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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Quizlet, Inc. v. Nanci Nette, Name Management Group

Case No. DCO2020-0034

1. The Parties

Complainant is Quizlet, Inc., United States of America (“United States”), represented by Brand Enforcement Team 101 Domain, United States.

Respondent is Nanci Nette, Name Management Group, United States.

2. The Domain Name and Registrar

The disputed domain name <quizlet.co> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2020. On June 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2020, 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 July 2, 2020, 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 July 2, 2020.

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 July 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on July 27, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on August 4, 2020. 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 is a United States company offering online educational resources. It is the proprietor of several trademark registrations for the QUIZLET Mark (the “Mark” or the “QUIZLET Mark”), including the following:

- United States registration No. 3735796 for QUIZLET (word mark), registered on January 12, 2010 for services in class 42, claiming a date of first use of April 23, 2007; and,

- International registration No. 1148792 for QUIZLET (word mark), registered on December 4, 2012 for goods and services in classes 9 and 42.

Complainant operates its primary business website at “www.quizlet.com”, and has registered numerous domain names containing the QUIZLET Mark, including <quizlet.com.co>.

The disputed domain name was registered on July 20, 2010. The Complainant provided evidence that the disputed domain name was dynamically redirecting to a series of third party websites. At the time of this Decision, the disputed domain name does not resolve to an active website.

The record contains a copy of a cease-and-desist sent by Complainant to Respondent, addressed to the Registrar, dated April 21, 2020. The record does not contain any response thereto.

5. Parties’ Contentions

A. Complainant

Under the first element, Complainant states that the disputed domain name is identical to its QUIZLET Mark, which has been continuously used in commerce since 2007. Complainant states that its website at the domain name <quizlet.com>, registered in 2004, has 30 million active users in 130 countries. Complainant has a portfolio of over 50 country-code Top-Level Domains (“ccTLDs”) containing the QUIZLET mark, including seven domains under the ccTLD “.co”, increasing the chances that consumers would believe that the disputed domain name <quizlet.co> is connected to Complainant.

Under the second element, Complainant states that it has not granted Respondent permission to use its QUIZLET Mark for any purpose. The disputed domain name is being used to lead Internet users to third party websites with no connection to Complainant. Being redirected to these sites presents Complainant in an unfavorable manner. Respondent is not commonly known by the disputed domain name and has no registered trademarks for the QUIZLET Mark. The disputed domain name was registered for the purpose of disrupting Complainant’s business.

Under the third element, Complainant states that Respondent is using the disputed domain name to redirect Internet users and to prevent Complainant from reflecting its QUIZLET Mark in the corresponding domain name. Complainant has used the QUIZLET Mark since 2007 and Respondent registered the disputed domain name in 2010 in bad faith as the registration was undertaken with knowledge of Complainant’s Mark and reputation. Respondent, in using the disputed domain name to redirect to third party websites, is preventing Complainant from using its QUIZLET Mark to reach Internet users who are performing Internet searches seeking information about Complainant. Respondent has no legitimate interest in using Complainant’s Mark and is using it in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the QUIZLET Mark through registrations in several jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s QUIZLET Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the QUIZLET Mark, since the disputed domain name is identical to the QUIZLET Mark.

It is the well-established view of UDRP panels that the addition of the ccTLD “.co” to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in it. The nature of the disputed domain name, which is identical to Complainant’s QUIZLET Mark, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the QUIZLET Mark with the permission of Complainant. There is no evidence of legitimate noncommercial or fair use of the disputed domain name. The alleged redirection to third party sites would not support a finding of fair use. See WIPO Overview 3.0, section 2.5.3.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain names in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that 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.

The Panel finds bad faith registration under Policy, paragraph 4(b)(iv). Complainant’s rights in the QUIZLET Mark predate the registration of the disputed domain name. The disputed domain name is identical to Complainant’s Mark in its entirety. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that the evidenced use of the disputed domain name to dynamically redirect Internet users to third party websites appears intended to attract, for commercial gain, Internet users to its website or other online location by creating a likelihood of confusion with the Complainant’s trademark, and supports a finding of bad faith in the circumstances of this case. See WIPO Overview 3.0, section 3.1.4.

Furthermore, at the time of this Decision, the disputed domain name did not resolve to an active website. However, under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3, and cases thereunder such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), the Panel finds that the totality of the circumstances supports a finding of bad faith. In particular, the Panel finds that the QUIZLET Mark has been used since 2007 and there is no evidence provided by Respondent to demonstrate rights or legitimate interests in the disputed domain name.

Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

7. Decision

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 <quizlet.co> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: August 18, 2020

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