LSAC.com UDRP: Shocking outcome for veteran domain investor

Law School Admission Council, Inc. v. True Magic LLC

Claim Number: FA2501002137886

PARTIES

Complainant is Law School Admission Council, Inc. (“Complainant”), represented by Wendy K. Marsh of Nyemaster Goode, P.C., Iowa, USA. Respondent is True Magic LLC (“Respondent”), Puerto Rico, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is lsac.com, (the “Domain Name”) registered with Register.com, Inc.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Dawn Osborne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 30, 2025; Forum received payment on January 30, 2025.

On January 30, 2025, Register.com, Inc. confirmed by e-mail to Forum that the lsac.com Domain Name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 31, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lsac.com. Also on January 31, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

On February 21, 2025 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is the owner of a number of registered marks containing LSAC in the USA for examination services including LSAC (device mark) with first use recorded as 1972. The Complainant also owns common law rights in the LSAC mark for its services back to that date.

The Domain Name registered in 1996 is identical to the Complainant’s mark adding only the gTLD .com which does not distinguish the Domain Name from the Complainant’s mark.

The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.

The Domain Name has been used to offer malware.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The Complainant is the owner of a number of registered marks containing LSAC in the USA for examination services including LSAC (device mark) with first use recorded as 1972. The Complainant also owns common law rights in that mark back to that date.

The Domain Name registered in 1996 has been used to offer malware.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

The Domain Name consists of the distinctive part of the Complainant’s LSAC (device) mark (which is registered in the USA for examination services with the first use recorded as 1972 and for which the Complainant also owns common law rights) merely adding the gTLD .com.

The gTLD .com does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant’s red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

Accordingly, the Panel holds that the Domain Name is identical for the purpose of the Policy to a mark in which the Complainant has rights.

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

Rights or Legitimate Interests

The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

Use to offer malware is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Snap Inc. v. Domain Admin/ Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”).

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

Registration and Use in Bad Faith

The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name consisting of the Complainant’s mark and a gTLD. The Complainant’s prior mark has a reputation for examination services and is distinctive and the Panelist is entitled to draw adverse inferences from the Respondent’s failure to respond to the Complainant’s allegations.

Offering malware via a domain name containing a complainant’s mark is bad faith under the Policy. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads .. illustrates its bad faith in the registration and use of those domain names.”).

As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Para 4(b)(iii) and (iv).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the lsac.com domain name be TRANSFERRED from Respondent to Complainant.

Dawn Osborne, Panelist

Dated: February 21, 2025