WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CollegeNET, Inc. v. Privacy Protection, Privacy Protect, LLC / Jason L Monroe
Case No. D2021-3452
1. The Parties
Complainant is CollegeNET, Inc., United States of America (the “United States” or “U.S.”), represented by Stoel Rives, LLP, United States.
Respondent is Privacy Protection, Privacy Protect, LLC, United States / Jason L Monroe, United States.
2. The Domain Name and Registrar
The disputed domain name <25livecollegenet.com> is registered with Sav.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2021. On October 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2021, 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 Complainant on October 31, 2021, 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 3, 2021.
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 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on January 7, 2022. 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
Complainant provides college information, scholarship services, and application processing services for college-bound students, all on its “www.collegenet.com” website and social network. Complainant owns valid and subsisting registrations for the COLLEGENET and 25LIVE trademarks in numerous countries, including the trademarks for COLLEGENET (U.S. Reg. No. 2,045,384) and 25LIVE (U.S. Reg. No. 3,778,527) with the earliest priority dating back to March 5, 1995, and July 28, 2008, respectively.
Respondent registered the disputed domain name on September 25, 2020. At the time this Complaint was filed, the disputed domain name resolved to a pay-per-click parking page with hyperlinks for advertisements including “programs for college online” and “online psychology degree”.
5. Parties’ Contentions
Complainant asserts ownership of the COLLEGENET and 25LIVE trademarks and has adduced evidence of trademark registrations in numerous countries around the world including in the United States with earliest priority dating back to March 5, 1995, and July 28, 2008, respectively. The disputed domain name is confusingly similar to Complainant’s COLLEGENET and 25LIVE trademarks, according to Complainant, because it is nothing more than a combination of these two of Complainants trademarks, and is virtually identical to the <25live.collegenet.com> domain used by Complainant.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any license or authorization from Complainant to Respondent; the lack of any evidence that Respondent is known by the disputed domain name; and Respondent’s use of the disputed domain name to host pay-per-click advertisements for matters closely related to Complainant’s business.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s intentional targeting of, and typosquatting on, Complainant’s <25live.collegenet.com> domain through the removal of the period between the subdomain name and second-level domain name; Respondent’s constructive knowledge of Complainant based on Complainant’s more than 20 years’ use of the COLLEGENET trademark in the United States; and Respondent’s use of the disputed domain name to host pay-per-click advertisements for matters closely related to Complainant’s business.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true […] UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); see also The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
A. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the COLLEGENET and 25LIVE trademarks have been registered in numerous jurisdictions with priority dating back to March 5, 1995 and July 28, 2008, respectively. Thus, the Panel finds that Complainant’s rights in the COLLEGENET and 25LIVE trademarks have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s COLLEGENET and 25LIVE trademarks. In this Complaint, the disputed domain name is confusingly similar to Complainant’s COLLEGENET and 25LIVE trademarks because, disregarding the “.com” generic Top-Level Domain (“gTLD”), both trademarks are contained in their entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar (...)”). In regard to gTLDs, such as “.com” in the disputed domain name, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
In view of Complainant’s registration for the COLLEGENET and 25LIVE trademarks, and Respondent’s incorporation of both trademarks in their entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1.
It is evident that Respondent, identified by the Registrar for the disputed domain name as “Jason L Monroe”, is not commonly known by the disputed domain name or Complainant’s 25LIVE or COLLEGENET trademarks.
Furthermore, service of pay-per-click advertisements through the disputed domain name attempts to trade off the goodwill of Complainant and accordingly cannot constitute any bona fide offering of goods or services using the disputed domain name. WIPO Overview 3.0, section 2.9 (Unless “genuinely related to the dictionary meaning” of the disputed domain, “[pay-per-click] links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of Complainant’s mark or otherwise mislead Internet users.”) See, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066 (“use of a domain name in connection with a web page that “only contains advertisements as sponsored links” is “for presumed commercial gain””); Zions Bancorporation v. Domain Administrator, Fundacion Private Whois, WIPO Case No. D2014-0465 (“a parking website containing sponsored links… cannot be considered either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name as the Respondent is unduly profiting from the Complainant’s goodwill by misleading Internet users to its website”); and Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (a disputed domain name “pointing to awebsite featuring PPC [pay-per-click] links… could not be construed as a bona fide orlegitimate noncommercial or fair use”).
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name and Respondent’s service of pay-per-click hyperlink advertisements ostensibly for services related to Complainant, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Where parties are both located in the United States and the complainant has obtained a federal trademark registration pre-dating a respondent’s domain name registration, panels have applied the concept of constructive notice, subject to the strength or distinctiveness of the complainant’s trademark, or circumstances that corroborate Respondent’s awareness of the complainant’s trademark. WIPO Overview 3.0, section 3.2.2. In this Panel’s view, when the disputed domain name was registered on September 25, 2020, Respondent had constructive knowledge of Complainant’s pre-existing rights in Complainant’s COLLEGENET and 25LIVE trademarks under United States law. See e.g., Champion Broadcasting System, Inc. v. Nokta Internet Technologies, WIPO Case No. D2006-0128 (Applying the principle of constructive notice where both parties are located in the United States). Indeed, circumstances in this case corroborate Respondent’s awareness of Complainant and Complainant’s trademarks, including Respondent’s apparent targeting of Complainant’s <25live.collegenet.com> subdomain, as well as Respondent’s website content replete with pay-per-click hyperlinks ostensibly for services related to Complainant.
The act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se. WIPO Overview, section 3.2.1 (“Particular circumstances UDRP panels take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely known mark …”). See also Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011); and ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding that the practice of “typosquatting”, of itself, is evidence of the bad faith registration of a domain name). Prior WIPO determinations expressly acknowledge that typosquatting that target website URLs. See e.g. eClinicalWorks, LLC v. Privacy Protection / Contact Privacy, Inc., WIPO Case No. D2014-1175 (noting the close similarity between Respondent’s <myeclinicalworks.com> and Complainant’s <my.eclinicalworks.com> and ordering a transfer). The Panel concurs with this approach. It is evident that Respondent registered and used the typosquatted disputed domain name to intentionally attract, for commercial gain, Internet users to the pay-per-click website linked to disputed domain name in a manner that confuses and misleads Internet users. Thus, the Panel infers Respondent’s bad faith based on the fact that the Respondent is trying to gain profit of typographical errors made by Internet users, when inputting the expression “25livecollegenet.com” instead of “25live.collegenet.com” into a web browser.
In view of Respondent’s typosquatting on Complainant’s trademarks and website URL, and Respondent’s direction of the disputed domain name to Respondent’s website pay-per-click parking advertisements for services related to Complainant, the Panel concludes that Complainant has established the third element 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, <25livecollegenet.com>, be transferred to Complainant.
Phillip V. Marano
Date: February 7, 2022