The Complainant is Udemy, Inc. of San Francisco, California, United States of America ("US"), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Nguyen, Tai Tan / Agape Films / Roman Rothschild of Sydney, Australia.
The disputed domain name <udemy.com.au> is registered with GoDaddy.com, LLC ("the Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 7, 2014. On May 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2014, 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.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 May 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 3, 2014.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 13, 2014. 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.
The language of this administrative proceeding is English, being the language of the registration agreement.
The Complainant operates an online education business with two million students in more than 190 countries. The Complainant holds registrations for the trademark UDEMY in a number of countries including the US, which it uses to designate online educational courses. Registration has been in effect in the US since 2012. In summary, the US trademark covers downloadable and online educational courses in Classes 9, 35, 38, 41 and 42.
The Complainant is also the owner of, inter alia, the domain name <udemy.com>, registered in 2009, which resolves to a website about the UDEMY educational offerings.
The disputed domain name <udemy.com.au> was registered on November 9, 2012.
The Complainant cites its trademark registrations of the trademark UDEMY in various countries as prima facie evidence of ownership.
The Complainant submits that the mark UDEMY is distinctive and that its rights in that mark predate the registration of the disputed domain name <udemy.com.au>. It submits that the disputed domain name is confusingly similar to its trademark, because the disputed domain name incorporates in its entirety the UDEMY trademark and that the launch of their business on November 7, 2012 received global mass-media attention two days before the Respondent registered the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent has no trademark rights in, or license to use, the UDEMY mark.
Finally, the Complainant alleges that the registration and use of the disputed domain name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that Respondent could not have registered the disputed domain name without having the UDEMY trademark in mind given that the launch of the UDEMY business received global mass-media attention two days before the Respondent registered the disputed domain name.
On the issue of use, the gist of the Complainant's contention is that the Respondent uses the disputed domain name for pay-per-click ("PPC") landing pages; a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements and that it may also be selling unauthorized products or services in competition with the genuine UDEMY educational courses. In this case, when the disputed domain name <udemy.com.au> is typed in, it redirects traffic to a PPC landing page where Respondent's website provided links to online educational courses selling both services and materials in competition with Complainant's UDEMY courses and subsequent to notification of this dispute, resolved to the Complainant's own website at "www.udemy.com".
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the disputed domain name is identical or confusingly similar to a name, 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 disputed domain name; and
(iii) that the disputed domain name has been registered or subsequently used in bad faith.
Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the "UDRP"), the Panel finds that cases decided under the UDRP can be of assistance in applying the Policy to this case.
The Panel finds that the Complainant has rights in the UDEMY trademark acquired through use and registration which predate the date of registration of the disputed domain name by 9 months.
The Panel finds that the disputed domain name, which contains the UDEMY trademark in its entirety, is confusingly similar to the UDEMY trademark.
In considering the elements of paragraph 4(a)(i) of the Policy, the contents of a website are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the Panel held that "The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant's mark into thinking they are on their way to the Complainant's Website". Further, in The Crown in Right of the State of Tasmania trading as "Tourism Tasmania" v. Gordon James Craven, WIPO Case No. DAU2003-0001, the panel held that: "the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases."
Further, unlike the UDRP, the Policy extends protection expressly to "names" as well as trademark rights. For the purposes of the Policy, a "name" is defined by note 2 as referring to:
(a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or
(b) the complainant's personal name.
The Complaintant is a body corporate not registered in Australia so these do not apply. Even so, the Panel finds that on a side by side comparison, or relying on imperfect recollection, a person seeing the disputed domain name would be caused to wonder if there was an association with the Complainant's trademark rights. The disputed domain name <udemy.com.au> is therefore confusingly similar to the UDEMY trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of non-exhaustive 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, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the UDEMY trademark. The Complainant has prior rights in the UDEMY trademark which precede the Respondent's registration of the disputed domain name by 9 months. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption, see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), paragraph 2.1.
The Respondent has failed to respond and so has not shown that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of a website which features prominently the UDEMY trademark, contains links to competing educational courses, and generates advertising revenue for the Respondent using the Google AdSense service. In all the circumstances of this case, such use does not amount to a bona fide offering of goods or services under the Policy.
The Respondent is not a reseller or distributor of the Complainant's UDEMY educational courses. Notwithstanding the use of the website after notification of the dispute to redirect Internet traffic to the Complainant's website, it cannot therefore be said that the principles in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which suggest that, in certain limited circumstances, the use by a reseller or distributor of a third party's trademark in a domain name may amount to a bona fide offering of goods or services, apply. See also paragraph 2.3 of the WIPO Overview 2.0.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name, nor does any of the evidence demonstrate that the Respondent is making legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Complaint fulfils the second condition in paragraph 4(a)(ii) of the Policy.
The third element of the Policy that the Complainant must also demonstrate is that the disputed domain name has been registered or subsequently used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
"b. Evidence of Registration or Use in Bad Faith.
For the purposes of paragraph 4(b) of the .auDRP, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
(ii) respondent has registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of another person; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other online location, by creating a likelihood of confusion with complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or location or of a product."
The evidence that the Respondent registered and has used the disputed domain name in bad faith is overwhelming. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: "It is your [domain-name holder's] responsibility to determine whether your domain name registration infringes or violates someone else's rights". The name registered by the Respondent, the unlikelihood that registering a domain name containing the Complainant's trademark only two days after global media publicized the launch of the UDEMY website was pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else's trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith, see L'Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc .v. Rarenames, Webreg, WIPO Case No. D2006-0964; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
In this Panel's assessment, two conclusions can therefore be drawn about the Respondent from its use of the disputed domain name resolving to the Respondent's website. First, its conduct is classic domain monetization unconnected with any bona fide supply of goods or services. Second, in this Panel's view, it is also in breach of the "GoDaddy Domain Name Registration Agreement" registration for breach of the warranty: "You represent and warrant to the best of your knowledge, neither the registration of the domain, nor manner it is directly or indirectly used, infringes the legal rights of any third party".
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions, see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814. Steering unsuspecting Internet visitors to competing services, taking advantage of the confusion created by the similarity of the disputed domain name to Complainant's trademark is the very essence of bad faith use under the UDRP see, e.g., Royal Bank of Canada v. Chan, WIPO Case No. D2003-0031; Accor v. This Domain May be for Sale or Lease, WIPO Case No. D2008-0420.
This Panel finds that the Respondent must have been aware of the relevant trademark. This Panel finds that the Respondent has taken the Complainant's trademark and incorporated it into the disputed domain name without the Complainant's consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users away from the Complainant's webpage to parked pages or alternatively to the Respondent's website for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all 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 <udemy.com.au> be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: June 27, 2014