Scholastic Inc. v. Ramit Sethi

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scholastic Inc. v. ScholasticAdvising.com and Ramit Sethi

Case No. D2001-0946

1. 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 10012-3999, U.S.A.

The Respondents are ScholasticAdvising.com, with an address at 6825 Mellodora

Drive, Orangevale, California 95662, U.S.A., and Ramit Sethi, an individual

residing at the same address.

2. Domain Name and Registrar

The domain name in dispute is as follows: <scholasticadvising.com>. The

domain name was registered with Dotster Inc. on July 7, 2000.

3. Procedural Background

On July 24, 2001, the WIPO Arbitration and Mediation Center received from Complainant,

via e-mail, a Complaint for decision in accordance with the Uniform Domain Name

Dispute Resolution Policy, adopted by the Internet Corporation for Assigned

Names and Numbers ("ICANN") on August 26, 1999, ("Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN

on October 24, 1999, ("Rules"), and the WIPO Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy ("Supplemental Rules").

On August 20, 2001, WIPO e-mailed a Complaint Deficiency Notification advising

that, according to the records of Dotster Inc., the Registrant of record of

the disputed domain name is ScholasticAdvising.com and requesting that Complainant

amend its Complaint accordingly. The Complaint was so amended on August 23,

2001.

The instant Administrative Proceeding was commenced on August 29, 2001.

On September 17, 2001, Respondent requested an extension of time to file its

Response. WIPO granted such request, and a Response was filed on September 25, 2001.

On October 15, 2001, WIPO informed the parties of the appointment of the instant

three-person Administrative Panel. Each Panelist submitted the required Statement

of Acceptance and Declaration of Impartiality and Independence.

The decision of the Panel originally was due to WIPO on or before October 29,

2001. However, the decision due date was later extended to November 5, 2001.

4. Factual Background

Complainant Scholastic is a global children's publishing and media company

producing and distributing material for students, teachers, and parents, including

the singularly successful "Harry Potter" book series. Since at least as early

as 1922, Scholastic has been using the mark SCHOLASTIC and other marks incorporating

the term SCHOLASTIC in connection with a variety of goods and services. Scholastic

owns more than 100 registrations for SCHOLASTIC marks. See Complaint, Exhibit

C.

Since about 1993, Scholastic has used its SCHOLASTIC marks on or in connection

with information and services offered through online services, including advising

services for teachers and parents.

Respondent ScholasticAdvising.com ("ScholasticAdvising") was formed in May

2000. ScholasticAdvising assists high school seniors and entering college students

with financial aid applications, targeted scholarship searches and college recommendations.

As noted above, Respondent registered the domain name in dispute on July 7,

2000. On July 31, 2000, Complainant sent a "cease and desist" letter to Respondent

demanding, among other things, that Respondent transfer the domain name <scholasticadvising.com>

to Complainant. See Complaint, Exhibit E. In response, Respondent noted that

"if we transfer [the domain name] to Scholastic Inc., our business launch will

be delayed…." As a result, Respondent requested that Scholastic reimburse Respondent

for loss-of-business costs totaling $10,365. See Complaint, Exhibit H. In an

e-mail dated October 17, 2000, Respondent recalculated its costs to $7,975.

See Complaint, Exhibit I.

5. Parties' Contentions

Complainant contends that the domain name in issue is confusingly similar to

Scholastic's domain name, <scholastic.com>, and to the SCHOLASTIC marks

because, like many of the SCHOLASTIC marks, its uses the word "Scholastic" in

conjunction with another word. According to Complainant, the suffix "Advising"

connotes information or advice regarding educational resources or materials

and combining the terms "Scholastic" and "Advising" in the disputed domain name

suggests the online source of such information is from Scholastic. "Consumers

who are highly familiar with Scholastic and its products, including its advising

services for parents, new teachers and others, are likely to be confused and

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

Scholastic and its goods and services." Complainant refers the Panel to the

decision in Scholastic Inc. v. Applied Software Solutions, Inc., WIPO

Case No. D2000-1629 (see Complaint, Exhibit F), for the proposition that

the term "Scholastic", as used by Complainant, is not generic or merely descriptive

and has likely acquired secondary meaning.

In support of its Complaint, Scholastic further argues that Respondent: (1)

registered or acquired the domain name primarily for the purpose of selling,

renting, or otherwise transferring it to Scholastic for valuable consideration

in excess of Respondent's out-of-pocket costs directly related to the domain

name; (2) is not currently using, has not used, and, upon information and belief,

has made no preparations to use the domain name in connection with the provision

of any goods or services; and (3) has not been commonly known as <scholasticadvising.com>

or ScholasticAdvising as an individual, business or other organization.

In its Response, Respondent argues that Complainant has no rights to every

word combination with "Scholastic". Respondent points out that it operates a

different type of business than Complainant, for a different type of customer

and, thus, there has not been, and will not be, confusion in the marketplace.

According to the Response, "ScholasticAdvising registered the domain name <scholasticadvising.com>

in good faith, after a name and trademark search. We noted Scholastic's presence

in the media-publishing field, but concluded that they were of a significantly

different focus and market."

In response to the assertion that it registered and uses the domain name in

"bad faith", Respondent contends that it did not register the domain name for

the purposes of "selling, renting, or otherwise transferring it to Scholastic

for valuable consideration." Rather, according to Respondent, it registered

the domain name only after conducting a name and trademark search. The amount

requested for transfer of the domain name -- $7,975 --, according to Respondent,

was based on research for costs incurred by it. These costs, it contends, were

reasonable and represent direct, out-of-pocket costs directly related to the

domain name.

Further, Respondent adds, the domain name accurately describes the services

of scholarship searches, financial aid assistance, and college recommendations.

Respondent notes that there was significant activity on its part to prepare

for a Web launch, including professional design, copywriting, and marketing

materials with the name "SchoalsticAdvising". According to Respondent, it has

expended significant funding into Website development and will activate the

site after a positive decision from the instant Panel.

6. Discussion and Findings

The Panel has carefully reviewed the evidence presented and determines that

Complainant has not met all the requirements set forth in paragraph 4(a) of

the Policy.

While the Panel concludes that the evidence clearly establishes that Complainant

has rights in its SCHOLASTIC marks, it determines that the domain name <scholasticadvising.com>

is neither identical nor confusingly similar to any of Complainant's SCHOLASTIC

marks. None of Complainant's marks covers the term "ScholasticAdvising" and

none look, sound, or create the same commercial impression as the disputed domain

name. The addition of the term "Advising" in the domain name is sufficient,

in the view of the Panel, to render the name non-confusingly similar. Nothing

in the decision in Scholastic Inc. v. Applied Software Solutions, Inc.

is inconsistent with our holding on this issue.

The Panel emphasizes that its determination on this issue is based on a comparison

between the commercial impressions imparted by the domain name and Complainant's

SCHOLASTIC marks. Respondent points out that a trademark owner does not "own"

all combinations of marks using its principal word. We note that there are other

registered marks, such as "Scholastic Furniture", for example.

The Panel further concludes that the evidence supports the determination that

Respondent has rights or legitimate interests in the domain name. The evidence

clearly establishes that, prior to notice to Respondent of the dispute, Respondent

had undertaken preparations to use the domain name in connection with a bona

fide offering of services. Further, the evidence supports a finding that Respondent

is making a legitimate fair use of the domain name, without intent for commercial

gain to misleadingly divert consumers. The domain name <scholasticadvising.com>

describes the nature of the services offered by Respondent under the domain

name. Respondent advises students with respect to securing scholarship and other

financial assistance to attend college.

With respect to the issue of "bad faith" registration and use, the Panel concludes,

based on the totality of circumstances, that this element of the Policy has

not been established. Though the evidence indicates that Respondent offered

to transfer the domain name to Respondent for almost $8,000, the evidence does

not support a finding that Respondent registered the domain name primarily

for the purpose of selling it to Complainant. Rather, the evidence indicates

that Respondent registered the domain name only after conducting a search.

There is no other indicia of "bad faith", either under the Policy or based

on other circumstances. To the contrary, the Panel concludes that Respondent,

at all times, acted reasonably and in good faith.

7. Decision

In view of the above, the Panel denies Complainant's request for transfer to

it of the domain name <scholasticadvising.com> [1].

Jeffrey M. Samuels

Presiding Panelist

Frederick M. Abbott

Panelist

G. Gervaise Davis III

Panelist

Dated: November 4, 2001

Footnote:

1. The Panel is aware that another Panel,

in a 2-1 decision, recently ordered that the domain names <scholasticnetworks.com>

and <schoolasticnetworks.com> be transferred to Scholastic Inc. See

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

WIPO Case No. D2001-0872. In so holding, the majority

concluded that the domain names in issue were confusingly similar to the SCHOLASTIC

marks. The majority accepted, and seemingly placed great weight on, Complainant's

argument that <scholasticnetworks.com> suggests an information system

operated or endorsed by the Complainant.

Suffice it to say that each case must be decided based on its own unique set

of facts. The majority in the "<scholasticnetworks.com>" case reached

its decision on the issue of confusing similarity based on a determination that

Respondent's use of its domain names would, in effect, create a likelihood of

confusion with the SCHOLASTIC marks. In the case we decide, involving the domain

name "<scholasticadvising.com>", the evidence does not support a

connection with Complainant. There is no evidence, for example, that Complainant

uses any of the SCHOLASTIC marks in connection with providing advisory services

to students.

In D2001-0872, the majority also appeared substantially

influenced by the Respondent's apparent agreement to cease use of one of the

disputed domain names, and failure to act on this agreement. There is no such

issue and no showing of bad faith by the Respondent in the instant case.

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