Yesterday we let you know that A UDRP panel awarded the domain name GED.net to the company that administers the exam and owns the trademark on the term
Today we have the actual opinion of the UDRP panel and with it additional facts.
The first big surprise for me is that the domain holder failed to demand a three member panel and allowed to take the luck of the draw with a one member panel.
Extremely surprising after reading in the opinion that the domain holder acquired this domain for $60,000 not long ago.
Secondly, even though the domain holder said that he acquired the content of the site along with the domain, the domain sad inactive since acquisition basically killing the case for the domain holder.
Here are the relevant facts and findings:
“Complainant, founded in 1918, represents presidents and chancellors of colleges and universities throughout the United States”.
“Through a division (now a joint venture under Complainant’s control), Complainant publishes, markets, and licenses the GED test”.
“The test has its origins in World War II, during which many American men joined the armed services before completing high school.
“The GED test has been used in all 50 states of the United States as an accepted method for obtaining a high school equivalency credential. Today, many Americans who drop out of high school eventually take the GED test.
“Complainant holds several registered service marks, registered with the United States Patent & Trademark Office (“USPTO”) at various times between 1985 and 2002, of the term GED – either as a word mark (2002) or stylized (1985 and 2002).”
“The GED mark is registered in connection with educational testing services”.
“According to the USPTO registrations, Complainant made first use in commerce of GED as a word mark in 1999, and made first use of GED as a stylized mark in 1971”.
“The Domain Name was registered by Respondent on June 12, 2011. ”
“It appears that Respondent acquired the Domain Name from another party, and according to Respondent the acquisition of the Domain Name was accompanied by a fully developed website which Respondent has not yet changed”.
“The website contains considerable information about the GED test and offers various services – at various price points – for people interested in preparing for the GED test.
“At the bottom of some pages at the site is the statement: “GED.net is an independently owned and operated website since 1997.” Also at the bottom of some pages is the following disclaimer: “GED.net is not associated or affiliated with the American Council on Education or any related entities.”
“Respondent claims that it intends to provide services similar to those already offered on the website it apparently purchased along with the Domain Name. It appears further that, by Respondent’s account, the website has been inactive for more than a year, despite the content one sees at the website, and the hyperlinks are inoperative. Respondent asserts that it has not realized any revenue to date from the website”.
“Complainant’s counsel further states in the affidavit that, on December 21, 2012, Respondent’s counsel left him a voice-mail message seeking to discuss a resolution of the dispute. The two counsel spoke again on December 24, 2012, at which time Respondent offered to sell the Domain Name for $50,000.”
“Complainant did not accept this offer. In its opposition to the motion for leave to file a Reply, Respondent stated that it had paid $60,000 to acquire the Domain Name. It is not clear from the opposition paper whether other assets or consideration were acquired along with the Domain Name.
“Respondent admits to having initiated discussions with Complainant to seek resolution of the dispute for a $50,000 sale. Respondent also states in the opposition paper that Complainant’s counsel told Respondent’s counsel that Complainant would consider buying the Domain Name at the purchase price (then believed to be $50,000, not $60,000) if Respondent would provide a copy of the purchase agreement. ”
“Respondent said in its opposition paper that it was willing to provide a copy of the purchase agreement, and telephoned Complainant’s counsel at least three times to advise Complainant of this willingness. Complainant’s counsel, however, never returned these calls. In any event, no copy of the purchase agreement by which Respondent purportedly acquired the Domain Name was annexed to the Response or to the opposition paper Respondent filed”.
“The Panel concludes that Respondent lacks any rights or legitimate interests in respect of the Domain Name. ”
“In this vein, it is important to note that Respondent has disavowed the content at the website, which content is fairly well developed and undoubtedly appears directed at consumers who wish to pass the GED test insofar as that content currently relates to the offering of products or services for commercial gain”.
“Notwithstanding the above, the Respondent claims that it intends to enter the business of offering test preparation materials for the GED test.”
“However, Respondent has not provided any evidence of this alleged plan. In the Panel’s view, it would have been rather easy to provide some evidence of such a plan, and a party trying to establish its bona fides would naturally to back up one’s claims along these lines with some proof. Moreover, it would have been seemingly very simple for one intending to launch into a field where some expertise is needed to state one’s own credentials, as well as the contours of one’s business plan.
“Respondent’s failure to offer the foregoing information and evidence as well as its apparent contradictory plans with regards to use of the website defeats its claim to a right or legitimate interest under any element of this head of the Policy, and undermines Respondent’s credibility in general in this proceeding”.
“The Panel also finds it implausible that a party with actual plans to get into the test preparation business would let its website essentially idle for more than a year with old (as well as inaccurate or misleading) content from the prior owner of the site.”
“In its consideration of the above, the Panel has taken note of the existence of Google ads on the website at the Domain Name (Exhibit F to the Complaint) and the effect of a disclaimer in making the determination that Respondent lacks rights or legitimate in the Domain Name.”
“The Panel finds bad faith”
“Much of Respondent’s argument on the issue of “bad faith” is based on the fact that there are numerous websites in existence which purport to offer GED materials and information, but which are unaffiliated with Complainant.”
“That may be so, but it does not follow that Respondent is free to appropriate the GED mark as others may have done and violate Complainant’s rights under the Policy as the Panel has found here.”
“On this record, it is impossible to know whether some of the other websites cited by Respondent are run with Complainant’s permission. ”
“It may well be, by contrast, that Complainant has more work to do to police its trademarks. In any event, the legitimacy of the operations behind these other websites is not at issue in this proceeding, and Respondent may not take refuge in an “everybody else is doing it” argument in this context.”
“Respondent also states: “no evidence has been presented by Complainant to suggest that Respondent would know or would have reason to know of Complainants’ claimed mark, and indeed, Respondent had no knowledge of Complainant’s mark.”
“The Panel does not believe the Respondent’s assertion. ”
“It is not credible for Respondent, who claims to want to get into the business of offering GED test preparation services or materials, to deny knowledge that GED is a trademark. ”
“Indeed, the website that Respondent claims to have purchased along with the Domain Name states:
“The GED is made up of 5 tests that have been developed and are administered by the American Council on Education (ACE).” That site also contains a disclaimer: “GED.net is not associated or affiliated with the American Council on Education or any related entities.” The Panel finds it most likely that Respondent purchased the Domain Name with Complainant’s trademark in mind.”