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and Mediation Center
Pearson Education, Inc. v. Horoshiy, Inc.
Case No. D2004-0942
1. The Parties
The Complainant is Pearson Education, Inc., of New Jersey, United States of America, represented by Pitney Hardin LLP, United States of America.
The Respondent is Horoshiy, Inc., of Curacao, Netherlands Antilles, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <phschoo.com> 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 November 9, 2004. On November 11, 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 November 18, 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 November 19, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 20004.
The Center appointed Fleur Hinton as the Sole Panelist
in this matter on December 23, 2004. 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. Although the initial date for issuing a decision in this matter
was January 6, 2004, that date has been extended by the Center to January 13, 2005.
4. Factual Background
The Complainant’s business is as a publisher of educational books and includes a division called “Prentice Hall” which produces materials including texts for middle and secondary schools. It registered the domain name <phschool.com> in 1995 and has used the trademark PHSCHOOL.COM since 1996. It applied for registration of the trademark PHSCHOOL.COM at the United States Patent and Trademark Office on October 20, 2004, under the following serial numbers: 78502637, 78502604 and 78502600.
The Respondent registered the Domain Name on December 26, 2002.
5. Parties’ Contentions
The Complainant has provided substantial detail of its use of its domain name and trademark PHSCHOOL in its complaint. This is supported by a declaration by the Chief Financial Officer of the Prentice Hall division of the Complainant’s business. These documents are referred to jointly as “the Evidence”.
The Complainant commenced the Prentice Hall division of its business in 1913. The PH School unit specialises in the providing of educational materials for middle and secondary schools. It has hosted its website at “www.phschool.com” since 1996 serving both as a catalogue for its books and also as a supplement to the text book material. Individual pages in the Complainant’s textbooks refer to commentary on the Complainant’s PHSCHOOL website.
The Complainant also uses PHSCHOOL as a trademark in relation to its products. Since 2001, it has sold and distributed over 38,000,000 PHSCHOOL products and has made over 1.3 billion United States dollars in sales.
The Complainant has developed its website as part of its sales strategy in recent years and has enjoyed a great deal of success. In 2001, the “www.phschool.com” website had about 1 million hits, had 4.2 million hits in 2002, 5.7 million in 2003 and, up until September 2004, had attracted about 5.3 million hits in that year. The Complainant has made its section of the market aware of its website by promoting its PHSCHOOL.COM trademark on all of its texts and on all of its promotional material.
The Complainant contends that the domain name <phschoo.com> is confusingly similar to its domain name and trademark PHSCHOOL.COM.
The Complainant contends that the Respondent has no right or legitimate interests in the Domain Name. The “www.phshcoo.com” website has many links to educational websites unconnected with the Complainant as well as websites offering unrelated products and services. The Respondent, therefore, is able to earn revenue by directing people to other websites. These are people who would have intended to go to the PHSCHOOL website and have been confused as a result of the Respondent’s conduct.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Under the Policy the Complainant must establish that the Domain Name is confusingly similar to the Complainant’s domain name; that the Respondent does not have rights or legitimate interests in the Domain Name; and that the Respondent registered the Domain Name in bad faith.
A. Identical or Confusingly Similar
These documents show that it registered the domain
name <phschool.com> in 1995, adopted PHSCHOOL as a trademark from 1996
and has used it continuously and very extensively since then. The Policy recognises
common law rights in trademarks as well as those protected by registration see
Australian Trade Commissioner v. Matthew Reader, WIPO
Case No. D2002-0786.
As a result of the substantial use of <phschool.com> which the Complainant has made both as a trademark and as a domain name, it has acquired an extensive reputation in the name in the market place, indicating that the trademark PHSCHOOL.COM has a secondary meaning such as to entitle the Complainant to common law rights in the trademark and therefore the domain name <phschool.com>. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark and domain name.
B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent does not have any legitimate right or interest in the Domain Name and the Respondent has not made any attempt to rebut this contention. Paragraph 4(c) of the Policy sets out that a Respondent may demonstrate its legitimacy by:
a. showing use of the Domain Name pre-dating the use of the Complainant of its domain name; or
b. showing that the Respondent has been commonly known by the Domain Name; or
c. demonstrating that it is making a legitimate non-commercial use of the Domain Name, which does not misleadingly divert internet users from the site of the Trademark at issue.
In this case the Respondent has not made any attempt to demonstrate that it satisfies any of these criteria. The Complaint has established that it does have a substantial reputation in its trademark and domain name <phschool.com>. In these circumstances, the Panel finds that this satisfies the requirement that the Complainant make a prima facie case that the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
On the basis of the Complaint and of the Respondent’s failure to respond to the Complaint, the Panel concludes that the Respondent has registered and been using the Domain Name in bad faith.
The Respondent is not known as PHSCHOO and does not appear to have done business
under that name. The Respondent has been earning revenue from directing consumers
who have mistakenly visited the Respondent’s website instead of the Complainant’s
website. The Panel’s finding in this respect is assisted by the fact that
the Respondent has been the subject of other complaints to which it has failed
to respond and in which findings have been made that it has registered and used
a domain name in bad faith see <lowensigns.com> Lowen Corporation
dba Lowen Sign Company v. Henry Chan, WIPO Case
No. D2004-0430 and <medecohealth> Medco Health Solutions, Inc v.
Horishiy, Inc., WIPO Case No. D2004-0625;
<walmartbenefits.com> Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO
Case No. D2004-0620 and <lillieskids.com> Lillian Vernon Corporation
v. Horoshiy, Inc., WIPO Case No D2004-0611.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <phschoo.com> be transferred to the Complainant.
Dated: January 9, 2005