Pass Guaranteed, Ltd. v. Gaurav Bhagrath
Claim Number: FA1002001305814
Complainant is Pass Guaranteed, Ltd. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Gaurav Bhagrath (“Respondent”), represented by John Di Giacomo,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <passguaranteed.com>, <passguaranteed.net>, <passguaranteed.org >, and <passgauranteed.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 10, 2010.
On February 3, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <passguaranteed.com>, <passguaranteed.net>, <passguaranteed.org >, and <passgauranteed.com> domain names are registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 11, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com by e-mail.
A Response was received on March 11, 2010, that was deemed deficient by the National Arbitration Forum because it was not received in hard copy prior to the Response deadline.
An Additional Submission was received from Complainant on March 15, 2010 and determined to be timely and complete pursuant to Supplemental Rule 7.
On March 22, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
In late 2001, Complainant
conceived of, and committed to investing in, a website headquartered in the
Complainant elected to call his venture Pass-Guaranteed, Ltd. (“Pass-Guaranteed”), and registered the domain name <pass-guaranteed.com> on April 19, 2002 under the name of Complainant’s majority shareholder, Global CC, Ltd. Complainant subsequently registered with the Companies House of the UK’s Department of Business.
At great personal expense of tens of thousands pounds, in early 2002 Complainant began designing and programming the website to which Complainant’s domain <pass-guaranteed.com> now resolves, as well as expending tens of thousands of pounds compiling, printing and marketing Complainant’s Certification Products online using the mark PASS-GUARANTEED.
After completing his website, Complainant invested heavily in online marketing campaigns, including cost-per-click (CPC) advertising, cost-per-impression (CPI) banner advertising, targeted emails, press releases, blogs, message boards, linking campaigns, search engine optimization, printed mailers, affiliate marketing programs, and the like. Online newspaper articles were electronically printed which made use of the PASS-GUARANTEED mark.
Complainant was soon servicing clients across the world, from Great Britain to New Zealand, America, Canada, South Africa, and Australia. Pass-Guaranteed was a commercial success, and grew to employ approximately five individuals, and to sell thousands of its Certification Products monthly. Upon information and belief, Complainant is currently the largest online retailer of IT training certification products in the world. Complainant has generated millions of dollars of revenue marketing is Certification Products across the English speaking world.
Because of Complainant’s substantial contacts in North America, Complainant subsequently filed for trademark protection with both the Canadian Intellectual Property Office (CIPO) and United States Patent and Trademark Office (USPTO).
Complainant’s trademark PASS-GUARANTEED was registered before the USPTO on December 1, 2009 (Registration No. 3717866). Complainant’s Canadian trademark application was approved by the CIPO in October of 2009 (Application No. 1423892).
After Complainant had trademark rights, Respondent registered the confusingly similar domain names that underlie this dispute to compete directly with Complainant using Complainant’s mark PASS-GUARANTEED.
Since it began retailing its Certification Products in early 2002, Complainant has continuously marketed its products internationally using the mark PASS-GUARANTEED.
Complainant has spent tens of thousands of pounds advertising using the Mark in association with its Certification Products. In addition to its capital expenditures, Complainant has spent countless man hours working with customers. Complainant has generated millions of dollars in revenue since it began making use of the Mark.
The Mark PASS-GUARANTEED is Complainant’s primary identifier, and used in all of Complainant’s marketing and commercial activities, from invoices to shipping materials. The USPTO has recognized that PASS-GUARANTEED is not descriptive by granting registration of the Mark.
Complainant has thousands of clients across the world. The Mark PASS-GUARANTEED has become distinctive and well-known in the English speaking world. Individuals and other entities needing IT certification materials have come to recognize Complainant’s Mark as the distinctive identifier that it is. The Mark has become associated in the mind of the purchasing public with the Complainant’s particular online retail business. The Mark is well-known throughout the English-speaking world and associated with Complainant.
Furthermore Complainant had common-law rights in the Mark PASS-GUARANTEED which arose in 2002, because, inter alia, it has been using the Mark in connection with the commercial offering of IT certification products since 2002, and because the Mark is wholly incorporated by Complainant’s trademark before the CIPO and USPTO with first use in commerce dates from 2002.
Respondent Gaurav Bhagrath registered the confusingly similar domains <passguaranteed.net> and <passguaranteed.org> on September 14, 2008, and registered <passgauaranteed.com> on January 22, 2009. Respondent proceeded to finally register the confusingly similar domain name <passguaranteed.com> on March 20, 2009 after Complainant’s trademark rights arose. Each of these domains were registered after Complainant’s trademark applications with the CIPO and USPTO were filed.
Respondent’s registration of the Disputed Domains was an attempt to prevent the Complainant from reflecting its Mark in the Disputed Domains, and from benefiting from the good will and notoriety that Complainant has built into its Mark.
Respondent is generating Google Adsense revenue using the Disputed Domains. Screenshots of the Disputed Domains show that the Disputed Domains resolve only to generic landing pages from which Respondent is deriving CPC revenue at Complainant’s expense. Additionally, Respondent is using the Disputed Domain <passgauranteed.com> to advertise the services of Complainant’s competitors.
Respondent has registered the Disputed Domains <passguaranteed.com>, <passguaranteed.org>, <passgauranteed.com> and <passguaranteed.net> to offer deprive Complainant of the opportunity of reflecting its mark in the Disputed Domains.
After being contacted via phone by Complainant about the Disputed Domains in March of 2009, Respondent offered the Disputed Domains for a price of approximately $100,000 to Complainant, in violation of the Policy.
Respondent has not been commonly known by the Disputed Domains prior to the rise of Complainant’s common law trademark rights. Respondent has not carried on any legitimate business at the Disputed Domains, as Respondent’s Disputed Domains were registered in bad faith with knowledge of Complainant’s rights. Respondent’s use of each of the Disputed Domains is passive.
Furthermore Complainant has not authorized, licensed, or otherwise permitted Respondent to use the Mark or the Disputed Domains.
Respondent registered the Disputed Domains with knowledge that Complainant had common law and registered trademark rights in the Disputed Domains. Respondent registered the Disputed Domains for the purpose of depriving Complainant of use of the Disputed Domains and its Mark online, and benefiting financially from the sale of the Disputed Domains, and from CPC revenue from the Disputed Domains, in violation of Policy ¶ 4(b).
While the Respondent is allegedly domiciled in India, Respondent has registered the Disputed Domains with a US registrar where Complainant has trademark rights.
According to Complainant Respondent has established a pattern of systematically registering domain names which are confusingly similar to the domain names of other online competitors in the IT certification industry. For example, Respondent has recently registered the domain names <pass4side.biz> and <pass4side.us> which are calculated to be confusingly similar to the well-known IT certification specialist at <pass4side.com>. Respondent has further registered a whole series of domain names calculated to be confusingly similar to the well-known website at <pass4sure.com>.
These numerous registrations, which are so confusing similar to Complainant’s domain name and Complainant’s competitors’ domain names, are not coincidental. This shows an intentional attempt by Complainant to misappropriate the good-will and name recognition of other IT certification companies, and is further evidence of bad faith registration.
Complainant contends that the Disputed Domains wholly encompass the Mark PASS-GUARANTEED in which Complainant has registered trademark rights and in which Complainant formerly had common law trademark rights. Confusing similarity is self-manifest.
PASS-GUARANTEED in the dominant textual element in Complainant’s trademark before the CIPO and USPTO, and is the term that has been wholly incorporated by the Disputed Domains.
In the present dispute, the Disputed Domains create the same commercial impression as Complainant’s Mark. The Disputed Domain and Mark are similar in appearance connotation, lacking only the hyphen between the words comprising the Mark.
Complainant finally contends that Respondent has no rights or legitimate interest in the Disputed Domains as Respondent has unlawfully registered the Disputed Domains in bad-faith after Complainant’s trademark rights accrued for purpose of depriving Complainant of use of the Disputed Domains and for the purpose of reselling the Disputed Domains at a later date. Respondent is therefore not making legitimate noncommercial, or fair use of the Disputed Domains pursuant to Policy ¶ 4I(iii).
By using the Disputed Domains, Respondent has additionally intentionally attempted to attract, for commercial gain, Internet users to generic landing pages that generate CPC revenue for Respondent by creating a likelihood of confusion with Complainant’s Mark PASS-GUARANTEED. In short, Respondent has sought to unjustly enrich himself by misappropriating Complainant’s goodwill and creating a likelihood of confusion with Complainant, at the expense of Complainant.
Respondent contends that Complainant’s request to transfer Respondent’s <passguaranteed.com>, <passguaranteed.net>, <passguaranteed.org>, and <passguaranteed.com> domain names must be denied. Respondent’s domain names are not identical or confusingly similar to the Complainant’s alleged mark because Complainant cannot have rights in a generic phrase made up of common terms so as to preclude the entire marketplace from using those terms.
Respondent is a legitimate domainer that is in the business of registering domain names that contain generic phrases made up of common terms. Respondent purchased the domain names at issue in this case in preparation for a bona fide and legitimate future fair use of the domain names that does not mislead consumers as to the source. Despite Complainant’s allegations, Respondent has not made any revenue from the domain names and has not attempted to sell the domain names to the complainant Respondent purchased the domain names without prior notice of Complainant’s alleged rights and from a previous registrant that had used the domain names for numerous years without protest from Complainant. Respondent simply purchased these domain names across all Top Level Domain suffixes to solidify his ownership of these generic terms in preparation for a good faith and legitimate future use. Accordingly, Complainant’s request must be denied.
In its Additional Submission to the Response Complaints emphasizes that Respondent is a competitor of Complainant’s in the IT certification products industry, which fact Respondent is attempting to conceal.
According to Complainant Respondent has registered numerous domain names that are misspellings of, or confusingly similar to, the trade names of well-known IT certification vendors in the industry. The domain names registered by Respondent which consist of only numbers are the numbers of important IT certification examinations. In fact, every domain name Respondent has registered is related to IT certification products, or is a misspelling of a domain name that vends those products (mainly the latter).
Respondent’s primary motivation in registering the Disputed Domains in this proceeding, as well as all of his domains, is to capitalize on, or otherwise take advantage of, Complainant’s rights and notoriety. Thus Respondent is a bad faith registrant of the Disputed Domains.
Complainant further submits an email from Respondent to Complainant, in which he calls Complainant a “fool” for not accepting his offer that Complainant pay him more than $100,000 for the Disputed Domains, and says that because Respondent owns the Disputed Domains, “soon you will be out of business.” This communication further establishes that it was Respondent’s intention in registering the Disputed Domains to interfere with Complainant’s business to the point of putting Complainant out of business, that Respondent registered the Disputed Domains in recognition of the confusingly similarity inherent therein, as well as that Respondent is lying to the Panel is representing that he “did not, prior to this dispute, receive any communication from Complainant indicating that it believed the domain names were confusingly similar to its registered trademark.”
Complainant did not sit on its rights, but rather sent the demand letter to the registrant at the time, as well as to the registrant’s hosting company, which took the offending websites down. Respondent to this action purchased and registered the Disputed Domains shortly thereafter, and subsequently tried to extort more than $100,000 from Complainant, threatening to shut Complainant down using the Disputed Domains if Complainant did not pay the extortion demand.
Complainant repeats that Respondent registered the Disputed Domain <passguaranteed.com> on March 20, 2009, after Complainant applied for trademark protection on February 16, 2009.
In addition to its common law rights, and registered trademark rights in the United States, Complainant now also has registered trademark rights in Canada. The examiners in the CIPO and USPTO subjected Complainant’s mark to rigorous examination, and found it had acquired distinctiveness in relation to Complainant’s services.
Before its CIPO and USPTO trademark registration, Complainant had common law trademark rights in its Mark.
While Respondent submits that Complainant’s Mark is generic or descriptive, both the USPTO and CIPO have granted Complainant trademark rights, and neither authority rejected Complainant’s Mark as being generic or descriptive. All arguments Respondent makes about the alleged generic and/or descriptive nature of the Mark are unsubstantiated by evidence and moot under the Policy. Registration of a mark with the USPTO, or CIPO (and particularly both) is prima facie evidence of validity under the Policy. Panels have recognized for years that a complainant’s holding of a registered mark is sufficient to establish rights under the Policy, and that a respondent’s claim that registration should not have been granted or should be revoked is a matter for the courts or trademark authority of the relevant country.
All of the objective evidence submitted in this case corroborates Complainant’s claim that Respondent is a competitor of Complainant, who knew of Complainant’s rights, trademark, and registered the Disputed Domains in violation of the Policy after becoming aware of Complainant’s rights for the purpose of depriving Complainant of the Disputed Domains and otherwise unlawfully capitalizing on Complainant’s Mark.
The Panel finds that:
1. the Domain Names <passguaranteed.com>, <passguaranteed.net>, <passguaratneed.org> and <passgauranteed.com> are confusingly similar to Complainant’s marks,
2. the Respondent has not established any right or legitimate interest in the Domain Names <passguaranteed.com>, <passguaranteed.net>, <passguaratneed.org> and <passgauranteed.com> and
3. the Respondent has registered and is using the Domain Names <passguaranteed.com>, <passguaranteed.net>, <passguaratneed.org> and <passgauranteed.com> in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Preliminary issue: Deficient Response
Although Respondent has provided a Response that was deficient because a hard copy of the Response was not received before the Response deadline, the Panel decides to consider Respondent’s submission. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). Likewise the Panel has chosen to consider Respondent’s Submission.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant owns a registered trademark for the PASS-GUARANTEED mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,717,866 issued December 1, 2009 and filed February 16, 2009). The Panel finds that Complainant has established rights in the PASS-GUARANTEED mark through its trademark registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
In addition, Complainant argues common law rights in the PASS-GUARANTEED mark pursuant to Policy ¶ 4(a)(i) through its history of use. Complainant provides evidence that it has used the PASS-GUARANTEED mark in connection with offering of computer certification products continuously since 2002. The Panel also finds that Complainant has established common law rights by acquiring sufficient secondary meaning in the PASS-GUARANTEED mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s PASS-GUARANTEED mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Respondent’s disputed domain names contain Complainant’s mark in its entirety, omit a hyphen, and add a generic top-level domain (“gTLD”). Despite Complainant’s argument that the disputed domain names are confusingly similar to Complainant’s mark, the Panel finds that Respondent’s disputed domain names are identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
While Respondent contends that the disputed domain names are comprised of common, descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel is of the view that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Electronic Comm’ns, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corp. v. Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues, and the Panel concurs that Respondent is not commonly known by the disputed domain names. Respondent’s WHOIS information lists Respondent as “Gaurav Bhagrath.” The Panel finds that there is no affirmative evidence demonstrating that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
that Respondent’s disputed
domain names resolve to websites featuring advertisements and links relating to
Complainant’s competitors in the computer certification industry. The
Panel finds that Respondent profits through the generation of click-through
fees from the links to Complainant’s competitors. As a result the Panel is of
the view that Respondent’s use of the disputed domain names is not in connection
with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain name under Policy ¶ 4(c)(iii). See 24 Hour Fitness
USA, Inc. v. 24HourNames.com-Quality Domains For
Complainant alleges that Respondent offered the disputed domain name for sale for $100,000 after Complainant contacted Respondent about the disputed domain names. The Panel finds that this offer to sell for an amount in excess of out-of-pocket costs is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant argues that Respondent’s registration of multiple domain names using Complainant’s alleged mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). The Panel finds that Respondent’s registration of multiple domain names containing Complainant’s PASS-GUARANTEED mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Complainant argues that Respondent’s disputed domain names resolve to websites that promote Complainant’s competitors in the computer certification industry through click-through links and that such an activity clearly disrupts Complainant’s business, as Internet users seeking Complainant’s products will be redirected to Complainant’s competitors. The Panel is of the view that this qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent
has created a likelihood of confusion for commercial gain as to Complainant’s
source and affiliation with the disputed
domain names and the resolving websites.
The Panel is of the view that Respondent is monetarily benefiting
through the receipt of referral fees accrued when Internet users click on the
competitive links. As a result, the Panel finds that this constitutes evidence
that Respondent has registered and used the disputed domain names in bad faith
under Policy ¶ 4(b)(iv). See
Asbury Auto. Group, Inc. v.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <passguaranteed.com >, <passguaranteed.net >, <passguaranteed.org >, < passgauranteed.com> domain names be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda Panelist
Dated: April 5, 2010
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