Certification Trendz, Ltd. v. Sunny Ahmed / TestKing
Claim Number: FA1008001343930
Complainant is Certification Trendz, Ltd. (“Complainant”), represented by Robert A. Auchter, of McKool Smith, P.C., Washington, D.C., USA. Respondent is Sunny Ahmed / TestKing (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <testking.biz>, registered with Onlinenic, Inc. d/b/a China-Channel.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2010.
On August 30, 2010, Onlinenic, Inc. d/b/a China-Channel.com confirmed by e-mail to the National Arbitration Forum that the <testking.biz> domain name is registered with Onlinenic, Inc. d/b/a China-Channel.com and that Respondent is the current registrant of the name. Onlinenic, Inc. d/b/a China-Channel.com has verified that Respondent is bound by the Onlinenic, Inc. d/b/a China-Channel.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 August 31, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@testking.biz by e-mail. Also on August 31, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <testking.biz> domain name is identical to Complainant’s TEST KING mark.
2. Respondent does not have any rights or legitimate interests in the <testking.biz> domain name.
3. Respondent registered and used the <testking.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Certification Trendz, Ltd., sells Internet Technology (“IT”) certification test preparation materials via the Internet through its official <testking.com> domain name. Complainant has been conducting its business continuously in this manner since January 22, 2002. Since 2002 Complainant has also acquired trademark registrations for its TEST KING mark through the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,630,272 filed September 2, 2008; issued June 2, 2009) and the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,416,636 filed March 15, 2006; issued October 2006).
Respondent, Sunny Ahmed / TestKing, registered the <testking.biz> domain name on September 15, 2004. Respondent’s disputed domain name resolves to a website that mimics Complainant’s official website.
Paragraph 15(a) of 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."
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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 has submitted evidence to show that it owns trademark registrations with the USPTO (Reg. No. 3,630,272 filed September 2, 2008; issued June 2, 2009) and UKIPO (Reg. No. 2,416,636 filed March 15, 2006; issued October 2006) for its TEST KING mark. However, the Panel notes that the trademark registrations of 2009 and 2006, respectively, are predated by Respondent’s registration of the disputed domain name on September 15, 2004. Previous panels have found that a trademark registration is not necessary for a complainant to establish rights in its mark under Policy ¶ 4(a)(i) so long as complainant can establish common law rights in its mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); 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 contends that it registered its official <testking.com> domain name in December 2001 in preparation to begin its online business. Further, Complainant states that it began its online IT test preparation materials business January 22, 2002. Complainant goes on to allege that since 2002 it has continuously maintained and improved upon its business. Complainant then registered its TEST KING mark with the UKIPO and USPTO noting on its application for its mark a first use in commerce of January 22, 2002. Therefore, the Panel finds that Complainant has produced sufficient evidence to establish common law rights in its TEST KING mark beginning in 2002 predating Respondent’s registration of the disputed domain name. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21, 2004) (finding that the complainant’s listing of first use of the BOB JONES UNIVERSITY mark on its USPTO registration information establishes that the complainant had used the mark continuously and extensively since the time of first use, thereby establishing rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that the <testking.biz> domain name is identical to its TEST KING mark. It is well settled that simply removing the space between the terms of a mark and adding a generic top-level domain (“gTLD”) such as “.biz” is not significant in determining whether the domain name is identical to Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark). The Panel agrees and finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have rights and legitimate interests in the <testking.biz> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <testking.biz> domain name. Complainant alleges that Respondent is not authorized or licensed to use Complainant’s TEST KING mark. The WHOIS information identifies the domain name registrant as “Sunny Ahmed c/o Testking,” which Complainant contends is not similar to Respondent’s <testking.biz> domain name. Respondent has failed to respond to these allegations and has failed to present evidence that would suggest that Respondent is commonly known by the disputed domain name. Without evidence to the contrary, the Panel finds that Complainant’s assertions combined with the WHOIS information indicates that Respondent is not commonly known by the <testking.biz> domain name pursuant to Policy ¶ 4(c)(ii). 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”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Further, Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Complainant contends that Respondent’s disputed domain name resolves to a website that is nearly identical to an archived version of Complainant’s official <testking.com> domain name. Complainant alleges that Respondent is attempting to pass itself off as Complainant by using this misleading and nearly identical webpage for commercial gain, and that such use is evidence that Respondent lacks rights and legitimate interests in the <testking.biz> domain name. The Panel agrees and finds that Respondent’s use of the disputed domain name to maintain a website that is nearly identical to an older version of Complainant’s official website is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See American 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); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has created a likelihood of confusion as to the source, sponsorship, and affiliation of the website that resolves from the disputed domain name in order to profit from the confusion caused to Internet users. Complainant argues that Respondent is using the identical domain name to attract Internet users to Respondent’s website in an effort to trick those users into making purchases through Respondent’s nearly identical version of Complainant’s official website. The Panel finds that such use is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Further, Respondent’s disputed domain name resolves to a website that is nearly identical to an archived version of Complainant’s official <testking.com> website. Complainant contends that Respondent is attempting to pass itself off as Complainant and that such activity is further evidence of bad faith. The Panel agrees and finds that Respondent’s attempt to pass itself off as Complainant by using a nearly identical version of Complainant’s official website is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts . . . that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <testking.biz> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 8, 2010
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