WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Public University System, Inc. v. Toby Schwarzkopf / Kyle Kupher / Domains by Proxy, LLC / DreamHost, LLC
Case No. D2017-0070
1. The Parties
The Complainant is American Public University System, Inc. of Charles Town, West Virginia, United States of America ("USA" or "US"), represented by The Marbury Law Group, PLLC, USA.
The Respondents are Toby Schwarzkopf of Los Angeles, California, USA / Kyle Kupher of Los Angeles, California, USA / Domains by Proxy, LLC of Scottsdale, Arizona, USA / DreamHost, LLC of Brea, California, USA.
2. The Domain Names and Registrars
The disputed domain name <americanpublicuniversityloanforgiveness.com> is registered with DreamHost, LLC.
The disputed domain name <americanpublicuniversitysystemloanforgiveness.com> is registered with GoDaddy.com, LLC.
Collectively, the disputed domain names are referred to herein as the "Domain Names".
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 13, 2017. On January 16, 2017, the Center transmitted by email to DreamHost, LLC and GoDaddy.com, LLC a request for registrar verification in connection with the Domain Names. On January 17, 2017, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. On January 20, 2017 and January 23, 2017, DreamHost, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on February 15, 2017.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 24, 2017. 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 business corporation established under the laws of the State of West Virginia, USA and headquartered in that State. It is a for-profit educational institution offering online undergraduate and graduate degree programs to US military personnel as well as civilians in all US states and in many other countries. Operating under the American Public University name since 2002, the Complainant has provided courses to hundreds of thousands of students, with more than 90,000 enrolled in 2016, principally using websites at "www.apus.edu" and "www.apu.apus.edu".
The Complainant holds several US trademark registrations for figurative trademarks featuring the names "American Public University Volunteers" or "American Public University System", including the following:
AMERICAN PUBLIC UNIVERSITY VOLUNTEERS (words and design)
October 29, 2013
AMERICAN PUBLIC UNIVERSITY VOLUNTEERS (words and design)
October 1, 2013
AMERICAN PUBLIC UNIVERSITY VOLUNTEERS (words and design)
February 17, 2015
AMERICAN PUBLIC UNIVERSITY SYSTEM (words and design)
May 26, 2015
The Complainant states that it has expended some USD 400 million since 2002 in marketing American Public University services and brands. The Complaint also includes substantial evidence of media references and educational awards, indicating that the Complainant's marks are widely advertised and well known in the US marketplace.
The relevant Registrar reported to the Center that the disputed domain name <americanpublicuniversitysystemloanforgiveness.com> was created on May 31, 2016 and is registered in the name of the Respondent Toby Schwarzkopf, evidently an individual residing in Los Angeles, California, USA, giving no organization name. According to the relevant Registrar, the disputed domain name <americanpublicuniversityloanforgiveness.com> was registered on August 3, 2016 in the name of a domain privacy service but on behalf of the Respondent Kyle Kupher, apparently another individual residing at a different address in Los Angeles, California, USA, also listing no organization name.
The disputed domain name <americanpublicuniversitysystemloanforgiveness.com> resolves at the time of this Decision to a website headed "American Public University System Loan Forgiveness for Federal Student Loans", with a toll-free telephone number and a questionnaire to verify eligibility for student loans. The website includes information about the history of American Public University System and federal programs for students seeking full or partial loan forgiveness after obtaining federal loans to take courses from for-profit institutions. The website announces, for example, "If you attended American Public University System, regardless of when you attended, you may qualify for partial or even full loan forgiveness." It is not clear from the website itself what fees the Respondents charge for their services. The website invites visitors to inquire further by telephone:
"Due to recent updates with student loan forgiveness programs, students of American Public University System may qualify for loan forgiveness. There are varying circumstances around the loan forgiveness, but if you are a victim to these predatory for-profit schools we highly advise you call us too see how we can help. To see if you qualify, and learn what steps to take next, give us a call at 866-637-4552."
Screenshots attached to the Complaint show that both of the Domain Names formerly resolved to this website. However, at the time of this Decision, the disputed domain name <americanpublicuniversityloanforgiveness.com> did not resolve to an active website.
The Complainant's representatives attempted to communicate with the Respondents. The Respondents did not reply to those communications, and they did not submit a Response in this proceeding.
5. Parties' Contentions
The Complainant asserts that the Domain Names are confusingly similar to its registered AMERICAN PUBLIC UNIVERSITY SYSTEM and AMERICAN PUBLIC UNIVERSITY marks. The Complainant argues that the Respondents are not licensed to use its marks and have no rights or legitimate interests in using the marks in the Domain Names.
The Complainant contends that the Domain Names were registered and used in bad faith, misdirecting Internet users for commercial gain by creating a false initial impression of an affiliation with the Complainant. The Complainant cites reports by the US Department of Education and the Better Business Bureau concerning student loan forgiveness scams involving exorbitant fees to help consumers apply for free government debt relief programs. The Complainant used Domain Tools to demonstrate that the same Internet Protocol addresses associated with the Domain Names were also associated with 27 other domain names involving other for-profit educational institutions, including at least one with similar website content and format that was formerly linked from the Respondents' website. The Complainant infers bad faith from this conduct, as well as from the Respondents' failure to reply to communications concerning alleged trademark infringement and this UDRP proceeding.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Consolidation of Respondents
The Complainant submitted the Complaint against the privacy services for both Domain Names, and the Named registrant Toby Schwarzkopf and Kyle Kupher. The Complainant contends that consolidation is proper because, inter alia, the websites formerly associated with both Domain Names are identical, exhibiting common control.
A complaint may be filed against multiple respondents when the domain names, or the websites to which the domain names resolve are subject to common control, and consolidation would be fair and equitable to all parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16.
In the instant case, the Panel finds evidence that the Domain Names are under common control, and the consolidation is fair and equitable. Accordingly, the Panel accepts the case as consolidated.
B. Identical or Confusingly Similar
The first element of a UDRP complaint "serves essentially as a standing requirement" and entails "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". WIPO Overview 2.0, paragraph 1.2.
The Complaint does not expressly invoke common-law rights in AMERICAN PUBLIC UNIVERSITY or AMERICAN PUBLIC UNIVERSITY SYSTEM as unregistered marks, although the record contains substantial evidence that both of these terms have acquired a secondary meaning associated with the Complainant as distinctive identifiers in the US marketplace for online higher education. See WIPO Overview 2.0, paragraph 1.7. The Complainant holds several US trademark registrations for a figurative design used for an annual charitable fundraising campaign, in which the name AMERICAN PUBLIC UNIVERSITY appears rather faintly compared to the word VOLUNTEERS and an image of a Labrador retriever puppy, the institution's "mascot". The Complainant also holds a trademark registration for a design logo more prominently featuring the name AMERICAN PUBLIC UNIVERSITY SYSTEM, and both Domain Names are confusingly similar to this prominent textual element of the registered trademark (see WIPO Overview 2.0, paragraph 1.11). For purposes of this element of the Complaint, the Panel finds the generic Top-Level Domain ("gTLD") of the Domain Names (".com") indistinctive and therefore immaterial.
The Panel concludes that the Complainant has established the first element of the Complaint.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondents may establish rights or legitimate interests in the Domain Names, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondents' use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) that the Respondents have been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has demonstrated registered and common law rights in confusingly similar marks, and the Respondents have used the Domain Names, clearly with reference to the Complainant and not in a generic sense, given the content of the associated website, to advertise services to students who borrowed money to purchase courses from the Complainant.
The website to which one of the Domain Names resolves (and to which they both formerly resolved) simply invites visitors to "find out how we can help you." The website does not name the Respondents or their organization, so it cannot be ascertained whether the Domain Names represent a corresponding name. Most pages of the website, including the home page, include no criticism of the Complainant and could be mistaken for material sponsored by the Complainant itself.
The Panel finds under these circumstances that the Complainant has made a prima facie case without rebuttal by the Respondents. The Panel concludes that the second element of the Complaint has been established.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following passages cited by the Complainant (in which "you" refers to the registrant of the domain name):
"(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."
While headed with one of the Domain Names, the Respondents' website does not identify the name of the Respondents and may cause confusion as to the source or endorsement of the websites at the Domain Names. The derogatory remark about "predatory" practices does not appear on the home page of the website. While there is no direct evidence on this record that the Respondents are engaged in one of the reported "scams" charging consumers exorbitant fees for student debt relief counseling, the record does suggest that the Respondents are connected with numerous other domain names based on trademarks for educational institutions and copied material from at least one other website offering similar debt-relief services for a fee. This information, combined with the lack of any genuine information on the Respondents' website concerning their identity or affiliation, indicates the likelihood that the Domain Names were indeed registered and used in bad faith, in an effort to misdirect Internet users for commercial gain.
The Panel concludes on the available record that the third element of the Complaint has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <americanpublicuniversityloanforgiveness.com> and <americanpublicuniversitysystemloanforgiveness.com> be transferred to the Complainant.
W. Scott Blackmer
Date: March 10, 2017