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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pearson Education, Inc. v. Horoshiy, Inc.

Case No. D2004-0866

 

1. The Parties

The Complainant is Pearson Education, Inc., Upper Saddle River, New Jersey, United States of America.

The Respondent is Horoshiy, Inc., Curacao, Netherlands Antilles, Netherlands.

 

2. The Domain Name and Registrar

The disputed domain name <phschool.net> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2004. On October 22, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On October 22, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com 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 administrative, billing and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2004. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on November 24, 2004.

The Center appointed Edward C. Chiasson, Q.C. as the sole panelist in this matter on December 10, 2004. The Panel finds that it was properly constituted. The panelist submitted a 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 following information is derived from the Complaint.

The Prentice Hall division of the Complainant traces its origins to 1913. Over the last 90 years the name and mark PRENTICE HALL have become synonymous with quality and reliability. The Prentice Hall division of the Complainant is comprised of two separate units: one focusing on college texts and the other, known as PH School, focusing on middle and secondary schools. The Complainant is the leading publisher in print and electronic content for middle and secondary schools in the United States and is currently the largest provider, through its PH School division, of secondary textbooks in the United States.

PH School currently publishes thousands of different titles sold to school districts around the United States. As set forth in the chart below, PH School has sold and distributed more than 38,000,000 individual books since January 2001. Sales generated by these 38,000,000 textbooks exceed $1.3 billion dollars.

 

2001

2002

2003

2004

Total

Units Sold

10,176,292

8,912,717

8,527,612

7,711,004

35,326,625

Free Samples

776,186

864,490

773,717

593,173

3,007,566

Total Units

10,952,478

9,777,207

9,301,329

8,304,177

38,335,191

While textbooks typically are purchased at the school district level, the decision to purchase a textbook for a particular class is most often influenced by teachers and school administrators as well as, on occasion, parents. PH School’s continued success as the market leader depends on its ability to continue to maintain its reputation for quality and reliability that has been the hallmark for Prentice Hall products for over 90 years. An essential component of this reputation is premised on the high trust reposed in PH School by teachers, school administrators, and parents.

Educational publishing is a highly competitive industry. There are many factors that enter into the ultimate decision as to which text should be used for a particular course. In recent years how a book addresses “hot” social topics can be highly significant. For example, does a text carry an inappropriate gender or cultural bias? Selecting a text for health education, which may include units on sex-related topics, is particularly sensitive. Because feelings on this topic run intensely, a publishing house that misjudges how to handle this sensitive issue (or similar issues) may find reluctance in the marketplace for any of its textbooks.

It is essential that PH School maintain firm control over how it is perceived by teachers, school administrators, parents and others who influence decisions regarding textbook purchasing.

PH School registered the domain name <phschool.com> in 1995, and continuously and exclusively has used the PHSCHOOL.COM designation as a trademark since at least as early as 1996. While the website hosted at “www.phschool.com” (the “PH School Website”) serves as an online catalog of PH School textbooks, its primary purpose is to supplement the textbook material provided to both teachers and students. For example, a particular page in a PH School Algebra textbook (teachers’ edition 2004) will have a heading in the margin for PHSchool.com directing teachers to the PH School website for a model lesson plan. The student’s edition will include similar references directed to students.

This integration of the Internet into the traditional textbook format has been a major factor of Complainant’s success. In order to advance this integration, PH School consciously has branded this product as PHSCHOOL.COM. This branding effort has had great success. During 2001, the PHSCHOOL.COM brand attracted more than approximately one million hits. This number has continued to climb at a remarkable rate, to 4.2 million hits in 2002, 5.7 million in 2003 and in the first nine months of 2004, to 5.3 million hits.

The growth of the PHSCHOOL.COM brand was achieved by adherence to a defined strategy. For instance, the PHSCHOOL.COM mark appears on average three to five times in each chapter of the more than 38 million textbooks in print. The PHSCHOOL.COM trademark prominently appears on the back of the PH School texts in a stylized manner comparable to the Complainant’s corporate logo. Most PH School texts include a CD-Rom that is prominently labeled with the PHSCHOOL.COM mark.

The creation and integration of the PHSCHOOL.COM brand in the PH School textbook offerings was the result of significant cost and labor. By 2000, the PHSCHOOL.COM mark was featured in PH School’s national catalog in the table of contents and on the bottom of each page. Approximately 500,000 copies of this catalog were distributed.

The 2001 national catalog, with a distribution of approximately 600,000 copies, increased usage of the PHSCHOOL.COM brand by including a special technology center insert which prominently featured the mark. The 2003 national catalog, with a distribution of 800,000 copies, prominently displayed the PHSCHOOL.COM mark on the front cover. The PHSCHOOL.COM mark continues to be prominently displayed in the 2004 and 2005 catalogs.

In addition, PH School strategically used brochures, flyers, calendars, posters, and other promotional materials to develop brand awareness for PHSCHOOL.COM. More than 1.7 million units of promotional materials were distributed in 2001 at a cost of approximately $2.5 million. Since 2001, more than five million additional units of promotional materials for the PHSCHOOL.COM brand have been distributed at a cost of more than $5 million.

As a result of these efforts, PH School and PHSCHOOL.COM are recognized by other Internet educational providers such as cdeducation.org and msgomez.com, who use these marks on these websites and provide links to the PHSchool.com website.

On October 20, 2004, the Complainant filed applications with the U.S. Patent and Trademark Office to register PHSCHOOL.COM both in stylized and block letters for CDs, printed materials, and educational services in International Classes 9, 16, and 42.

The Complainant’s common-law rights in the PHSCHOOL.COM brand clearly date back to 1996, when it first began using the PHSCHOOL.COM mark. By November 20, 2002, the date Respondent registered the subject domain name, the Complainant’s rights in PHSCHOOL.COM were well established as a result of the more than $9 million spent promoting the mark since 1996, and millions of textbooks in circulation containing the PHSCHOOL.COM trademark.

Due to the Complainant’s huge market share, promotion of its website located at PHSCHOOL.COM, and its notoriety in the industry, the Complainant is synonymous with PHSCHOOL.COM. More than 17 million visitors have benefited from the materials provided by the Complainant under the PHSCHOOL.COM brand since its creation.

In addition to textbooks concerning core subjects, such as math, history, and English, PH School also publishes Prentice Hall Health: Skills for Wellness, and intends to expand its offerings in this area in the near future.

Health topics are especially sensitive for today’s adolescents. PH School’s reputation is even more vulnerable to sex-related faux pas, which could irreparably damage its ability to compete in the health textbook industry specifically, as well as in the textbook industry generally. The danger is heightened by the competitive nature of the textbook industry.

The Respondent registered the subject domain name on November 22, 2002.

The subject domain name is used by the Respondent to direct visitors to a website. Initially, the site appears to be a tailored search engine for students, parents and educators.

The Respondent is not known as PH School and has never done business under that name. There also is no connection between the Respondent and PH School.

The Respondent appears to take affirmative steps to remain a nondescript entity. A Google search for the Respondent reveals only two hits related to the entity, both UDRP proceedings in which Respondent was found to have wrongfully registered the domain names <walmartbenfits.com> and <lillieskids.com>. Further investigation discovered two other UDRP proceedings involving the domain names <lowensigns.com> and <medecohealth.com>. In both, the Respondent was found to have registered and used the domain names in bad faith.

The Respondent did not submit a response in any of these four actions.

The Respondent did not participate in this proceeding.

 

5. Parties’ Contentions

A. Complainant

The Complainant states:

“The core of the Complaint is that the Respondent is using the Complainant’s valuable name as a textbook publisher to divert traffic to the Respondent’s site, which not only earns unwarranted financial rewards for the Respondent, but also exposes visitors to the site, including adolescents to pornographic links that the Respondent has posted on the site.”

The Complainant relies on a common-law right to “PH School” and its trademark registration of “PHSCHOOL.COM” and asserts that the subject domain name is “virtually identical and/or confusingly similar”.

The Complainant notes that the Respondent is not known by PH School, has no relationship with the Complainant and is not authorized by the Complainant to use that name. Using PH School to direct young people to a pornographic website is said also to support a finding that the Respondent does not have a legitimate interest in the subject domain name as is using the website to which the subject domain name resolves to market goods and services.

Bad faith is said to be illustrated by the facts that the Complainant’s rights to PHSchool were well established and known when the subject domain name was registered and the use which is being made of it to market the goods and services of others and to direct young people to a pornographic site.

The Respondent history of registering domain names improperly also is relied on to support bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

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

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

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

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has 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 trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;

(ii) registration of the 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 the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website 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 the website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

A. Identical or Confusingly Similar

The Complainant appears to equate confusingly similar with identical. They are different concepts with different criteria required to establish each.

There is no doubt that the Complainant has a common-law right to “PH School” and registered trademark rights to PHSCHOOL.COM. The subject domain name is identical to these marks because the addition of .net and .com is of no significance in this context.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

A respondent is not obliged to participate in a domain name dispute, but if it were to fail to do so it is open to the inferences that flow from the reasonable assertions of fact of a complainant.

The facts of competition or using a domain name to lead to a pornographic website do not establish the lack of a legitimate interest in a domain name, but in context they can support such an inference.

In this case, there is no connection between the Respondent and the Complainant. The Complainant’s interest in PH School is well established. These facts, coupled with making available a pornographic link in a site that likely will be visited by young people, lead to an inference that the Respondent does not have a legitimate interest in the subject domain name.

The Respondent has done nothing to supplant this inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

A finding that a respondent does not have a legitimate interest in a domain name which is identical to the mark of another does not lead automatically to a conclusion of bad faith, but the facts that support the finding may be relevant to the bad faith inquiry.

It is usual for an administrative panel to be provided with information showing that a complainant has asked the respondent to cease and desist using the domain name in dispute. No such information has been provided in this case. It is material which complainants would be well to include because it often fills a necessary gap, particularly in the context of bad faith.

In addition to the facts that support the conclusion that the Respondent does not have a legitimate interest in the subject domain name, its previous history abusing the domain name process adds weight to the assertion that it registered and is using the subject domain name in bad faith.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.

The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.


Edward C. Chiasson, Q.C.
Sole Panelist

Dated: December 23, 2004

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0866.html

 

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