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Nobel Learning Communities, Inc. v. Chesterbrookacademy [2005] GENDND 1616 (20 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nobel Learning Communities, Inc. v. Chesterbrookacademy

Case No. D2005-0753

1. The Parties

The Complainant is Nobel Learning Communities, Inc. (“NLCI” or “the Complainant”), West Chester, Pennsylvania, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, Washington, DC, United States of America.

The Respondent is Chesterbrookacademy, George Town, Grand Cayman GT, Cayman Islands (“the Respondent”).

2. The Domain Name and Registrar

The disputed domain name <chesterbrookacademy.com> is registered with Address Creation (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2005. On July 15, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2005, 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 administrative 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 July 29, 2005. In accordance with paragraph 5(a) of the Rules, the due date for the Response was August 18, 2005. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 22, 2005.

The Center appointed Richard Tan as the sole panelist in this matter on September 6, 2005. 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 avers that it is one of the largest non-sectarian operators of private schools with numerous learning centers located throughout the United States. It asserts it has used the mark CHESTERBROOK ACADEMY since 1995, in connection with its learning centers for children.

The Complainant also claims to have promoted its services under the CHESTERBROOK ACADEMY mark on the Internet via its website, accessible at the “www.nobellearning.com”, and that the CHESTERBROOK ACADEMY mark has come to be distinctive of the Complainant. The Complainant also registered United States service mark no. 1,977,395 CHESTERBROOK ACADEMY in the United States on May 28, 1996, in Class 41 in respect of private educational services for infants, toddlers, preschool and elementary school-aged children.

The Respondent registered the disputed domain name with the Registrar on April 19, 2002. The disputed domain name resolves to an advertising portal displaying the words “chesterbrookacademy.com”, with numerous education-related links which are not connected to the Complainant. Apart from the links, there appears to be no other content on the website.

5. Parties’ Contentions

A. Complainant

The Complainant contends primarily as follows:

(a) that the disputed domain name <chesterbrookacademy.com> is identical to the Complainant’s CHESTERBROOK ACADEMY service mark in that it incorporates the Complainant’s mark in its entirety;

(b) the Respondent has no rights or legitimate interest or legitimate bona fide business purpose in respect of the disputed domain name;

(c) the Respondent’s registration and use of the disputed domain name is in bad faith as it sought to use the disputed domain name to divert unsuspecting viewers seeking the Complainant’s Chesterbrook Academy learning centers to an unrelated advertising portal with education-related links.

B. Respondent

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

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

“(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) that the Respondent’s domain name has been registered and is being used in bad faith”.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, Rules, pararagraph 5(e) provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, that it is entitled to a transfer of the domain name: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar

The Complainant has furnished prima facie evidence that it is the owner of the service mark CHESTERBROOK ACADEMY in the United States, and accordingly has rights in the same.

This Panel also has no hesitation in finding that the disputed domain name <chesterbrookacademy.com> is identical to the Complainant’s registered service mark CHESTERBROOK ACADEMY. A domain name will be considered identical even where the Respondent deleted spaces between the words that form Complainant's mark: see for example, Ann Coulter v. Mark Vadnais, National Arbitration Forum (NAF) Case No. FA137221 (where the domain name <anncoulter.com> was held to be identical to the mark “Ann Coulter”).

The Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant is also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

It has also been recognized by many panels that for the Complainant to prove a negative for the purposes of paragraph 4(a)(ii) of the Policy is difficult, since it raises matters within the knowledge of the Respondent. Accordingly, many panels have held that it is sufficient that the Complainant shows prima facie evidence in order to shift the burden of proof onto the Respondent (see Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553; Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467).

The Complainant asserts in its Complaint that the Respondent has no legitimate interest in or legitimate bona fide business purpose in connection with the disputed domain name, and that it has no trademark or other legitimate rights in “chesterbrook academy”.

The Complainant also refers to the only “use” of the domain name by the Respondent having been to divert unsuspecting viewers seeking Complainant’s “Chesterbrook Academy” to an advertising portal with education-related links.

In the absence of a Response from the Respondent, this Panel finds that the Complainant has met its initial burden of proof for the purposes of establishing paragraph 4(a)(ii) of the Policy.

Nevertheless, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the disputed domain name, namely:

(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

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

If any of the above circumstances are established, the Respondent may be said to have rights to or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827), in which event, the Complaint must be denied.

To establish that the Respondent has rights or legitimate interests in the disputed domain name under paragraph 4(c)(i), the critical requirement is the Respondent’s use of the domain name in connection with a bona fide offering of goods or services.

The Panel concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has no legitimate interest in using the CHESTERBROOK ACADEMY mark in a domain name that directs Internet users to a website where services other than those of the Complainant’s are offered to viewers. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products or services, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”.

Apart from the domain name having been registered in the name of “chesterbrookacademy”, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. Since the Respondent has not filed a Response, the Panel would, in the circumstances, infer that the Respondent has no trademarks or service marks or other rights in or to “chesterbrook academy”. Accordingly, paragraph 4(c)(ii) of the Policy does not apply.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that you [the Respondent] 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 trademark 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 trademark 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 Complainant alleges that the Respondent has registered the disputed domain name in order to prevent the Complainant, as owner of the service mark, from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct.

In this regard, the Complainant asserts that the Respondent has been ordered by a number of administrative panels constituted under the Policy to transfer domain names registered by the Respondent, namely: Scripture Union International Council v scriptureunion, WIPO Case No. D2004-0577; Viacom International Inc and MTV Networks Europe v Web Master, WIPO Case No. D2005-0321; Carte Blanche Greetings Limited v metoyou.com, WIPO Case No. D2004-0946 and Government Employees Insurance Company (GEICO) v Gico, WIPO Case No. D2004-0545.

The Panel notes that in these cases, the Respondent typically adopted the domain name itself as the registrant’s name, but the other address fields would consistently refer to “General Delivery, George Town, Grand Cayman GT, Cayman Islands”.

In the absence of a Response, the Panel is prepared to find that this suggests (albeit inconclusively) that the Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the relevant trademark or service mark from reflecting the mark in a corresponding domain name, evidencing bad faith under paragraph 4(b)(ii) of the Policy.

In any event, however, the Panel notes that the disputed domain name is identical to the Complainant’s service mark, and the website thereat provides “Sponsored Links” to third party sites offering education-related services in competition with the Complainant.

In the absence of a Response, the Panel is satisfied that this also indicates that the Respondent has for commercial gain attracted Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service mark on the Respondent’s web site within the meaning of paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the conduct of the Respondent in the present case evidences that the disputed domain name has been registered and used in bad faith.

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 domain name <chesterbrookacademy.com> be transferred to the Complainant.

Richard Tan
Sole Panelist

Dated: September 20, 2005