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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Scholastic Inc. v. Applied Software Solutions, Inc.

Case No. D2000-1629

 

1. The Parties

1.1 The Complainant is Scholastic Inc, a corporation organized and existing under the laws of the State of New York, United States of America, having its principal place of business at 555 Broadway, New York, New York, United States of America.

1.2 The Respondent is Applied Software Solutions, Inc., a corporation organized and existing under the laws of the State of Minnesota, having its principal place of business at 2489 Rice Street, Suite 202, St. Paul, Minnesota, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <escholastics.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), located in Herndon, Virginia, United States of America.

 

3. Procedural History

3.1 A Complaint was submitted electronically to the WIPO Center on

November 22, 2000, and the signed original together with four copies forwarded by express courier was received on November 27, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 28, 2000.

3.2 On November 30, 2000, NSI confirmed by email that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.

3.3 The WIPO Center determined that the Complaint was not in compliance with the formal requirements of the Policy and issued a Complaint Deficiency Notification on December 12, 2000.

3.4 On December 12, 2000, an Amendment to Complaint was submitted electronically to the WIPO Center, and on December 14, 2000, the WIPO Center received the signed original together with four copies by express courier.

3.5 The WIPO Center determined that the Complaint as amended satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a three-member Panel were paid on time and in the required amount by the Complainant.

3.6 No further formal deficiencies having been recorded, on December 20, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI, and ICANN), setting a deadline of January 8, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.

3.7 No Response having been received, on January 10, 2001, the WIPO Center issued a Notification of Respondent Default.

3.8 On January 15, 2001, after having been contacted by Respondent's counsel, the WIPO Center extended the time in which a Response could be filed to and including January 28, 2001.

3.9 On January 26, 2001, the WIPO Center received in electronic format and on

January 30, 2001 in hardcopy the Response.

3.10 On January 29, 2001, the WIPO Center issued an Acknowledgement of Receipt (Response).

3.11 On February 27, 2001, the WIPO Center Sent a Notification of Panel Appointment, appointing Frederick M. Abbott, Dennis A. Foster, and M. Scott Donahey to act as Panelists, with M. Scott Donahey to serve as Presiding Panelist. This Decision was due by March 12, 2001 but, owing to supervening events beyond the Panel's control, the Center granted an extension until March 20, 2001.

 

4. Factual Background

4.1 Complainant is a global children's publishing and media company producing and distributing material for children, teachers and parents, and publishes and distributes children's books, classroom and professional magazines, software, and other educational materials and maintains a web site at www.scholastic.com.

4.2 Complainant first registered the SCHOLASTIC mark with the United States Patent and Trademark Office ("USPTO") in connection with a periodical magazine on August 5, 1930, and currently owns more than 65 trademarks registered with the USPTO alone. Complaint, Annex C. The mark has been continuously in use since at least 1922.

4.3 Complainant has recently garnered significant worldwide recognition for its publication of the Harry Potter book series, one of the most successful publications ever.

4.4 Complainant registered its <scholastic.com> domain name in 1993. Complainant uses the web site in connection with the promotion of its goods and services to school administrators, teachers, parents and students.

4.5 Complainant has expended millions of dollars in the promotion of its SCHOLASTIC trademarks, which have acquired strong secondary meaning.

4.6 Respondent is a business located in Minnesota. Respondent registered the disputed domain name on August 17, 1999. It purports to provide corporations with training materials in order to "web-enable" them. In its Response, Respondent stated that it provides "web-based training programs for large organizations that seek to train people." Respondent argued that its target market was different in kind. In its Response, Respondent did not argue that its market was different geographically from that of Complainant. Annex 1 to the Response states in part "The Web opens up the possibilities of global training . . . ."

4.7 Respondent's web site admittedly contained many references to services for "students, teachers and administrators" (Complaint, Annex D, second page), to "play[ing] a significant role in the nation's future by developing educational resources for students, teachers and administrators through the World Wide Web. This educational resource through the internet {sic} is know as 'Electronic Scholastics' (eScholastics.com) where students would utilize the latest technology to learn various concepts and ideas" (Complaint, Annex D, fifth page), and to "K-12 education." Complaint, Annex D, sixth page.

4.8 Respondent reportedly removed such references from its web site following a telephone conference between Complainant's and Respondent's counsel and added a disclaimer. Response, ¶8 and Annex 3 thereto.

4.9 Complainant sued Respondent in the United States District Court for the Southern District of New York. In response, Respondent brought a motion to dismiss for lack of personal jurisdiction.

4.10 In support of such motion, Respondent's President represented that all of Respondent's clients were located in Minnesota, that Respondent had only transacted business in Minnesota, and any revenues generated by Respondent were generated in Minnesota. Respondent's counsel represented to the court that "[Respondent's] business is strictly local."

4.11 Before a hearing on Respondent's motion, Complainant dismissed the U.S. district court litigation.

 

5. Parties’ Contentions

5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical and/or confusingly similar to the trademark and service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

5.2 Respondent contends that the addition of the letter "e" before the trademarked term and the use of the plural "s" means that the domain name at issue is different from the marks in which Complainant has rights, and also that the plural of the term SCHOLASTIC is generic for a term referring to education. Respondent further contends that it has rights and a legitimate interest in respect of the domain name at issue, since it is making a bona fide offering of services of the type for which the domain name at issue is descriptive, and that Respondent's customers and potential customers have come to associate the domain name with Respondent. Finally, Respondent contends it did not register nor is it using the mark in bad faith, and that Complainant has failed to carry its burden of proof in this regard.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in the statutes and regulations of the United States and in the decisions of its courts.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

We must first determine whether the domain name at issue is identical or confusingly similar to a mark in which Complainant has rights. Respondent contends that because Respondent registered a domain name with the letter "e" preceding the SCHOLASTIC mark and added the plural forming "s" at the end, that Respondent's domain name is neither identical nor confusingly similar to Complainant's trademark.

Prior Panel decisions have determined that the addition of minor elements such as an "e" before a trademark, or "s" following the trademark have not altered the determination that the domain name adopted is identical or confusingly similar to the trademark in which a complainant has rights. Busy Body, Inc. v. Fitness Outlet Inc., ICANN Case No. D2000-0127 (trademark = FITNESS WAREHOUSE; domain name = <efitnesswarehouse.com>); InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, ICANN Case No. D2000-0069 (trademark = INFOSPACE; domain name = <wwwinfospaces.com>); Scholastic Inc. v. 366 Publications, ICANN Case No. D2000-1627 (trademark = SCHOLASTIC; domain names = <onlinescholastic.com>, <onlinescholastics.com>. <oscholastic.com>, and <oscholastics.com>). In each of the above cases the domain names were found confusingly similar to or identical to complainant's trademark which did not include the additional elements.

However, Respondent argues that Complainant has no rights to the name since Complainant has registered as a trademark a generic term. However, the term was not generic, at least as of the time of the various registrations of the mark, since the USPTO will not issue registrations for generic terms. Respondent has produced no evidence that such terms are generic.

Perhaps by "generic" Respondent intends to suggest that the term SCHOLASTIC is merely descriptive. If so, prior Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047. It is the Panel's belief that Respondent has not met its burden.

Respondent has failed to produce any evidence, beyond a mere assertion, that the trademark at issue is or has become merely descriptive. The dictionary definition "of or pertaining to schools, scholars or education" given by Respondent is for the adjectival form of the word. Indeed, it is not the primary definition given for the adjectival form, which is "a) of or relating to Scholasticism, b) suggestive or characteristic of a scholastic esp. in subtlety or aridity: PEDANTIC." The noun form of the word lists three definitions: "1. a. a Scholastic philosopher; b. PEDANT, FORMALIST; 2. a student in a scholasticate; 3. one who adopts academic or traditional methods in art." Webster's Ninth New Collegiate Dictionary, Merriam-Webster, Inc. (1987).

Even had Respondent shown that Complainant's mark embodied a descriptive term, Complainant could show that the mark has acquired a secondary meaning by having been used for so long and so exclusively by one merchant with reference to the particular article that in that trade and to the particular branch of the purchasing public, the word or phrase has come to mean that the article was the product of the merchant in question. Broadway Trading, LLC v. Gene Weissman, ICANN Case No. FA 94310.

The Panel performed a search using two different search engines employing the term "scholastic" as the sole search term. With the first search engine, of the 15 most responsive results, twelve dealt with Complainant or Complainant's products. With the second, of the first 16 most responsive results, fourteen dealt with Complainant, its products, its web sites, and news stories concerning Complainant. Even assuming for the sake of argument that Respondent had been able to establish that SCHOLASTIC is or has become a descriptive term, the above evidence would support Complainant's rights in its mark. Indeed these searches demonstrate that Complainant's mark is strong and well known.

Accordingly, the Panel finds that the domain name at issue is identical or confusingly similar to the mark in which Complainant has rights.

Respondent claims to have rights or legitimate interests in respect of the domain name at issue in that its customers have accessed the web site to which the domain name at issue resolves and that other potential customers of Respondent have come to associate the domain name at issue with Respondent. However, where someone in the same or similar field as Complainant would not have chosen the domain name unless seeking to create the impression that there was some association with Complainant, there can be no rights or legitimate interests in respect of the domain name. The British Broadcasting Corporation v. Jaime Renteria, ICANN Case No. D2000-0050. Respondent initially used the domain name at issue to resolve to a web site where educational services were offered to the same market as that served by Complainant, and only altered that use following a complaint by Complainant. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. Bad faith use cannot establish rights and legitimate interests in respect of the domain name. Busy Body, Inc. v. Fitness Warehouse, Inc., ICANN Case No. D2000-0127. "[W]here the Complainant's mark is the subject of long prior, incontestable trademark registrations and has become well-known in the country where Respondent is located," then Respondent can have no right or legitimate interest in respect of an identical or confusingly similar domain name. Scholastic Inc. v. 366 Publications, ICANN Case No. D2000-1627.

As previously indicated, Respondent's registration and use of the domain name comes within paragraph 4(b)(iv) of the Policy and as such constitutes bad faith registration and use. Moreover, the representations which were made to the court regarding use only within a local jurisdiction contrast vividly with Respondent's stated intent here and on its web site to use the Internet to transact training activities globally. Respondent's attestations do not ring of good faith.

 

7. Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical or confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that the domain name at issue has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel orders that the domain name <escholastics.com> be transferred to the Complainant.

 

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M. Scott Donahey
Presiding Panelist

Frederick M. Abbott
Panelist

Dennis A. Foster
Panelist

Dated: March 15, 2001