WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

American Council on Education and GED Testing Service LLC v. Direct Privacy ID 6CAE0, 46597, 605D8, Universal Academic Services / Domainadmin, Universal Academic Services

Case No. D2013-0983

1. The Parties

Complainants are American Council on Education of Washington, D.C., United States of America (“US”) and GED Testing Service LLC of Bloomington, Minnesota, US, jointly represented by Kilpatrick Townsend & Stockton LLP, US.

Respondents are Direct Privacy ID 6CAE0, 46597, 605D8, Universal Academic Services of Metairie, Louisiana, US / Domainadmin, Universal Academic Services of Panama City, Panama.

2. The Domain Names and Registrar

The disputed domain names <onlinegeddirect.com>, <onlinegedexperience.com>, <onlinegedfast.com>, <onlinegedpro.com>, <onlinegedprofs.com>, <onlinegedprofs.net> and <onlinegedquick.com> (collectively, “the Disputed Domain Names”) are registered with DNC Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2013. On June 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 3, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants and providing the contact details.

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 Respondents of the Complaint, and the proceedings commenced on June 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2013. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on July 1, 2013.

The Center appointed Natasha Lisman as the sole panelist in this matter on July 15, 2013. 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. Request for Consolidation

Along with the Complaint, Complainants submitted a request for consolidation in accordance with the Policy (“Request for Consolidation”), to which Respondents did not submit any response. The Panel finds that the evidence provided by Complainants in support of their Request for Consolidation persuasively shows that the Disputed Domain Names are all controlled by a single entity, Universal Academic Services. Based on this evidence and the well-recognized legal and equitable principles, as well as the fact that the Request for Consolidation is unopposed, it is hereby granted by this Panel. Accordingly, all the registrants of the Disputed Domain Names shall be treated as a single respondent.

5. Factual Background

The detailed allegations set forth in the Complaint and the extensive supporting affidavits and documentary exhibits submitted therewith show the following facts: Founded in 1918, Complainant American Council on Education (“ACE”), represents large numbers of presidents and chancellors of a wide range of US accredited degree granting institutions of higher education, as well as leaders of many higher education-related associations and organizations. Complainant GED Testing Service LLC (“GEDTS”) began as a division of ACE but subsequently, pursuant to a joint venture between ACE and another organization, became a separate entity jointly controlled by the two co-venturers.

Under an exclusive license with ACE, GEDTS publishes, markets, licenses, and oversees the administration of a test of high school equivalency known as the GED® test. This test has its origins in World War II, when ACE advocated for the development of a test that would enable returning veterans who had not completed high school to demonstrate that their educational level was equivalent to that of a high school graduate as a substitute for a high school diploma. The GED® test became available in 1947 and ultimately grew into an international program involving the GEDTS and all 50 US states and the district of Columbia, the Canadian provinces and territories, the US insular areas, the US military and federal correctional institutions, and the Veterans Administration hospitals, serving many individuals who for various reasons fail to complete high school.

Complainant ACE owns a number of trademarks built, in various forms, around the term GED. It has used some of the forms of the GED® mark in commerce for more than two decades, and has registered the various forms with the United States Patent & Trademark Office (“USPTO”) over the years, starting in 1985. The GED marks are widely known as GED® tests are administered in more than 3,400 Official GED Testing Centers in the US and Canada to hundreds of thousands of students and the overwhelming majorities of U.S. colleges and universities and employers accept the GED® credential as equal to a traditional high school diploma. Moreover, Complainants have invested substantial resources in promoting the GED® test and its name in all the media and on the Internet, including airing testimonial from celebrities and ordinary people who have taken the test. As one of its contractual obligations to ACE, GEDTS administers the domain names that include ACE’s GED® marks.

Respondent registered the disputed domain names at various times in 2011 and 2012. The investigation conducted on behalf of the Complainants, whose results are set forth in affidavits and documentary exhibits submitted in support of the Complaint, show that the Respondent initially used the Disputed Domain Names to operate a network of purported online high schools, collecting substantial tuition fees for administering bogus knowledge tests which virtually anyone who paid the requested tuition passed and then issuing fake diplomas. Moreover, these online high schools were misrepresented to be affiliated with named high schools that did not in fact exist and to be accredited by an accreditation bureau that is not recognized by either of the leading organizations involved in accrediting high schools. However, after March 2013, when Visa, acting on Complainants’ notices, suspended Respondent’s payment processing privileges, the web content of the websites at Disputed Domain Names was changed to display solely pay-per-click through advertisements for Complainants’ competitors and other online diploma schemes.

6. Parties’ Contentions

A. Complainants

Complainants assert that the incorporation of the term “ged” in the Disputed Domain Names renders them confusingly similar to ACE’s GED marks, that the Respondent has no rights or legitimate interests in the Disputed Domain Names, and that Respondent has registered and is using the Disputed Domain Names in bad faith, first to operate fraudulent “diploma mills” and then to obtain illicit pay-per- click through revenues while creating a substantial risk of diverting consumers from Complainants’ genuine education services.

B. Respondent

Respondent did not reply to Complainants’ contentions.

7. Discussion and Findings

Paragraph 4(a) of the Policy requires that in order to prevail, a complainant must satisfy the following elements with respect to a disputed domain name:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A respondent's default does not does not relieve the complainant from having to establish each of the above-listed three elements and thus does not automatically warrant a decision in its favor. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph. 2.2 (and cases cited therein). At the same time, in accordance with paragraph 14(b) of the Rules, in the absence of exceptional circumstances, a panel is authorized to draw from a failure of a party to comply with a provision or requirement of the Rules such inferences as it considers appropriate. This Panel finds that there are no exceptional circumstances for Respondent’s failure to submit a Response. As a result, the Panel infers that Respondent does not and cannot deny the specific facts alleged in the Complaint and has no evidence to counter to impeach the credibility of Complainants’ impressively extensive evidence presented through affidavits and documentary exhibits. Moreover, this Panel is of the view that with respect to facts that would reasonably be expected to be primarily or exclusively in the possession of Respondent, most notably those concerning the nature of its interests in and uses of the Disputed Domain Names, it is unfair to hold Complainants to an overly stringent standard of proof because any shortfall of relevant facts in the record is due to Respondent’s failure to respond. For all these reasons, the Panel takes all of Complainants’ well-pleaded and plausible supported allegations of the Complaint as true, and all of Complainant’s evidence as unrefuted. See Allianz, Compañia de Seguros y Reseguros S.A. v. John Michael, WIPO Case No. D2009-0942 (citing Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540).

A. Identical or Confusingly Similar

In view of Complainants’ long record of use of GED marks and registrations of those marks, many preceding Respondent’s registration of the Disputed Domain Names, Complainants’ rights in those marks are beyond question to this Panel. Having performed a visual and audio comparison of the marks and the Disputed Domain Names, the Panel agrees with Complainants that the full incorporation of the term “ged” in the Disputed Domain Names renders them confusingly similar to Complainants’ marks. See American Council on Education, GED Testing Service LLC v. Registrant [4065093]: Domain Manager, Technology Online LLC, WIPO Case No. D2012-2287; PepsiCo, Inc. v. PEPSLSRL (a/k/a P.E.P.S[) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696. The addition of such common, dictionary terms as “online” “pro” “profs” “fast” “quick” or “experience” is insufficient to prevent the confusing similarity, particularly because the Panel finds that the addition of these terms still leaves “ged” fully recognizable. See Educational Testing Service v. Ernan Bayram, WIPO Case No. D2011-0276 (holding that the addition of the generic term "online" to create the <online-toefl.co1n>, <online-toeic.com> and <toeflonline.org> domain names did not cure confusing similarity with the TOEFL and TOEIC trademarks); see also, Veuve Clicquot Ponsardin Maison Fondée en 1772 v. Net-Promotion, Inc., WIPO Case No. D2000-0347).

Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

It should be noted in connection with this element that paragraph 4(c) of the Policy offers respondents specific and helpful guidance for establishing their rights or legitimate interests in a disputed domain name. To reiterate, Respondent in this case, who surely had the relevant facts in its possession, could have but refrained from putting those facts into evidence. In addition to the adverse inferences that the Panel draws from this failure – i.e. that the facts in Respondent’s possession were unhelpful to it - the Panel finds that Complainants’ evidence of the actual fraudulent and illicit uses Respondent has made of the Disputed Domain Names more than amply satisfies Complainants’ burden of proof as to Respondent’s lack of rights or legitimate interests in the Disputed Domain Names. This conclusion is further buttressed by Complainants’ denial that they ever authorized Respondent to use their GED marks and their logical refutation of any plausible fair use.

Thus, paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies several circumstances, “in particular but without limitation” that can evidence the registration and use of a domain name in bad faith including the following: “(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line 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.” Furthermore, it is the consensus of UDRP WIPO panels that “[t]he content of a website (whether it is similar to or different from the business of a trademark holder) […] may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith). See WIPO Overview 2,0, paragraph. 1.2 (and cases cited therein). Applying these principles and standards, the Panel finds that the facts put into record by Complainants, and not refuted by Respondent - the content of Respondent’s websites, the uses to which it put those websites, and the fact that Respondent changed the content and uses as soon as it became impossible for it to collect credit card charges for its diploma services - constitute strong indicia of Respondent’s registration and use of the Disputed Domain Names in bad faith.

Respondent also manifested bad faith by its use of pseudonyms in connection with the Disputed Domain Names instead of forthrightly identifying itself as the registrant. Such concealment is further evidence of bad faith. See Societe Nationale de Radioclfusion Radio France v, France Info, WIPO Case No. D2002-1052 (taking steps to ensure that respondent's true identity cannot be determined demonstrates bad faith).

Accordingly, the Panel finds that Paragraph 4(a)(iii) of the Policy is satisfied.

8. 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 Names <onlinegeddirect.com>, <onlinegedexperience.com>, <onlinegedfast.com>, <onlinegedpro.com>, <onlinegedprofs.com>, <onlinegedprofs.net> and <onlinegedquick.com> be transferred to Complainant GEDTS as the party authorized and responsible to administer domain names that include the GED marks owned by Complainant ACE.

Natasha Lisman
Sole Panelist
Date: August 15, 2013