Pass Guaranteed, Ltd. v. Rampe Purda
Claim Number: FA1005001323713
Complainant is Pass
Guaranteed, Ltd. (“Complainant”), represented by Steven L.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pass-gauranteed.com>, registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2010. The Complaint was submitted in both Finnish and English.
On May 12, 2010, HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM confirmed by e-mail to the National Arbitration Forum that the <pass-gauranteed.com> domain name is registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM and that Respondent is the current registrant of the name. HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM has verified that Respondent is bound by the HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM 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 May 27, 2010, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of June 16, 2010 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 firstname.lastname@example.org. Also on May 27, 2010, the Finnish language Written Notice of the Complaint, notifying Respondent of the email 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.
On June 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pass-gauranteed.com> domain name is confusingly similar to Complainant’s PASS-GUARANTEED mark.
2. Respondent does not have any rights or legitimate interests in the <pass-gauranteed.com> domain name.
3. Respondent registered and used the <pass-gauranteed.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pass Guaranteed, Ltd.,
is an online retailer of informational services, study aids and training
certification products that relate to standardized IT examinations administered
across the English speaking and
Respondent, Rampe Purda, registered the <pass-gauranteed.com> domain name on June 22, 2006. The disputed domain name resolves to a generic web page with a listing of pay-per-click links to third-party websites in competition with Complainant.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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:
(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.
Complainant asserts common law rights in the PASS-GUARANTEED mark dating back to 2002. The Panel finds that a trademark registration for the mark is not necessary for the purposes of Policy ¶ 4(a)(i) when there is evidence of continuous use and the establishment of secondary meaning that show common law rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant argues that it has established common law rights in the PASS-GUARANTEED mark by virtue of its continuous use and the subsequent establishment of secondary meaning. Complainant asserts that it first began using the PASS-GUARANTEED mark in connection with the commercial offering of IT certification products in 2002. Complainant has a trademark registration with the United States Patent and Trademark Office for the PASS-GUARANTEE mark that indicates a first use in commerce date of April 19, 2002. The domain name <pass-guaranteed.com> was registered for use in connection with Complainant’s business on April 19, 2002. Complainant has expended tens of thousands of pounds compiling, printing, and marketing Complainant’s products using the PASS-GUARANTEED mark. The mark has especially been heavily used in online marketing campaigns, including pay-per-click advertising, banner advertising, targeted emails, press releases, blogs, message boards, linking campaigns, search engine optimization, printed mailers, affiliate marketing programs, etc. Complainant has clients across the world that recognize Complainant’s products under its PASS-GUARANTEED mark, and Complainant sells thousands of such products monthly. The Panel finds that Complainant has presented adequate evidence of its continuous use of the PASS-GUARANTEED mark since 2002 and the establishment of secondary meaning in the mark to support a finding of Complainant’s common law rights in the mark dating back to 2002. See 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); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Complainant alleges that Respondent’s <pass-gauranteed.com> domain name is confusingly similar to Complainant’s PASS-GUARANTEED mark because the disputed domain name merely misspells the mark by transposing the letters “a” and “u” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a minor misspelling likely resulting from a typographical error does not differentiate the disputed domain name from Complainant’s mark sufficiently to eliminate confusing similarity. See Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark); see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark). The Panel also finds that the addition of a gTLD has no effect on preventing confusing similarity. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <pass-gauranteed.com> domain name is confusingly similar to Complainant’s PASS-GUARANTEED mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
The requirements of Policy ¶ 4(a)(ii) dictate that Complainant has the initial responsibility of making a prima facie case against Respondent. When, as here, the Panel finds that a sufficient prima facie case has been established, the burden is transferred to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. Respondent has failed to respond to the Complaint, however, indicating a lack of rights and legitimate interests. The Panel therefore finds Complainant’s allegations against Respondent to be true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). In the interest of making a complete determination on Respondent’s rights and legitimate interests, however, the Panel decides to analyze the evidence in the record in light of the Policy ¶ 4(c) factors.
Complainant alleges that Respondent is not commonly known by the <pass-gauranteed.com> domain name and has not operated any legitimate business under the disputed domain name. The WHOIS information for the Panel does not reflect that Respondent is commonly known by the disputed domain name, which the Panel finds to be evidence against Respondent’s rights and legitimate interests according to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant contends that Respondent intentionally registered the <pass-gauranteed.com> domain name to take advantage of the recognition of Complainant’s mark and to boost Respondent’s pay-per-click revenue by diverting Complainant’s intending customers to Respondent’s website. Complainant argues that Respondent offers a series of links to products Complainant offers and to Complainant’s competitors on the website resolving from the disputed domain name. The Panel finds that a listing of pay-per-click links does not meet the requirements of a bona fide offering of goods or services or a legitimate noncommercial or fair use as required by Policy ¶¶ 4(c)(i) or 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent’s <pass-gaurantee.com> domain name differs only slightly from Complainant’s mark, transposing the letters “a” and “u” in the word “guarantee.” This minimal level of difference between the disputed domain name and Complainant’s mark likely results from an unintentional typographical error, indicating that Respondent’s registration of this disputed domain name is typosquatting. The Panel finds that typosquatting supports a finding that Respondent lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent has listed the <pass-gauranteed.com> domain name for sale on Sedo.com. The Panel finds that such an offer to sell demonstrates bad faith registration and use under Policy ¶ 4(b)(i). See 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).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant asserts that
domain name primarily provides advertising for Complainant’s competitors in the
form of pay-per-click links that generate ad revenue for Respondent. Complainant argues that Respondent’s display
of such a list of links at a website appropriating Complainant’s mark disrupts
Complainant’s business because Internet users initially seeking Complainant’s
products may end up trying a competing product instead. The Panel finds that by choosing a domain
name that is a close variation of Complainant’s mark and using it in connection
with a website promoting Complainant’s competitors, Respondent has registered
and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also
Complainant argues that Respondent’s use of Complainant’s mark in the <pass-gauranteed.com> domain name was intended to attract Complainant’s customers seeking Complainant’s online presence. The advertisements featured by Respondent on the resolving website create profit for Respondent when clicked, so higher traffic to the website likely correlates with higher profit. As the links displayed on the resolving website offer many of the same test preparation products as Complainant, Internet users could become confused about the association between the disputed domain name and Complainant and not realize that they are being directed to a competitor’s site. The Panel finds that Respondent’s use of the disputed domain name shows an intent to attract and confuse Internet users for Respondent’s own commercial gain, revealing bad faith registration and use according to Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel has previously concluded that Respondent has engaged in typosquatting in registering the confusingly similar <pass-gaurantee.com> domain name. The Panel finds that typosquatting is evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r email@example.com 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <pass-gauranteed.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 30, 2010
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