Scholastic Inc. v. Tonya Parker-Jones

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scholastic Inc. v. Tonya Parker-Jones/Scholasticnetworks.Com/Schoolasticnetworks.Com

Case No. D2001-0872

1. The Parties

The Complainant in this Administrative Proceeding is Scholastic Inc., a corporation

organized and existing under the laws of the State of New York, with its principal

place of business at 555 Broadway, New York, New York, USA.

The Respondent in this Administrative Proceeding is Tonya Parker-Jones, Scholastic

Networks and/or Schoolastic Networks at 2621 Unicornio Street, Carlsbad, California,

USA.

2. The Domain Names and Registrar

This dispute concerns the domain names <scholasticnetworks.com> and <schoolasticnetworks.com>,

hereinafter the Domain Names.

The Registrar with which the Domain Names are registered is:

Name: Network Solutions, Inc.

Address: 505 Huntmar Park Drive, Herndon, VA 20170.

The <scholasticnetworks.com> domain name was registered on or about October 30, 1998,

and the domain name <schoolasticnetworks.com> was registered on or about

February 2, 2000.

3. Procedural History

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the

Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy

("the Rules"), both of which were implemented by ICANN on October

24, 1999, was received by the Center in electronic format on July 10, 2001,

and in hardcopy on July 12, 2001. Payment in the required amount to

the Center has been made by the Complainant.

On July 13, 2001, a Request for Registrar Verification was sent to the Registrar

requesting confirmation that it had received a copy of the Complaint from the

Complainant, that the Domain Names were currently registered with it and that

the policy was in effect, and requesting full details of the holder of the Domain

Names and advice as to the current status of the Domain Names.

On July 19, 2001, the Administrative Proceeding began.

On August 7, 2001, a request by the Respondent's Authorized Representative

for an extension to respond was received by the Center. This was granted until

August 10, 2001. A Response was received from the Respondent on August

10, 2001.

On August 31, 2001 the Complainant filed a Supplemental Filing.

On September 4, 2001, Notification of Appointment of an Administrative Panel

and Projected Decision Date ("the appointment notification") was sent

to the Complainant and the Respondent. In accordance with the Respondent's request,

the appointment notification informed the parties that the Administrative Panel

would comprise of three Panelists, Clive L. Elliott, Professor William R. Cornish

and M. Scott Donahey, and advised that the decision should be forwarded to WIPO

by September 18, 2001, subsequently extended to October 2, 2001.

On September 27, 2001 a decision was made.

4. Factual Background

The Complainant is a global children’s publishing and media company producing

and distributing material for students, teachers and parents.

The Complainant is the owner of more than 100 trademarks registered with the

United States Patent and Trademark Office for the SCHOLASTIC trademarks in classes

including International Class 9 (computer software and related merchandise),

Class 16 (periodicals and printed materials), Class 28 (computer games) and

numerous other classes. (A list of federally registered U.S. trademarks owned

by the Complainant using the SCHOLASTIC Trademarks was provided). Each of these

registrations is said to be valid and in effect.

Since about 1993, the Complainant has used the SCHOLASTIC Trademarks on and

in connection with information and services offered through online services.

Specifically, in 1992 the Complainant registered the domain name <scholastic.com>

with Network Solutions, Inc. Beginning in about 1993, the Complainant maintained

an area on America Online accessible by using the keyword "Scholastic",

and since 1996, it has also used the SCHOLASTIC Trademarks in connection with

its Internet websites outside of America Online, including <www.scholastic.com>.

The Complainant alleges it is among the leading publishers and distributors

of books for students, classroom and professional magazines, software and other

educational materials and games, including a popular Internet website called

<www.scholastic.com>.

Since at least as early as 1922, the Complainant has been using the trademark

"SCHOLASTIC" and trademarks featuring "SCHOLASTIC" preceded

or followed by another word or words (hereinafter the "SCHOLASTIC Trademarks")

in connection with a wide variety of goods and services.

Among its many activities, the Complainant is the publisher of and uses the

SCHOLASTIC Trademarks in connection with thousands of books and magazines used

by students in primary and secondary schools, numerous magazines directed at

teachers and educational professionals, book clubs, book fairs, the production

of television series and feature films, and the publication and sale of educational

software and multimedia products to school administrators, teachers, parents

and students.

The Complainant has recently obtained significant worldwide recognition for

its publication of the Harry Potter book series, one of the most successful

publications ever.

The Respondent Tonya Parker-Jones is the founder and President of Schoolastic

Networks. Ms. Parker-Jones states she has fourteen years of experience in the

financial aid/business office management, operations, and is an active participant

of national, state and accrediting associations. Ms. Parker-Jones indicates

that she has responded to over 100 program reviews conducted by state, accrediting

and Federal agencies. Prior to her role as Vice President, Ms. Parker-Jones

was the Lead Quality Assurance Specialist for a nationwide school chain. Her

development and implementation of a comprehensive audit tool was designed to

limit the scope of liability, identify systemic weaknesses, and provide follow-up

training in areas necessary to operate efficiently and in compliance.

The Respondent states that its team of highly knowledgeable educators has many

years of experience in developing, evaluating curriculum, instructor evaluations,

mentoring, staff development and grant writing.

The Respondent notes that the domain name <scholasticnetworks.com> has

been used in connection with its website since shortly after its registration

on October 30, 1998, and the domain name <schoolasticnetworks.com> has

been used in connection with the same website since shortly after its registration

on or about February 2, 2000.

The Complainant first became aware of the Respondent’s domain name, <scholasticnetworks.com>,

in November of 1998, at which time it informed the Respondent that the use of

said domain name infringed upon Scholastic’s rights.

Thereafter, the Respondent retained counsel, and through that counsel agreed

to change her trade name from Scholastic Networks to Parker-Jones Educational

Consultants, with the provision that she be allowed to use the phrase "formerly

known as Scholastic Networks" until December 31, 1999.

In July 2000, nearly six months after the expiration of that "phase-out"

period, the Complainant became aware that Respondent was continuing to use the

domain name <scholasticnetworks.com> and to identify her company as Scholastic

Networks. The Complainant immediately demanded that Respondent comply with her

previous agreement. Neither the Respondent nor her counsel responded to that

demand, despite the Complainant's repeated attempts to contact them.

The Complainant then became aware in February 2001 that the Respondent had

registered the domain name <schoolasticnetworks.com> and had begun identifying

her business as Schoolastic Networks.

In February 2001, the Complainant demanded that Respondent cease and desist

from using the domain name <scholasticnetworks.com> and <schoolasticnetworks.com>,

and that she comply with her previous agreement, but the Respondent did not

respond.

5. Parties’ Contentions

A. Complainant

The Complainant has expended millions of dollars to promote its SCHOLASTIC

Trademarks and the goods and services which bear the SCHOLASTIC Trademarks.

As a result of these expenditures and efforts, it asserts that it possesses

proprietary rights in the SCHOLASTIC Trademarks and the public has come to strongly

associate the goods and services provided by the Complainant with the SCHOLASTIC

Trademarks.

It is noted that the <scholasticnetworks.com> domain name was registered

with Network Solutions, Inc. in October 1998, six years after Scholastic registered

the <scholastic.com> domain name, and over seventy-five years after Scholastic

began using the SCHOLASTIC Trademarks. The <schoolasticnetworks.com> domain

name was registered in February 2000, eight years after the Complainant began

using the SCHOLASTIC Trademarks, and over seventy-five years after the Complainant

began using the SCHOLASTIC Trademarks.

The Complainant asserts it has continuously, exclusively and extensively used

the SCHOLASTIC Trademarks in connection with the promotion and sale of products

and services throughout the United States and other countries.

It is submitted that in the Internet world, the suffix "Network"

means a system that transmits information between users, or any arrangement

of elements that are interconnected. Accordingly it is submitted that by putting

these two terms together, the domain name <scholasticnetworks.com> suggests

an information system operated or endorsed by the Complainant. Consumers who

are highly familiar with Scholastic and its products are likely to be confused

and will think that <scholasticnetworks.com> is a website associated with

Scholastic and its goods and services. The same is true of the domain name <schoolasticnetworks.com>,

as the addition of an "o" does nothing to alleviate any confusion.

The Complainant says this confusion is exacerbated by the Respondent’s operation

of a website that can be reached by typing in either the domain name <scholasticnetworks.com>

or <schoolasticnetworks.com>. Among other things, that website offers

consumers access to educational software, a service also provided by Scholastic

through its website.

B. Respondent

The Respondent claims to have registered the Domain Names in good faith. It

is said they were registered because they were:

- descriptive of the Respondent’s business;

- easy to remember;

- not subject to any monopoly of trademark rights; and

- generic (in the case of <scholasticnetworks.com>) and fanciful (in the

case of <schoolasticnetworks.com>).

The Respondent says a search of the United States Patent and Trademarks Office

revealed that there are several companies who own registered trademarks for

the word SCHOLASTIC in the United States.

Nevertheless, the Respondent claims that in this case, the facts are distinguishable

in terms of confusing similarity. In particular, the Respondent’s use of the

word, "NETWORKS", following the word, SCHOLASTIC, indicates a Network

relating to scholastics, or school. This is submitted to be much different than

merely adding the word, ONLINE.

The Respondent also claims the domain name, <schoolasticnetworks.com>

is a fanciful and made up name for which the Complainant has no trademark rights

whatsoever. The Respondent submits that such a fanciful name cannot reasonably

be considered to be confusingly similar to the Complainant’s marks. "SCHOOLASTIC"

(plus NETWORKS) is asserted to not be a misspelling, but a coined word.

Furthermore, it is submitted that the word SCHOLASTIC, itself, is generic.

The Webster’s New Twentieth Century Dictionary, Second Edition, 1979, defines

the word, SCHOLASTIC:

- of schools, colleges, universities, students, teachers, and studies; educational;

academic.

- of or characteristic of medieval schoolmen or their methods;

- pedantic, dogmatic, formal, etc.

- of secondary schools; as, scholastic football games

- a schoolman

- a person who is devoted to logical subtleties and quibblings; a pedant

- a person who favors scholasticism

The Respondent claims that where a domain name is generic, the first person

to register it in good faith is entitled to the domain name. Pursuant to

CRS Technology Corporation v. CondeNet (Concierge.com), NAF, Case No: FA#0002000093547:

"Here, there appears to be no evidence of the conduct referred to as

"cybersquatting". The domain name holder, the Respondent, has not

registered the domain name and is not using the domain name without reasonable

cause. There is no evidence of use of the registered trademark nor is there

evidence of confusion.

…Even though the trademark and the name are all but identical, the Panel

has determined that the first person or entity to register the domain name should

prevail in circumstances such as these where the domain name is a generic word,

here indicating a provider of services, and where that word is widely used as

a trade or service mark, although almost always in connection with modifiers

or qualifiers."

The Respondent relies on the proposition that generic and descriptive words

and phrases will generally not be transferred to a Complainant just because

a Complainant has a registered trademark. Pursuant to Coming Attractions

v.ComingAttractions.com, NAF, Case No. FA0003000094341, Judgment: May 11,

2000.

"The term "coming attractions" is a generic term in the field of entertainment

and its widespread use predated Complainant’s trademark registration. Thus,

Respondent had the right to register the subject domain name, comingattractions.com

and the domain registration is a fair use of a generic term that was available

for registration in the form of the subject domain name without disparagement

of, or impact upon, Complainant’s trademark rights."

It is submitted that even had the Respondent registered <scholastic.com>

itself (the word "Scholastic" being absolutely generic), the Complainant

would not be entitled to its transfer absent a finding of ‘no legitimate interest’

and ‘bad faith’.

It is said that hundreds of the Respondent’s clients have come to know it through

its email addresses and websites and it is commonly known as both SCHOLASTIC

NETWORKS and SCHOOLASTIC NETWORKS.

Finally it is asserted that Respondent has complied with the agreement by ceasing

to operate as Scholastic Networks, but has adopted the made-up and fanciful

name, Schoolastic Networks. The Respondent says it did not require the consent

of Complainant to effect this change. Furthermore, it says it was never agreed

that the Respondent would hand over its registered domain names.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each

of the following:

- The Domain Names are identical or confusingly similar to the trademark; and

- The Respondent has no right or legitimate interest in respect of the Domain

Names; and

- The Domain Names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that,

if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii)

referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that,

if proved, constitute evidence of a right or legitimate interest as described

in paragraph 4(a)(ii) referred to above.

Domain Names Identical to or Confusingly Similar

We must first determine whether the domain name at issue is identical or confusingly

similar to a mark in which Complainant has rights. The Respondent contends that

it registered the Domain Names in good faith, this being so because they were,

inter alia:

- descriptive of the Respondent’s business;

- easy to remember;

- not subject to any monopoly of trademark rights; and

- generic and fanciful.

Prior Panel decisions have determined that the addition of minor or non-distinctive

elements does not alter 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., WIPO

Case No. D2000-0127 (trademark = FITNESS WAREHOUSE; domain name = <efitnesswarehouse.com>);

InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO

Case No. D2000-0069 (trademark = INFOSPACE; domain name = <wwwinfospaces.com>);

Scholastic Inc. v. 366 Publications, WIPO

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.

The Respondent contends however that Complainant has no rights to the name

since the Complainant claims rights in and has registered a generic term. However,

the Respondent has produced no evidence that such term is generic.

Similar arguments were made and rejected in a like case involving the Complainant.

In a unanimous decision Scholastic Inc. v. Applied Software Solutions, Inc.,

WIPO Case No. D2000-1629 the Panel stated:

"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. …

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 Complainant submits that in the Internet world, the suffix "Network"

means a system that transmits information between users, or any arrangement

of elements that are interconnected and that putting these two terms together,

the domain name <scholasticnetworks.com> suggests an information system

operated or endorsed by the Complainant. We find merit in this contention, given

the views we express in the next paragraph.

In the majority’s view the Complainant has shown it has rights in the SCHOLASTIC

Trademarks. The Complainant is the owner of more than 100 trademarks registered

with the United States Patent and Trademark Office for the SCHOLASTIC trademarks.

Since 1922, it has been using the trademark "SCHOLASTIC" and trademarks

featuring "SCHOLASTIC" preceded or followed by another word or words.

The Respondent’s contention that the word is generic cannot be accepted on the

basis of its own unsupported assertions. Its contention that the word is descriptive

has more merit but even so, on the basis of the above authority we are prepared

to accept that the word might be capable of acquiring secondary significance

through extensive use. There is evidence of such extensive and longstanding

use, which is not countered, by evidence of meaningful descriptive use of the

term by others.

On balance, the majority is of the view that the Complainant has done enough

under this ground. Accordingly, it is found that the Domain Names are confusingly

similar to the mark in which Complainant has rights.

No Right or Legitimate Interest

The Respondent claims to have rights or legitimate interests in respect of

the Domain Names. It is said that hundreds of the Respondent’s clients have

come to know it through its email addresses and websites and it is commonly

known as both SCHOLASTIC NETWORKS and SCHOOLASTIC NETWORKS. Finally it is asserted

that Respondent has complied with the agreement by ceasing to operate as Scholastic

Networks, but has adopted the made-up and fanciful name, Schoolastic Networks.

In the majority’s view the marks Scholastic Networks and Schoolastic Networks

are confusingly similar to each other.

While it is not our task to decide whether an agreement was reached to cease

use of the term Scholastic Networks or a name similar to it the Respondent does

not deny such agreement. In our view it is appropriate to take into account

the fact that the Respondent was prepared to relinquish the name Scholastic

Networks and did do so, even though on a conditional basis.

The question is whether having agreed to relinquish the name Scholastic Networks

the use and registration of Schoolastic Networks could be seen as legitimate

and allowable. Having found that it itself is confusingly similar to Scholastic

Networks we are not inclined to make this finding.

In our view the following comments are apposite:

"[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, WIPO Case No.

D2000-1627.

Domain Names Registered and Being Used in Bad Faith

In view of the above comments and findings we find that this ground is made

out.

7. Decision

For all of the foregoing reasons, the majority of the Panel decides that the

Domain Names are confusingly similar to the marks in which the Complainant has

rights, that the Respondent has no rights to or legitimate interests in respect

of the Domain Names, and that the Domain Names have been registered and are

being used in bad faith.

Accordingly, the majority view is that the Domain Names should be transferred

to the Complainant.

Clive L. Elliott

Presiding Panelist

M. Scott Donahey

Panelist

Dated: September 27, 2001

DISSENTING OPINION

This case involves a type of controversy which is inherently difficult to resolve

under the Policy. As the summary of facts and contentions given in the Majority

Opinion makes clear, it concerns on the one hand a Complainant which has a long

and well-established business name, supported by the registration of numerous

trade marks, and, on the other, a Respondent with a much more modest, but apparently

genuine, business. The Complainant publishes hard-copy books and electronic

materials and has recently extended its coverage from school publications to

the juvenile market more generally; the Respondent provides a recruitment and

business management service to schools. The Complainant's mark and name is "Scholastic",

while the Respondent has been called "Scholastic Networks" (now slightly altered

to "Schoolastic Networks"); and it is these latter appellations which are the

essence of the domain names at issue. Accordingly we are not here considering

that common situation where the Registrant of the domain name is not operating,

and is not about to set up, any real business and is therefore likely to be

seen as a cyber-pirate. Instead, the case concerns a business which is stated

by the Respondent to have been in operation under the name "Scholastic Networks"

for three years before the name was incorporated into the first domain name

in dispute.

The Policy is a rapid and economical procedure designed to accept claims where

the assertions in the Complaint receive no convincing answer in the Response.

Unlike the majority of the Panel, I am not persuaded here that a sufficiently

clear case has been made out. I agree with the majority that the Complainant

has a very well-established reputation in "Scholastic" as a mark for the products

and associated services which it supplies. It remains true that the word also

has a descriptive meaning in relation to publishing. When therefore it is placed

with another word, as in "Scholastic Networks", it is necessary to consider

whether the public are sufficiently likely to be confused; the more so, when,

as here, the Respondent is using her composite mark for a business which is

not the same as the Complainant's enterprise, even though it is fairly proximate.

Much turns on the significance of "networks" as the addition. The Complainant

asserts that it will in all likelihood be taken as related to computer operations;

but it must not be forgotten that it now has widespread use in management jargon

to suggest interrelationships of many kinds. In the minds of some, the domain

names may kindle association with the Complainant, but I am not convinced that

this will amount to association which causes confusion about trade source. I

regard the added word as different in effect from the prefixes, "e", "o" and

"online" which were found confusing in Scholastic Inc. v. Applied Sofware,

WIPO Case No. D2000-1629 and Scholastic

Inc. v. 366 Publications, WIPO Case No.

D2000-1627. This conclusion must apply a fortiori to <schoolasticnetworks.com>.

As to the registration of <scholasticnetworks>, I am not persuaded that,

at the time when it was applied for, the Respondent had no legitimate interest

to defend. Her business, by her account, had been running for a substantial

period and she obtained a domain name which in effect consisted of her trading

name. She denies that the registration was made in bad faith and it is inherently

likely that her motivation was to enhance the name by which her business was

known to clients and others. Under the UDNDRP, Paragraph 4(a)(iii), it is necessary

to show that bad faith was present at registration as well as in subsequent

use and that, in my view, has not been made out in relation to this trade name.

The Respondent's subsequent conduct over the settlement agreement with the Complainant

may leave her open to allegations of breach of contract (a matter over which

this Panel has no jurisdiction), but I am not prepared to infer from it that

she was acting in bad faith at an earlier time before she was faced with the

Complainant's objections.

Accordingly I am not able to join in the majority's decision to order transfer

of the domain names in issue to the Complainant.

Professor William R. Cornish

Panelist

Dated: September 27, 2001

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