Complainant is GeoGebra GmbH of Linz, Austria, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
Respondent is DVLPMNT Marketing, Inc. of Charlestown, Nevis, Saint Kitts and Nevis.
The disputed domain name <geogebra.com> (the "Domain Name") is registered with DNC Holdings, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 12, 2016. On July 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 13, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on July 22, 2016.
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 Respondent of the Complaint, and the proceedings commenced on July 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 15, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 23, 2016. 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.
On September 15, 2016, the Panel issued Procedural Order No. 1 requesting that Complainant provide a copy of the DomainTools data referenced in the following statement in the Complaint:
"The Respondent has been the registrant of the name since about August 2013. According to researches undertaken using DomainTools the registrant of the Domain Name had been Flying Stingrays Ltd, but in August 2013, the Respondent became the registrant."
Complainant's supplementary submission in response to Procedural Order No. 1 was received on September 20, 2016.
Complainant is a provider of dynamic mathematical software, supporting science, technology, engineering and mathematics (STEM) education worldwide. The software is available on all platforms including iOS, Android and Windows 10 mobile app versions.
The GeoGebra Project was initiated in 2001 by Dr. Markus Hohenwarter while he was working as a professor at the University of Salzburg in Austria. Following the success of the Project, the International GeoGebra Institute was incorporated in Florida in 2008 and has since expanded worldwide. All intellectual property rights in respect of the Geogebra Project and brand have been transferred to Complainant.
GeoGebra software and educational materials are now available in at least 64 languages and provided to millions of students and teachers worldwide, in over 190 countries, with 90 million visits to the website at "www.geogebra.org" in 2015. Already in 2016, there have been over 54 million visits to this site and according to Google Analytics, the number of website hits since 2011 have been as follows:
|
Year |
Sessions |
|
2011 |
7,146,008 |
|
2012 |
8,171,564 |
|
2013 |
14,467,037 |
|
2014 |
30,163,120 |
|
2015 |
91,880,885 |
|
2016 (until June 27 only) |
54,423,906 |
"GeoGebra" is an invented word. A search for the term "GeoGebra" on the Google search engine in the United Kingdom lists only uses relating to Complainant.
Complainant owns United States of America ("US") Trademark Registration No. 4014233 for GEOGEBRA, filed on February 1, 2011, registered on August 23, 2011, and with a date of first use in 2004.
Complainant also owns WIPO International Registration No. 1227921 for GEOGEBRA, registered on April 28, 2014. As of July 12, 2016, WIPO has recorded that this trademark has been registered in the following countries, with pending applications in other jurisdictions:
|
Armenia |
Australia |
Bosnia and Herzegovina |
|
Switzerland |
China |
Iceland |
|
Japan |
Kenya |
Kyrgyzstan |
|
Kazakhstan |
Liechtenstein |
Montenegro |
|
Norway |
New Zealand |
Serbia |
|
The Russian Federation |
Turkey |
Ukraine |
|
Viet Nam | ||
Complainant has also applied for a trademark for GEOGEBRA in the European Union (EUTM application no. 12416319).
Complainant owns the domain name <geogebra.org>, which was registered on January 9, 2006. Complainant uses this domain name in conjunction with a website that promotes and provides services under the GEOGEBRA brand. Complainant also uses GeoGebraTube at "www.geogebratube.org", where users have shared over 400,000 free STEM education GeoGebra learning materials.
Complainant's GeoGebra is a teaching and learning resource that has won numerous awards in recognition of its popularity. By way of recent examples, in 2002 it won the European Academic Software Award in Sweden; in 2009 it was a finalist in the London for British Educational Technology Awards; and in 2015 it was a finalist in the Public Sector: Education division of Microsoft Partner of the Year Award in Redmond, Washington, US. Furthermore, Complainant recently in 2016 won a MNU Award in the Mathematics category in Hamburg, Germany.
Complainant organizes events in many countries worldwide, many of which encourage third-parties to attend. These events include, for example, the International GeoGebra conference in Budapest in January 2014, to provide a meeting platform for International GeoGebra Institute members and GeoGebra users, including teachers of all levels, educators, researchers and developers from all over the world. In 2015 Complainant held a GeoGebra Global Gathering in Linz, Austria, while also offering classes and workshops in places around the world and attending many other events. Complainant has also organized a number of worldwide events for 2016.
The Domain Name was initially registered on July 28, 2004. Complainant has provided evidence in response to Procedural Order No. 1 to show that the registrant of record for the Domain Name has changed on numerous occasions after 2004, including a change to Respondent on or after August 24, 2013.
Complainant states that the name GEOGEBRA is strongly associated with Complainant and its educational software by members of the public and that Complainant has global renown. To Complainant's knowledge, there is no other entity anywhere in the world that legitimately uses this term. The public recognize the name as identifying and distinguishing the services of Complainant (and its related predecessors in title). Complainant asserts that it has developed significant rights in the name, which date from before registration of the Domain Name. On this basis, Complainant not only has registered rights but has established relevant common law rights in its GEOGEBRA mark in the nature of passing off in the United Kingdom and in the nature of unfair competition laws in many other countries.
Complainant states that the distinctive element of the Domain Name – the term "geogebra" – is identical to Complainant's GEOGEBRA trademarks. Complainant contends that given the high level of distinctiveness of the marks because GEOGEBRA is a made-up word used only by Complainant, there is an extremely high likelihood of confusion between the Domain Name and the marks.
Complainant argues that "confusing similarity" under the Policy is a "low threshold test", the purpose of which is to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint. The test involves a simple comparison of the mark relied upon with the domain name in issue. Where a domain name incorporates the entirety of a trademark, the domain name will for the purposes of the Policy be confusingly similar to the trademark. Complainant urges that given the Domain Name incorporates the entirety of Complainant's GEOGEBRA mark, the relatively low threshold of confusing similarity required by the Policy is easily met in this case.
Complainant states that according to research undertaken using DomainTools, the registrant of the Domain Name previously had been a third-party, but in August 2013 Respondent became the registrant.
Complainant contends that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Domain Name is currently parked, while some of the links on the parked site appear to relate to Complainant's website. Furthermore, many of the links refer to mathematics, indicating a link to Complainant. In addition, Respondent does not have any Internet presence known to Complainant (having made due enquiries and searches) in relation to the use of "GeoGebra" as a trademark or otherwise. Respondent does not own any registered trademarks for the word "GeoGebra".
Complainant argues that there therefore exists a strong prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. As a result, the burden of proof shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name In Complainant's opinion there can be no such evidence, as demonstrated by the Google search referred to above.
Complainant states that it has strong grounds to believe that Respondent acquired the Domain Name for the purpose of selling or renting it to Complainant or taking unfair advantage of the reputation and goodwill of Complainant's reputation. The Domain Name is currently parked, which suggests that Respondent is cybersquatting on the Domain Name, which incorporates Complainant's trademarks. Complainant asserts that this constitutes interference with and disruption of Complainant's business, as this is in direct competition with Complainant's business. Complainant highlights that in a prior UDRP case, the panel decided that the mere parking of a domain name may constitute bad faith if there are additional factors. Furthermore, Complainant's services have been provided for several years within the United Kingdom and in other territories, as well as online through its website at "www.geogebra.org", and as apps on iOS, Android and Windows10 devices. It is therefore highly unlikely that Respondent would have been unaware of Complainant's (and its predecessors in title's) rights in the GEOGEBRA marks or its reputation for offering dynamic educational services.
Complainant contends that it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by Respondent that would not be illegitimate, such as by being a passing off or an infringement of Complainant's rights under trademark law.
Respondent did not reply to Complainant's contentions.
To succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
Complainant has demonstrated it has well established trademark rights in its GEOGEBRA marks. Further, the Panel finds that the Domain Name is identical to Complainant's GEOGEBRA marks. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. In this case, the Domain Name includes Complainant's mark in its entirety, with no other elements except for the ".com" top-level domain suffix.
Accordingly, the Panel concludes that the Domain Name is identical to Complainant's GEOGEBRA trademarks. Complainant has satisfied the first element of the Policy.
Regarding the second element pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent has the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. The Domain Name is identical to Complainant's GEOGEBRA trademark, which as an invented word used as a highly distinctive term. Complainant states that no other entity anywhere in the world legitimately uses this term, and this point is confirmed by Google searches. Complainant is not affiliated with Respondent and Respondent obtained the registration in August 2013, after Complainant's GEOGEBRA mark was well established. It appears obvious from the record in this case that Complainant has never authorized or licensed Respondent to incorporate Complainant's GEOGEBRA trademark in the Domain Name or to use it in any other capacity. Respondent has not been commonly known as GEOGEBRA and has not used the Domain Name for noncommercial of fair-use purposes.
The evidence presented by Complainant also shows that Respondent's use of the Domain Name has not been bona fide and has not given rise to any right or legitimate interest on the part of Respondent. Instead, the Domain Name has been used to host a website offering sponsored links. Given the reputation and distinctiveness of Complainant's GEOGEBRA trademark, it appears that Respondent's only plausible motive for this type of use is to capitalize on the goodwill associated with Complainant's GEOGEBRA mark to attract Internet users to its website with sponsored click-through links. In view of these circumstances, Respondent's use of the Domain Name has not given rise to any rights or legitimate interests in it.
Respondent has not responded to the Complaint and therefore has offered nothing to establish any rights or legitimate interests in the Domain Name.
Accordingly, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name, and Complainant has established the second element of paragraph 4(a) of the Policy.
Finally, the Panel also determines that the Domain Name has been registered and used in bad faith. In this case, Respondent became the registrant of the Domain Name in August 2013, at a time when Complainant's GEOGEBRA trademarks were well-established, unique and highly distinctive. The Panel finds that Respondent acquired the Domain Name in order to exploit Complainant's goodwill in its GEOGEBRA marks. In so doing, Respondent registered the Domain Name in bad faith.1
The Panel finds that given the unique distinctiveness of Complainant's GEOGEBRA marks (comprised of a made-up word used only by Complainant as its brand name), it is difficult to conceive of any plausible actual or contemplated active use of the Domain Name by Respondent that would not be illegitimate or a bad faith use under the Policy. See La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea Romica, WIPO Case No. D2008-1377; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Moreover, Respondent has not attempted to justify its use of the Domain Name, and the record does not indicate any attempt to make noncommercial or fair use of the Domain Name in a manner that might test the limits of this point.
The Panel also determines that parking the Domain Name by linking it to a page providing sponsored links, including references to Complainant and to other mathematical websites, constitutes bad faith use of the Domain Name. See Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. In this regard, Respondent is using the Domain Name, which falsely conveys an association with Complainant, to lead Internet users to its website. The inevitable consequence is that there will be confusion, as a substantial proportion of Internet users visiting the site will be doing so in the expectation of reaching a site of, or authorized by, Complainant. When they reach the site they may realize that they have been mistaken, but in any event the objective of bringing them there will have already been achieved. As discussed in the analysis in David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472, this amounts to impersonation of the mark owner with a view to expanding coverage of the respondent's views. Respondent is illegitimately identifying itself in a confusing manner and attracting visitors to its site by trading off on Complainant's goodwill in its GEOGEBRA trademarks. Thus, the Panel finds that in this case, by using the identical Domain Name, Respondent has intentionally attempted to disrupt Complainant's business and to attract Internet users to its website by creating a likelihood of confusion with Complainant's GEOGEBRA marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. This amounts to bad faith use within the broad ambit of the Policy.
Accordingly, the Panel finds, in view of all of the above circumstances and the allegations and evidence submitted in this case, that the Domain Name was registered and is being used in bad faith, satisfying the third element 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 Domain Name <geogebra.com> be transferred to the Complainant.
Christopher S. Gibson
Sole Panelist
Date: September 21, 2016
1 Moreover, under paragraph 2 of the Policy, Respondent when registering the Domain Name had a responsibility to determine whether it infringed upon the rights of any third-party. Policy, paragraph 2 ("It is your [the domain-name holder's] responsibility to determine whether your domain name registration infringes or violates someone else's rights."); see also Law Society v. RareNames WebReg / Rarenames, Inc., WIPO Case No. D2009-0720 ("Had the Respondent conducted even minimal Internet searches before registering the Disputed Domain Name, such searches would have alerted the Respondent to the Complainant's existing mark and the Respondent would have been aware of the likelihood of confusion between the Disputed Domain Name and the Complainant's THE LAW SOCIETY mark.").