Pass Guaranteed, Ltd. v. Gaurav Bhagrath
Claim Number: FA1002001305814
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@passguaranteed.com,
postmaster@passguaranteed.net,
postmaster@passguaranteed.org, postmaster@passgauranteed.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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
DISCUSSION
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.”).
Complainant argues
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.
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 <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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