Thank you for taking the time to consider our response. I want to bring into your attention that our company Unemployed Professors Inc. has three professors: James Miller, Rowley Smith, and Jackie Rowland. None of us is employed, and thus, the reasons we called ourselves unemployed professors. Basically, it means that we are not employed in any institution.
We never thought that calling ourselves unemployed professors would raise any trademark/service mark infringement issue. Since we’re based in Australia, before buying the domain name unemployedprofessors.org, we applied for the trademark registration. Still, it was denied since we were told that the term ‘Unemployed Professors’ is a descriptive phrase that describes people’s job status in society and thus lacks distinctiveness.
About our business
We offer online tutoring coupled with academic writing consultations. We are mainly based in Australia, and almost all of our clients come from this region since we understand the academic and business programs in the region. For the last year, we have seen our customer base increased due to vigorous marketing, mainly involving the distribution of fliers and leaflets in higher learning institutions and business forums. From our data analysis, 80% of our customers are mainly obtained through this method. Internet searches contain 3% of our clients, which can be proved by website traffic. Before the domain being locked, we had around 3,000 customers. It is also important to note that we don’t offer our services to clients outside Australia.
Reasons why we registered unemployedprofessors.org.
- The three of us, James Miller, Rowley Smith, and Jackie Rowland, are all professors but not employed in any institution. Therefore, the term unemployed professors Inc. identifies with our employment (job) status.
- Trademarksare territorial and must be filed in each country where protection is sought. We searched on the Internet if the term Unemployed professors have been registered in Australia, and we didn’t find any trademark registration. To our understanding, it’s not registered in any country.
- The term Unemployed Professors is a descriptive phrase that does not refer to a specific service or product but rather a group of people.
Response to the Dispute
The complaint stated that we have a tutor with the name deueuzienne, which is not true. As previously stated, our company consists of three of us, and the other seven tutors, all of them are from Australia.
Besides, we recently checked their logo, and it’s not even similar to our logo, and therefore, this is a major mark for clients to distinguish the complaint’s site with that of ours.
Our services are mainly based in Australia, and the complaint has no trademark in Australia. Before buying the domain, we researched ipaustralia.gov.au, and the name is not registered. Therefore, we strongly believe we have not violated the trademark/service mark since, in our territorial, there’s no registered name under the name unemployed professors. Besides, the name is not legally registered (service mark) in our territory.
In response to the complaint that the domain name is identical or confusingly similar, it is well established that the generic Top-Level Domain (“gTLD”), in this case, “.org,” does not affect the Disputed Domain Name to determine whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429
As claimed by the complainant, we don’t offer the same service since we don’t sell papers to students, as stated by the complaint, but we offer online tutoring which includes academic writing consultations, where we get paid depending on the duration of the consultation and the subject. This is clearly shown in the calculator on our home page. For the last six months, we have focused on promoting our business by printing fliers, as shown below, and physically distributing them to learning institutions (offline). Actually, 90% of our customers are basically offline, and thus, we have no intention of stealing customers from the complainants. Besides, we only serve Australian clients, and we have no intention to market ourselves in Canada since their education system is different from the Australian system.
In response to being ranked number 2 and 4 in the Bing Search engine, we have no control over it since having very low traffic competition. Therefore, any website that publishes an article with the term Unemployed Professors, chances are that it will quickly rank high in Bing. Moreover, several other companies ranked on the first page for the term Unemployed Professors such as https://acemyhomework.com/, https://essaysrescue.com/, among others. The term unemployed professors contain descriptive words. It isn’t easy to control people not to use it, since almost every region has professors who are not employed for one reason or another. Therefore, it’s not possible to shut down every website with the term unemployed professors since this is a common name that describes a certain group of people in society. Therefore, I can’t entirely agree that being ranked for the term unemployed professors is a violation of a service mark since all over the world, various professors are not employed and offering academic writing consultation as the source of their livelihood.
The three of us are fully qualified professors from respected professors, but we are not employed in any institution, and we thought of starting to offer academic support to students and other interested parties at a fee. Mainly we offer tutorial services and academic writing consultations. We have no intention to solstice the complainant’s clients as our targets mainly focused on Australian, and to my understanding, the complaint’s business mainly focuses on Canada.
My resolution
Since we have no interest in the complaint’s customers, we are willing to exclude our internet searches not to appear in Canada. This can be implemented in both Bing and Google search engines. This is because I have never sought to misdirect or siphon business away from the Claimant, nor confuse his customers, nor have a confusingly similar business.
Also, I oppose the transfer of the domain names since our domain contains our personal information, tutor’s information, bank details, and the client’s details, which they submit when making payment. Therefore, it can be misused by the complaint’s considering the high cases of internet Fraud in the modern world. We always guarantee our tutors and the clients that their personal information and bank details are secure and can never be shared with a third party. For instance, when the clients make the payments, they provide to us their credit/debit card information, which includes the card number, the expiration date, and the CVC. Such details are enough for one to make unauthorized purchases or withdraws without the cardholder’s control. This is well described in the fraud magazine (https://www.fraud-magazine.com/). Therefore, transferring the domain to another person means that you have shared other people’s financial details to a third party.