Certification Trendz, Ltd. v. NA / NA testkingword.com
Claim Number: FA1007001334352
PARTIES
Complainant is Certification Trendz, Ltd. (“Complainant”), represented by Robert A. Auchter, of McKool
Smith, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <testkingworld.com>, registered with eNom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2010.
On July 12, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <testkingworld.com> domain name is registered with eNom, Inc. and that the Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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 postmaster@testkingworld.com by e-mail. Also on July 16, 2010, the 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.
A timely Response was received and determined to be complete on August 12, 2010.
Complainant’s Additional Submission was received on August 16, 2010 and is in compliance with Supplemental Rule 7.
On
September 24th 2010, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel,
the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant contends that:
- It is in the business of selling IT certification test prep materials over the Internet, and has been doing so from its primary website at www.testking.com since at least January 22, 2002.
- The testking.com website and the TEST KING® mark are well known to computer software certification examination organizations and to purchasers of computer software certification examination preparation materials throughout the world
-
It registered the mark in both the
- Respondent operates a website at <testkingworld.com> where they sell practice tests and preparation materials using the TEST KING® mark which are designed to be virtually indistinguishable to the consumer from those marketed and sold by the Complainant
- The disputed domain name is confusingly similar to the Complainant’s TEST KING® trademark.
- Respondent registered the disputed domain in August of 2005—nearly five years after Complainant’s first registered its <testking.com> domain.
- A review of Internet Archive records reflects that Respondents have registered the <testkingworld.com> with full awareness of the Complainant’s testking.com website and TEST KING® mark as, the Internet Archive’s first archived entry for the disputed domain name on December 21, 2005 shows that Respondent’s first published a site at this domain by cloning the Complainant’s testking.com site that had been published by the Complainant by at least July 24, 2005.
- Respondent is actively engaging in copying the Complainant’s TEST KING® mark in order to capitalize on its goodwill with full awareness that Respondent does not have a legitimate interest in the use of the mark.
- Respondent’s bad-faith registration of <testkingworld.com> also has caused and continues to cause confusion in the form of misdirected traffic and customers who were tricked into purchasing Respondent’s products when expecting Complainant’s products.
B. Respondent
By its Response, the Respondent contends that:
- It has been doing business as www.testkingworld.com from last 5 years i.e. from
December 2005 as it sells IT Training Material to improve the knowledge about core concepts of IT Operations and industrial automation.
- The disputed domain name has been registered at December 12, 2005 and it is continuously in operation with the satisfaction of thousands of IT professionals.
- The Complainant’s TEST KING trade mark was actually registered on Jun 02, 2009 and the disputed domain name was registered in December 2005, 4 years before the trade mark was registered.
- The Respondent www.testkingworld.com was unaware of the registration of Complainant’s TEST KING trade mark because it was registered in late 2009.
- Complainant has no right to claim hundreds of domain names that uses the generic terms.
- Respondent’s website under the disputed domain name is an independent website that is much popular due to its services, it has top ranking at Google.com and the Complainant want to take it down or want to take its ownership to use it for his/her own interests.
- It is not using bad faith of Complainant’s trademark because; it is already top ranking website.
C. Additional Submissions
By
its timely submitted additional submission, the Complainant asserts that:
- Respondent was aware of the Complainant’s use of the TEST KING® Mark in Commerce Because Respondent’s testkingworld.com website was copied from Complainant’s testking.com website three years after Complainant first used the TEST KING® Mark in Commerce
- As registered on Complainant’s U.S. Trademark, Complainant’s date of first use is 2002, giving complainant superior rights to the TEST KING®Mark.
- comparative search rankings are irrelevant to determining legitimate interests in a domain or registration in bad faith.
- Respondent’s false and misleading WHOIS contact information, is Further Evidence of Bad Faith.
- The disputed domain name is confusingly similar with the Complainant’s trademark.
FINDINGS
- The Panel finds that the Respondent registered the disputed domain name in order to benefit from the Complainant’s name in IT business. Its bad faith is supported also by misleading WHOIS contact information..
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.”
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.
Preliminary Issue: Identification of Respondent
In the Complaint, the Complainant identifies Respondent as
NA / NA testkingword.com. Complainant
asserts that Respondent is located in
NA / NA testkingword.com
100-J weldrin suite
Vancouver, P 54555
CA
The Registrar verification performed by the Forum on July 12, 2010 returned the same results as to the identity of the Respondent as indicated in the Complaint.
However, in the Response, Respondent identifies itself as
ETECHBIZ LTD., TESTKINGWORLD.COM.
Respondent asserts it resides in
ETECHBIZ LTD., TESTKINGWORLD.COM
16 Shearway Business Park
Folkestone
CT19 4RH
In Complainant’s Additional Submission, Complainant notes that Respondent has responded with different contact information. Complainant asserts that Respondent has changed the WHOIS information to reflect further different contact information:
In Complainant’s Additional Submission, Complainant contends that Respondent is attempting to mislead the Panel and Complainant with incorrect and false contact information.
The Panel decided to identify the Respondent as party to this procedure with the names and the addresses indicated by both the Complainant and the Respondent as follows: NA / NA testkingword.com (“Respondent”) Canada self identified by the Response as Etechbiz Ltd, Testking world.com, 16 Shearway, Business Park, Folkestone KENT, CT 19 4RH.
Complainant asserts it holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TEST KING mark (Reg. No. 3,630,272 filed September 2, 2008; issued June 2, 2009). Complainant also provides evidence of a trademark registration with the United Kingdom Intellectual Property Office (“UKIPO”) for its TEST KING mark (Reg. No. 2,416,636 filed March 15, 2006; registered October 20, 2006). The Panel finds that Complainant has established rights in its TEST KING mark dating back to March 15, 2006 under Policy ¶ 4(a)(i) due to its trademark registrations. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).
In addition in the Complainant’s Additional Submission,
Complainant asserts rights in its TEST KING mark
beginning in January 22, 2002.
Complainant provides together with the Complainant its USPTO trademark
registration, which lists January 22, 2002 as the first use date. Complainant contends that it has sold IT
certification test prep materials online since January 22, 2002. Complainant registered its
<testking.com> domain name in December of 2001 in order to sell its IT
certification test prep materials.
Complainant claims that it is well known to computer software
certification examination organizations.
Complainant alleges that its TEST KING mark is
associated with exam preparation materials in the area of information
technology. The Panel finds that
Complainant has established also common law rights in its TEST KING mark dating
back to January 22, 2002 as Complainant’s mark has developed secondary meaning
due to Complainant’s continuous and extensive use of the TEST KING mark under
Policy ¶ 4(a)(i).
See Jerry Damson, Inc. v.
Complainant argues that Respondent’s <testkingworld.com> domain name is confusingly similar to Complainant’s TEST KING mark. Complainant asserts that the disputed domain name contains Complainant’s entire mark after removing the spaces separating the terms of the mark and adds the generic term “world” and the generic top-level domain (“gTLD”) “.com.” Previous panels have held that the removal of a space, the addition of a generic term, and the addition of a gTLD fail to sufficiently distinguish a disputed domain name from a complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Consequently, the Panel concludes that Respondent’s <testkingworld.com> domain name is confusingly similar to Complainant’s TEST KING mark pursuant to Policy ¶ 4(a)(i).
While Respondent argues that its registration of the <testkingworld.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds 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 name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Respondent contends that the disputed domain name is comprised of common and generic terms and thus cannot be deemed confusingly similar to Complainant’s mark. However, the Panel considers that this argument is not applicable under Policy ¶ 4(a)(i).
The Complainant must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and then the burden
shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <testkingworld.com> domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panels determined that a respondent is not commonly known by a disputed domain name if the complainant asserts that it did not authorize the respondent to use the complainant’s mark, the WHOIS information did not indicate that the respondent was commonly known by the disputed domain name, and the respondent failed to provide evidence demonstrating that it was commonly known by the disputed domain name. Complainant asserts that Respondent is not a licensee of Complainant and that Complainant has not authorized Respondent to use its TEST KING mark in any manner. The Panel finds that according to the WHOIS information a name - testkingword.com -reassembling the disputed domain name<testkingworld.com> is indicated. Moreover the Respondent identifies itself in its Response with the name Etechbiz Ltd, Testking world.com. Nevertheless, the Panel notes that the Respondent does not bring any evidence in this sense. Considering this situation and, the Panel determines that Respondent is not commonly known by the disputed domain name in the absence of further evidence supporting Respondent. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Therefore, the Panel holds that Respondent is not commonly known by the <testkingworld.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is attempting to use the <testkingworld.com> domain name to pass itself off as Complainant. Complainant claims that the website resolving from the disputed domain name is nearly identical to Complainant’s website, resolving from its <testking.com> domain name. Complainant argues that Respondent uses this website to offer practice tests and preparation materials under Complainant’s TEST KING mark that directly compete with Complainant’s practice tests and preparation materials. The Panel concludes that Respondent’s attempt to pass itself off as Complainant in order to sell competing products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Respondent argues that
the terms of the <testkingworld.com> domain name is common and generic, and therefore, Complainant does not have an
exclusive monopoly on the terms on the Internet. The Panel agrees with
Respondent that disputed domain name replicates with addition of word “world”
the Complainant’s USPTO registered trademark and the Panel does not consider
necessary to analyze the strength of this trademark in this proceeding.
Consequently, the Panel concludes that the Complainant has proven the second element pursuant to Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is using the disputed domain name to operate a website that offers to sell practice tests and preparation materials that compete with Complainant’s test products. Previous panels have found that a respondent’s use of a confusingly similar disputed domain name to resolve to a website that offers to sell products that compete with a complainant’s products is evidence of bad faith. Based on past precedent, the Panel determines that Respondent’s use of the <testkingworld.com> domain name constitutes bad faith registration and use 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 Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).
Complainant argues that Respondent is attempting to pass itself off as Complainant in order to sell products that compete with Complainant’s products. Due to Respondent’s use of a confusingly similar disputed domain name and Respondent’s use of a website that is nearly identical to Complainant’s website, Complainant claims that Internet users may become confused as to Complainant’s affiliation with the disputed domain name, resolving website, and featured products. The Panel finds that Respondent is attempting to commercially benefit from Internet users’ confusion, and concludes that Respondent registered and uses the <testkingworld.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
In Complainant’s Additional Submission, Complainant responds to Respondent’s predating argument by arguing common law rights dating back to January 22, 2002. Complainant argues that Respondent registered the <testkingworld.com> domain name on August 10, 2005. Complainant contends that Respondent’s registration of the disputed domain name does not predate Complainant’s rights in its TEST KING mark. Moreover, Complainant contends that when Respondent registered the disputed domain name Respondent immediately copied Complainant’s official website. Complainant asserts that it is impossible for Respondent’s registration of the disputed domain name to predate Complainant’s rights in the mark when Respondent copied Complainant’s website featuring Complainant’s TEST KING mark and its <testking.com> domain name. In this sense, the Panel finds that Respondent’s registration of the trademark does not predate Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Panel also agrees that Respondent’s false and misleading WHOIS contact information, is Further Evidence of Bad Faith.
Consequently, the Panel concludes that the Complainant has proven the third element pursuant to Policy ¶ 4(a)(iii).
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 <testkingworld.com> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: September 8, 2010
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