WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eric Turvey, Astorian Enterprises Inc v. WhoisGuard Protected, WhoisGuard, Inc. / Claudette Andrews

Case No. D2018-0519

1. The Parties

The Complainant is Eric Turvey, Astorian Enterprises Inc of Quebec, Canada, self-represented.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Claudette Andrews of Eatontown, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <unemployedprofessors.xyz> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2018. On March 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 21, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 21, 2018.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint and the amended Complaint, and the proceedings commenced on March 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2018.

The Center appointed Nick J. Gardner as the sole panelist in this matter on April 26, 2018. 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 an individual based in Canada. He operates a business via a website linked to the domain name <unemployedprofessors.com>. This website in effect operates as a portal whereby students who have essays or other assignments to complete can seek assistance from academics who are registered with the website and who will, for a fee, prepare a draft of the assignment for the student. It seems to the Panel highly likely that this is in effect promoting what is likely to be academic cheating. That is not however a bar to the Complainant bringing the present complaint.

The Respondent has developed and promoted what appears to be an identical business using the Disputed Domain Name. At one point the Respondent’s website copied the Complainant’s proprietary logo and other details which clearly indicate the Respondent had knowledge of the Complainant.

The Disputed Domain Name was registered on September 22, 2016. It links to a website which offers essentially the same services as those of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Disputed Domain Name is confusingly similar to its UNEMPLOYED PROFESSORS trademark, in which the Complainant has rights. In this regard it relies upon its unregistered trademark rights. These are discussed below.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It says that the Respondent uses the website resolved to by the Disputed Domain Name in order to offer an identical business to that of the Complainant. The Complainant states this use is not a bona fide, fair use or noncommercial use of the Disputed Domain Name.

The Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. It says the fact that at one stage the Respondent’s website replicated the Complainant’s logo shows it was aware of and deliberately targeting the Complainant.

B. Respondent

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

6. Discussion and Findings

Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

The Panel also notes this is a case where one of the named Respondents (WhoIsGuard Protected, WhoIsGuard, Inc.) appears to be a privacy or proxy registration service. It disclosed details of contact details given by the Respondent when registering the Disputed Domain Name. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at Section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.

In the present case the Panel finds the substantive Respondent to be Claudette Andrews – and references to the Respondent should be understood as including that person as well as the Respondent of record.

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:

(i) the domain name is identical with 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; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has unregistered trademark rights in the term “unemployedprofessors”. Although this term involves two ordinary dictionary words the Panel considers that in conjoined form they are capable of becoming distinctive and functioning as a trademark for purposes of the Policy. The Complainant has filed evidence showing his business has attracted substantial publicity including for example press coverage at “www.huffingtonpost.com”, (“Unemployedprofessors.com Has Professors Write Your Project For You”), “www.businessinsder.com” (“There’s A Service Where College Professors Write Term Papers For Lazy Students”) and “www.gawker.com” (“Proudly Unethical Website Hires Unemployed College Professors to Write Essays for Students”). Although no financial information has been provided the Complainant has been in business for seven years using the “unemployed professors” name and its website suggests a not insignificant level of activity is conducted. In these circumstances the Panel is satisfied that it has shown unregistered trademark rights in the term “unemployed professors” for purposes of the Policy.

It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.xyz”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s unregistered trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to the Respondent of the dispute, 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 has been commonly known by the domain name, even if the Respondent 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.

None of these apply in the present circumstances. So far as (i) is concerned the Panel does not consider the Respondent’s use to be bona fide for the reasons discussed below in relation to bad faith. There is no evidence to suggest (ii) applies and (iii) is clearly not applicable. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the UNEMPLOYED PROFESSORS trademark. The Complainant has prior rights in the UNEMPLOYED PROFESSORS trademark which precedes the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).

The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

The Respondent has clearly sought to replicate the Complainant’s business. It seems inconceivable it independently chose the name “unemployed professors” for its identical business – if there was any doubt about this its use at one point on its website of the Complainant’s logo points clearly to an awareness by the Respondent of the Complainant and its UNEMPLOYED PROFESSORS unregistered trademark. The overall impression created by the Respondent’s website suggest that the Disputed Domain Name was registered by the Respondent in order to establish an online business which confused Internet users into believing that its website was that of the Complainant.

The Respondent’s actions are clearly directly within paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.

In addition, the Respondent has been given an opportunity to provide any legitimate explanation it may have as to its activities. Again, based on the evidence provided by the Complainant, the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration and use of the Disputed Domain Name.

The Panel accordingly finds that the Disputed Domain Name was both registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <unemployedprofessors.xyz>, be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: May 8, 2018