26th Mar 2003

DECISION

Educational Directories Unlimited v. Reflex Publishing, Inc.

Claim Number: FA0301000142378

PARTIES

Complainant is Educational Directories Unlimited, Chester, PA (“Complainant”) represented by Estella S. Gold, of White and Williams LLP.Respondent is Reflex Publishing, Inc., Brandon, FL (“Respondent”) represented by Ari Goldberger, of ESQwire.com.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gradschool.com>, registered with Enom, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Sandra Jo Franklin, Alan L. Limbury and Bruce E. Meyerson as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 23, 2003; the Forum received a hard copy of the Complaint on January 27, 2003.

On January 29, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <gradschool.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 19, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@gradschool.com by e-mail.

A timely Response was received and determined to be complete on February 19, 2003.

Complainant submitted a supplement to its Complaint on February 24, 2003, and Respondent submitted a supplement to its Response on March 3, 2003.

On March 5, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Sandra Jo Franklin, Alan L. Limbury and Bruce E. Meyerson as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS (Including Additional Submissions)

A. Complainant

Complainant Educational Directories Unlimited contends that it has established rights in its GRADSCHOOLS.COM mark through registration with the United States Patent and Trademark Office on May 7, 2002, as well as through continuous and widespread use of the mark nationally.According to Complainant, the mark was first used as early as July 1995, and has been used in commerce since September 1995.Complainant contends that Respondent’s <gradschool.com> domain name is confusingly similar to Complainant’s registered GRADSCHOOLS.COM mark.The only difference is the subtraction of the letter “s” after “school.”Complainant contends, on information and belief, that there is no evidence of Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services.Complaint states that Respondent’s Internet publishing business does not relate to the domain name at issue and as such, Respondent has no interest or rights in the domain name.

Complainant contends that Respondent, or persons affiliated with Respondent, has engaged in a pattern of registering domain names that infringe upon other entities’ marks.According to Complainant, Respondent (as an individual, business, or other organization) has never been commonly known by the domain name at issue and has no legitimate non-commercial or fair use of the domain name.According to Complainant, the domain name that is the subject of this arbitration was registered or acquired for a primary purpose of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website or other on-line locations.Complainant claims that Respondent is benefiting from the amount of Internet traffic it diverts to its website.

Further, according to Complainant, at one time Respondent was a member of Complainant’s affiliates program, a program that provides compensation and commission to a domain name holder who directs Internet users to Complainant’s website.At first, Respondent automatically forwarded traffic to Complainant for free.Subsequently, after Respondent asked to be paid for the traffic forwarded, an affiliate arrangement was established on or about May 19, 2000.Thereafter, in or about July 2000, Complainant discontinued the affiliates program and paid Respondent directly. Complainant discontinued the arrangement the following August.

Finally, upon information and belief, Complainant asserts that Respondent’s site has been undeveloped since its inception in or about March 2000, and currently remains undeveloped.

 

B. Respondent

Respondent Reflex Publishing, Inc contends that Complainant has no enforceable rights under the Policy.Respondent states that at the time Respondent registered the disputed domain name, Complainant had not even filed for a trademark registration.Because Complainant’s trademark application postdates the domain name registration, according to Respondent, it provides no enforceable rights under the Policy.Moreover, Respondent argues that the term “grad school” is a common generic term used in a descriptive sense by Complainant.Respondent states that the trademark provides no enforceable rights under the Policy because (1) it is a descriptive mark, and (2) its application and registration postdate the domain name registration date.

Respondent claims that it has always used the site in connection with a bona fide offering of goods and services.Respondent states that not only has it posted on the site advertising for online college programs and other school-related businesses, but also that it participated in Complainant’s own affiliate programs.Presently, Respondent posts graduate school-related links at the website in connection with an advertising agreement with Overture.com, Inc.

Respondent argues that it did not register, and has not used, the disputed domain in bad faith.Because Respondent registered the domain name on April 17, 1998, a year before Complainant filed for its trademark, Respondent claims that it could not have had knowledge of a non-existent trademark at the time it registered the domain name. Thus, Respondent contends that it is impossible for Complainant to meet its burden of proving bad faith registration of the domain name.

Respondent asserts that Complainant has not offered a “scintilla” of evidence that the domain name was acquired primarily for the purpose of selling, renting or transferring it to Complainant, to prevent Complainant from reflecting its trademark in a domain name, or to disrupt Complainant’s business or attract customers seeking to purchase its products.

Moreover, Respondent asks the Panel to declare that Complainant has abused this administrative proceeding and engaged in Reverse Domain Name Hijacking because it knew that Respondent registered the disputed domain in good faith prior to Complainant filing an application to register its generic term mark, and because of Complainant’s misrepresentation of material facts, including its omission of the fact that it invited Respondent to participate in its affiliate programs.

FINDINGS

Respondent registered the domain name at issue in April 1998.In June 1999 Complainant, using a similar domain name, GRADSCHOOLS.COM, invited Respondent to be a part of Complainant’s “affiliate” program.The parties maintained a business relationship at least through July 2000; the following month, Complainant terminated its affiliate program.Complainant filed its trademark application for GRADSCHOOLS.COM in April 1999; Complainant’s trademark was registered on May 7, 2002, approximately eight months before it filed the Complaint in this matter.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

Identical and/or Confusingly Similar

Because we have concluded that Respondent has rights or legitimate interests in the disputed domain name, we need not decide whether Complainant has itself established sufficient rights in a trademark.We note, however, that Complainant, at the time it brought this Complaint, was the owner of a registered trademark and Respondent has conceded that the <gradschool.com> domain name is confusingly similar to Complainant’s mark.

Rights or Legitimate Interests

Respondent has established a legitimate interest in the domain name by offering education-related services at the site, by selling advertising, and by diverting Internet traffic to education-related entities, such as Complainant.Indeed, Complainant itself had a business relationship with Respondent, as Respondent was part of its “Affiliate” program. In a letter to Respondent dated June 30, 1999, Complainant acknowledged without protest Respondent’s registration of the domain name and sought jointly to exploit it by paying for click-through traffic to Complainant’s site generated by Respondent.Complainant’s willingness and interest in working with Respondent clearly reflected an understanding that the disputed domain name was similar to Complainant’s then-existing website.In this respect, this case is like PROM Software, Inc. v. Reflex Publishing, Inc., No. D2001-1154 (WIPO Mar. 4, 2002), where the panel found that correspondence between the parties, initiated by the Complainant, revealed that the Complainant was aware “that it had no entitlement to the domain name.”

So long as Complainant paid Respondent for redirecting traffic to Complainant’s site, Complainant treated Respondent as having a legitimate interest in the domain name, which did not depend on any permission to use a trademark. Respondent’s interest in the domain name did not cease to be legitimate merely because Complainant terminated the arrangement and Respondent ceased redirecting traffic to Complainant. Thus, this case is unlike The Sports Authority Michigan, Inc. v. Internet Hosting, No. FA12456 (Nat. Arb. Forum Nov. 4, 2002), in which on a record that contained no response from the Respondent, the panel found that the complaining party had never licensed the Respondent to use its mark.

Having found that Respondent has legitimate rights and interests in the domain name, it is unnecessary to address the issue of bad faith.

The Panel also declines to accept Respondent’s invitation to make a finding of reverse domain name hijacking.

DECISION

For the foregoing reasons, the relief sought by Complainant is hereby denied.

Sandra Jo Franklin, Alan L. Limbury and Bruce E. Meyerson, Panelists
Dated: March 26, 2003