Complainant is Scholastic Inc. of New York, New York, United States of America (“United States”), represented by Frankfurt Kurnit Klein & Selz, PC, United States.
Respondent is Private Registrant of Vista, California, United States / Name Redacted, Ikoyi, Nigeria.1
The disputed domain name <scholasticcorp.com> is registered with 101domain GRS Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2018. On August 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 Complainant on August 31, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 4, 2018. In response to a notification by the Center that Complaint was administratively deficient, Complainant submitted an amended Complaint on September 14, 2018 and a second amended Complaint on September 24, 2018.
The Center verified that the Complaint together with the amended Complaints 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 24, 2018.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on November 7, 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.
Complainant is among the leading publishers and distributors of children’s books, classroom and professional magazines, software and other education materials and games, including through its website “www.scholastic.com”. Since at least as early as 1922, Complainant has been using the trademark SCHOLASTIC and trademarks featuring SCHOLASTIC, preceded or followed by another word or words.
Complainant is the owner of more than 500 trademarks registered with the United States Patent and Trademark Office (“USPTO”) for the SCHOLASTIC trademarks in connection with a wide range of goods and services, including class 9 (computer software and related merchandise), class 16 (periodicals and printed materials, class 28 (computer games), class 41 (education and entertainment), including, for instance:
- SCHOLASTIC, USPTO Trademark Reg. No. 2,433,658, registered on March 6, 2001 (duly renewed), for goods in class 16 (first use in commerce 1998);
- SCHOLASTIC, USPTO Trademark Reg. No. 2,711,978, registered on April 29, 2003 (duly renewed), for services in class 41 (first use in commerce 2001);
- SCHOLASTIC & Design, USPTO Trademark Reg. No. 2,648,284, registered on November 12, 2002 (duly renewed), for services in class 41 (first use in commerce 1988) and
- SCHOLASTIC & Design, USPTO Trademark Reg. No. 3,299,435, registered on September 25, 2007 (duly renewed), for goods in class 16 (first use in commerce 2002).
Respondent is an individual misrepresenting himself as Complainant’s Chief Financial Officer (CFO). No further details about Respondent are known.
The disputed domain name was registered on June 5, 2018. It was being used to send fraudulent emails misrepresenting to be Complainant’s CFO.
Complainant submits that the disputed domain names is confusingly similar to Complainant’s trademark as it contains Complainant’s entire SCHOLASTIC trademark.
Complainant further states that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant’s rights in the SCHOLASTIC trademarks were firmly established before Respondent registered the disputed domain name. Respondent has been using the disputed domain name as part of a scam targeting Complainant, including impersonating one of Complainant’s employees in a purchase order, commercial credit application and in email correspondence with third parties. Respondent has attempted to steal over 100,000 USD worth of commercial equipment. Respondent has therefore not made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not commonly known by the disputed domain name, and has not acquired any trademark or service mark rights in the disputed domain name. Complainant submits that by using the disputed domain name to pose as an employee of Complainant and to transact business on Complainant’s good name and credit, Respondent is profiting from the value of Complainant’s trademarks and using the disputed domain name for his own commercial gain. Additionally, Complainant submits that the disputed domain name has been used to facilitate identity theft, which is a crime.
Complainant submits that the disputed domain name was registered and used in bad faith. By virtue of Respondent’s use of the disputed domain name for a scam targeting Complainant, it is apparent that Respondent was well aware of Complainant’s SCHOLASTIC trademarks at the time of registration of the disputed domain name. Complainant submits that Respondent’s use of the disputed domain name to send emails to third party vendors on behalf of Complainant and using Complainant’s credit, Respondent is clearly seeking to profit from the unauthorized association with Complainant’s SCHOLASTIC trademarks. Complainant submits that active use of the disputed domain name is not required for a finding that Respondent has used the disputed domain name in bad faith. Use of a domain name in a similar scheme impersonating official company emails has been found to be use in bad faith. Complainant relies on the decision Carrefour v. Name Redacted, WIPO Case No. D2015-1174.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) of the Rules provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favour of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows:
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether Complainant has established relevant trademark rights. Whilst Complainant has adduced a list of trademark registrations in SCHOLASTIC and SCHOLASTIC & Designs, the Panel notes that Complainant did not submit supporting evidence to this effect, such as the corresponding registration certificates or extracts from the online database of the corresponding intellectual property office. In accordance with the general powers of the panel set in paragraph 10 of the Rules, the Panel has therefore considered appropriate to undertake limited factual research in the USPTO’s trademark registration database in order to verify Complainant’s trademark registrations. See section 4.8 of the WIPO Overview 3.0. The Panel has verified that Complainant’s trademark registrations are valid and in force and is therefore satisfied that Complainant has established relevant trademark rights, notwithstanding Complainant’s deficiency.
The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.” Section 1.7 of the WIPO Overview 3.0.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. Complainant’s trademark is clearly recognizable in the disputed domain name. The addition of the descriptive term “corp” (an abbreviation for “corporation”) does not prevent a finding of confusing similarity with Complainant’s trademark.
The generic Top-Level Domain (gTLD) “.com” is generally disregarded under the identity or confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademark.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy sets out the following non‑exhaustive list of circumstances that a respondent may rely on to demonstrate rights to or legitimate interests in a domain name, including:
“(i) before any notice to [respondent] of the dispute, [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) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent have] acquired no trade mark or service mark rights; or
(iii) [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 trade mark or service mark at issue.”
A complainant is required to establish a prima facie case that respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel has considered the statements and documents submitted by Complainant and finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name and that, as a result of his default, Respondent has failed to rebut such a showing.
Complainant has asserted that Respondent is not affiliated to Complainant or has been authorized by Complainant to use Complainant’s trademark, in a domain name or otherwise.
There is no evidence that Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name, in accordance with paragraph 4(c)(ii) of the Policy.
Respondent’s use of the disputed domain name to send fraudulent emails misrepresenting himself as Complainant cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as Respondent is using a domain name that is confusingly similar to Complainant’s trademark in order to unduly take advantage of Complainant’s rights by deception.
Respondent’s failure to respond to Complainant’s contentions is also a strong indication of lack of rights or legitimate interests in the disputed domain name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain dame was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(i) circumstances indicating that [respondent has] registered or [has] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [respondent’s] web site or location.”
Although none of the circumstances set out above perfectly describe Respondent’s behavior, the Panel finds that Respondent registered the disputed domain name in bad faith. In this regard, there are strong indications that Respondent was well aware of Complainant’s rights at the time of registration of the disputed domain name. Complainant’s trademarks predate the registration date of the disputed domain name by at least 20 years and are well-known worldwide. In addition, the nature of the disputed domain name itself, which consists of Complainant’s trademark together with the term “corp” (a term strongly related to Complainant as it is a corporation) is a further indication that Respondent was targeting Complainant at the time of registration of the disputed domain name. Finally, Respondent’s immediate subsequent use of the disputed domain name as described below to send fraudulent emails misrepresenting himself as Complainant is also strong evidence that Respondent had awareness of Complainant’s rights and registered the disputed domain name to take advantage of such rights.
The Panel also finds that Respondent’s use of the disputed domain name, which is confusingly similar to Complainant’s trademark, to send emails fraudulently misrepresenting himself as Complainant and which contain Complainant’s trademark and logo, constitutes evidence of use of the domain name in bad faith as Respondent is intentionally seeking to defraud Internet users for his own financial gain. See Accor v. Shangheo Heo / Contact Privacy Inc., WIPO Case No. D2014-1471). See also section 3.4 of WIPO Overview 3.0 (“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”).
The Panel also finds that the fact that Respondent has stolen the identity of Complainant’s Chief Financial Officer to register the disputed domain name in order to perpetrate fraud constitutes additional strong evidence of Respondent’s bad faith. See Carrefour v. Name Redacted, WIPO Case No. D2015-1174 (finding bad faith as “the disputed domain name was registered using the name of an individual employed by the Complainant and the postal address of the Complainant. Consequently, the disputed domain name registration is the result of an identity theft”).
Finally, the Panel has also drawn an adverse inference from Respondent’s failure to take part in the present proceedings.
The Panel finds that Respondent has both registered and used the disputed domain name in bad faith.
Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.
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, <scholasticcorp.com>, be transferred to Complainant.
Nathalie Dreyfus
Sole Panelist
Date: November 20, 2018
1 The Panel has decided to redact the name of one of the named Respondents because the Panel has determined that the disputed domain name was most likely registered by a third-party misrepresenting himself as Respondent. The Panel’s decision is in line with the criterion adopted by the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788 ("The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances").