WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McGraw Hill LLC v. Registration Private, Domains By Proxy, LLC/ Jeff McDougall, Redbird Learning Inc.
Case No. D2021-1492
1. The Parties
The Complainant is McGraw Hill LLC, United States of America (“United States”), represented by Leason Ellis, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Jeff McDougall, Redbird Learning Inc., United States.
2. The Domain Name and Registrar
The disputed domain name <redbirdlc.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 May 13, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2012, 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 May 20, 2021, 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 May 25, 2021.
The Center verified that the Complaint together with the amendment 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on June 25, 2021. 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 global leader in educational services having provided educational publishing and related services since 1909. See generally McGraw Hill LLC v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-0491. The Complainant is the owner of United States Patent and Trademark Office Reg. No 4660528 for the mark REDBIRD (the “Mark”) issued on December 23, 2014, for educational products and services.
The Complainant owns the domain name <redbirdlearning.com> which redirects Internet users to the Complainant’s website at “www.mheducation.com” which offers for sale, among other of the Complainant’s products and services, REDBIRD branded products and services.
The Respondent registered the disputed domain name on September 7, 2018. The disputed domain name originally resolved to an active website that offered “Redbird Learning Delivers Reading Intervention” and solicited website visitors to provide their contact email because “We’re Here to Help”. The disputed domain name does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name entirely incorporates the Complainant’s Mark and merely adds the letters “lc” (a presumed abbreviation for “learning center”) as a suffix to the Mark. The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant asserts that the Respondent has registered and used the disputed domain name in bad faith to lure unsuspecting Internet users to its website offering for sale competing educational services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed entirely of the Complainant’s Mark with the addition of the two letters “l” and “c” forming a suffix. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, any additions beyond the Mark are trivial and the registered mark is a clearly recognizable predominant part of the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)), section 1.7; Nomura International Plc / Nomura Holdings, Inc. contre Global Domain Privacy / Nicolas Decarli, WIPO Case No. D2016-1535 (transferring <nomura-bank.com>). See also WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); Nomura International Plc and Nomura Holdings, Inc. v. Whois Privacy Protection Service, Inc. / PUK SERVICES, WIPO Case No. D2015-2036 (transferring <nomuralabuan.com>); Nomura International Plc. v. Name Redacted, WIPO Case No. D2021-0654.
The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759 (transferring <monsterenergy.world>).
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. The Respondent did not formally respond to the Complaint or to communications from the Complainant demanding that the Respondent cease and desist from use of the Complainant’s Mark. Furthermore, the nature of the disputed domain name, being nearly identical to the Mark, carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
1. Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
2. The Panel finds the disputed domain name was registered and is being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s well-known Mark. The Mark is not a common or descriptive term for educational services and products. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s Mark when registering and deploying the disputed domain name to a website featuring educational products and services. Even if one were to accept the unbelievable proposition that the Respondent was unaware of the Mark, willful blindness is no excuse and does not avoid a finding of bad faith registration and use. (Instagram LLC v. contact Privacy Inc. / Sercan Lider, WIPO Case No. D2019-0419).
Moreover, in additional to not responding to the Complaint, the Respondent ignored Complainant’s multiple efforts to contact the Respondent. The Respondent registered the disputed domain name under a privacy shield which in itself does not establish bad faith use and registration, but which is a factor the Panel may consider. See WIPO Overview 3.0, section 3.6.
Moreover, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109 (transferring <dpdcouriercompany.com>); Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335 (transferring <monsterenergy.club>.
Finally, that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith under the circumstances of this case and the doctrine of passive holding. See WIPO Overview 3.0, section 3.3 and section 3.2.1. The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
The Complainant has met its burden under 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 <redbirdlc.com> be transferred to the Complainant.
William F. Hamilton
Date: July 9, 2021