WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pearson Education, Inc. v. eMarket Center LLC

Case No. D2011-1089

1. The Parties

The Complainant is Pearson Education of Upper Saddle River, New Jersey, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondent is eMarket Center LLC of Manila, the Republic of the Philippines.

2. The Domain Names and Registrar

The disputed domain names <funbrainplanet.com> and <funbrain7.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2011. On June 28, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2011.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 1, 2011. 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 facts relevant to the findings and decision in this case are that:

- The Complainant provides educational services and makes educational products.

- The Complainant uses the trade mark FUNBRAIN in respect of what it calls “an educational browser game website geared towards a children’s market”.

- The disputed domain names <funbrainplanet.com> and <funbrain7.com> were both registered on April 4, 2010.

- There has been no commercial or other relationship between the parties.

- At the time the Complaint was filed, websites corresponding with the disputed domain names carried children’s games not provided by the Complainant and links to miscellaneous third parties having no connection with the Complainant.

- The Complainant petitions the Panel to order transfer of the disputed domain names from the Respondent to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts trade mark rights in FUNBRAIN and alleges that the disputed domain names are confusingly similar to the trade mark.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant alleges that the Respondent registered and used the disputed domain names in bad faith.

B. Respondent

The Respondent did not respond to those allegations or to the Complaint in any other way.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove, in each case, that:

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

(ii) the 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.

Having considered the Complaint and the available evidence, the Panel makes the following findings.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain names are identical or confusingly similar to the trade mark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy¹.

The Complainant states that in “approximately 1999” the Complainant acquired a business that had since 1997 been using the trade mark FEN FUNBRAIN. The business that had registered the mark was called Family Education Network, hence “FEN”. The Complainant further states that “Complainant’s predecessor-in-title, FunBrain.com L.L.C. is the owner of United States Trade Mark Registration No, 2,395,317, which issued on October 17, 2000”. Moreover, it is said that the Complainant has filed for Federal registration of the trade mark FUNBRAIN in May of this year, but the application remains pending before the United States Patent and Trademark Office (“USPTO”).

The Panel finds that this evidence does not support a finding of trade mark rights belonging to the Complainant established through registration. The trade mark application carries little weight on its own under this Policy and there is insufficient evidence that United States (“U.S.”) Trade Mark Registration. No. 2,395,317 confers a right that belongs to the Complainant or can be exercised by the Complainant. There is little explanation of the relationship, if any, between Family Education Network and FunBrain.com L.L.C., nor any proof of devolution of title of the trade mark, or of the trade mark registration, from one or other of those enterprises.

Nonetheless, it is established that for the purposes of the Policy, trade mark rights can also arise through use and reputation if there is adequate proof of secondary meaning. The Complainant makes only the most cursory attempt to provide that proof, making sweeping claims as to the notoriety of the trade mark. It should be noted that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”)² asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:

“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required … Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”

These principles are very clear to the Panel and have been considered common among many UDRP panelists. If the Panel makes it own assessment of the claim to common law rights it must, for reasons already explained, ignore the alleged use of FUNBRAIN (or FEN FUNBRAIN, since the actual mark previously used is not clear) by parties other than the Complainant. First use of the FUNBRAIN by the Complainant is said to be in “approximately 1999”, however that expression is to be properly understood. It is said by the Complainant that its relevant website, “www.funbrain.com”, receives 35 million hits per month. We do not know if these are unique hits. Given the nature of the product, the Panel assumes not. It is said in the Complaint that “the website has 65,000 registered teachers” but again it is not clear what that actually means or what significance should be given to it in terms of representing the market presence of the trade mark. The only valuable observation made by the Complainant is that the term FUNBRAIN is relatively arbitrary and distinctive of the goods. That fact, coupled with the undisputed continuous use of the trade mark for over a decade, is the basis upon which the Panel is prepared to accept for current purposes that the Complaint points to a common law reputation in the trade mark FUNBRAIN which can be assumed is uniquely associated with the Complainant. For the purposes of the Policy, the Panel finds that the Complainant has unregistered rights in the trade mark.

The remaining question is whether the disputed domain names <funbrainplanet.com> and <funbrain7.com> are confusingly similar to the Complainant’s trade mark. For the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.³ The disputed domain names then differs from the trade mark by the addition of the word “planet” or the numeral “7”. The disputed domain names wholly subsume the trade mark and add what must be regarded as essentially non-distinctive matter. Countless earlier decisions under this Policy have held that the addition of a non-distinctive integer to a trade mark does little or nothing to avoid confusion.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark and so finds that the Complainant has satisfied the first limb of the Policy in respect of each domain name.

C. Rights or Legitimate Interests

The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests⁴.

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

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

The publicly available WhoIs information does not support any conclusion that the Respondent might be commonly known by the disputed domain names. There is no evidence that the Respondent has trade mark rights in the disputed domain names, registered or not.

The Respondent has not provided any evidence that it used the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute. The Panel finds that negative inferences arise from the evidence provided by the Complainant of websites corresponding with the disputed domain names which mimics in many respects the website from which the Complainant offers its products under the trade mark.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not responded to the Complaint. By failing to do so, it has also failed to discharge the onus of proof which fells to it to show that it has rights or legitimate interests in the disputed domain names.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and therefore the Complainant has satisfied the second element of the Policy in respect of each disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:

“i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

ii. you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy in that the Respondent has intentionally used the disputed domain names to attract, for commercial gain, Internet users to a web site or on-line location, by creating the requisite likelihood of confusion with the Complainant’s trade mark.

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 <funbrainplanet.com> and <funbrain7.com> be transferred to the Complainant.

Debrett G. Lyons
Sole Panelist
Dated: August 12, 2011

¹ See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

² Available at https://www.wipo.int/amc/en/domains/search/overview2.0

³ See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

⁴ See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.