelligencescale.org> be transferred to the Complainant.

David Perkins
Sole Panelist
Date: January 4, 2016