Certification Trendz, Ltd. v. Jack Mann
Claim Number: FA1010001352982
Complainant is Certification Trendz, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., Washington, D.C., USA. Respondent is Jack Mann (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <testking.us>, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2010; the National Arbitration Forum received payment on October 19, 2010.
On October 20, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <testking.us> domain name is registered with GoDaddy.com, Inc. and that 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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@testking.us. Also on October 25, 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 November 15, 2010.
Complainant filed an Additional Submission on November 19, 2010. It was timely received, complies with Supplemental Rule 7 and was considered by the Panel.
On November 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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
1. Certification Trendz, Ltd. (“Complainant”) is in the business of selling IT certification test preparation materials over the Internet and has been doing so continuously from its primary website at <www.testking.com> since at least January 22, 2002. It registered the mark TEST KING with the U.S. Patent and Trademark Office (USPTO) in December 2001 (Reg. No. 3,630,272) for computer software for use in test preparation in the field of information technology, namely providing interactive test preparation materials and publications. It has also registered that mark in the U.K.
2. Respondent operates a website at <testking.us>, using the TEST KING mark, where he sells practice tests and preparation materials which are designed to be virtually indistinguishable from those marketed and sold by Complainant.
3. Respondent registered the <testking.us> domain name (the “Domain Name”) on November 9, 2007. The website resolving from that name clones the look-and-feel of the website hosted by Complainant, which indicates that Respondent is and at all times has been aware of Complainant’s TEST KING mark.
4. Respondent’s Domain Name is confusingly similar if not identical to Complainant’s TEST KING mark. The omission of a space between the words TEST and KING, and the use of a different top-level domain are insufficient to distinguish the Domain Name from Complainant’s mark.
5. Complainant has never authorized or licensed Respondent to use its TEST KING mark, or the Domain Name.
6. Respondent has no right or legitimate interest in the Domain Name. His use of that name to divert customers and tarnish Complainant’s mark does not confer any right or legitimate interest upon him.
7. Respondent registered and is using the Domain Name in bad faith in that he is intentionally attempting to attract, for commercial gain, Internet users to his <testking.us> website by creating a likelihood of confusion with Complainant’s TEST KING mark as to the source, sponsorship, affiliation and endorsement of his website. He did not register or begin using <testking.us> until more than six years after Complainant began doing business with its TEST KING mark.
B. Respondent
1. Respondent operates a website at <testking.us> for selling PDF format practice questions and answers for IT certification exams and has been doing so since November 2007.
2. Respondent never heard of a company called Certification Trendz Ltd before receiving the Complaint in this matter and is unaware that TEST KING has been registered as a trade or service mark.
3. Respondent has never used the TEST KING mark in business activities.
4. The <testking.us> Domain Name is easily distinguishable from Complainant’s <testking.com> domain name. The two websites use different website templates, colors, design, logos, techniques, methods for product delivery and payment gateway.
5. The products offered on the two websites are likewise distinct. The customer will use Complainant’s products if he desires real exam questions and needs an interactive, single-licensed test engine. The customer will use Respondent’s website if he needs the PDF format practice questions and needs to access the practice questions in multiple PCs without any limit. The two websites are not competitive in the market.
6. Respondent does not disrupt the business of Complainant.
7. Respondent in good faith offers legitimate service and high-quality PDF products.
8. Respondent is making fair use of the Domain Name and does not misleadingly divert customers for commercial gain.
9. Respondent has rights or legitimate interests in the Domain Name.
10. Respondent did not register and is not using the Domain Name in bad faith.
C. Complainant’s Additional Submission
1. Respondent has failed to demonstrate any right or legitimate interest he may have in the Domain Name.
2. Respondent’s website sells the same type of goods (IT certification exams), in the same marketplace (the internet), to the same target consumers, using the same look-and-feel and logo of Complainant’s <testking.com> site. Respondent is competing directly with Complainant, and the Domain Name is in fact confusingly similar to Complainant’s TEST KING mark.
3. The Domain Name is causing actual confusion in the form of diverted customers. Complainant has received multiple complaints from customers who were deceived into purchasing products from <testking.us> when expecting TEST KING products.
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."
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant owns a trademark registration with the USPTO for its TEST KING mark (Reg. No. 3,630,272 filed September 2, 2008; issued June 2, 2009). Complainant further owns a trademark registration with the United Kingdom Intellectual Property Office (“UKIPO”) for the TESTKING mark (Reg. No. 2,416,636 issued October 20, 2006). See, Complaint Annexes B & C. Thus, Complainant has established rights in its TESTKING mark under Policy ¶ 4(a)(i) as of October 20, 2006 through its trademark registrations with the UKIPO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also DatingDirect.com Limited v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004) (finding that the panel recognizes the distinctive nature of the complainant’s DATINGDIRECT.COM mark through registration with the United Kingdom Patent Office).
The <testking.us> Domain Name is identical to Complainant’s TEST KING mark for the purposes of Policy ¶ 4(a)(i) because it contains Complainant’s entire mark, differing only by deleting the space between the two words and adding the ccTLD “.us.” This is insufficient to distinguish it from Complainant’s mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [UDRP] Policy”).
Based upon the foregoing, the Panel finds that the Domain Name is identical to the TEST KING mark, in which the Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interest. 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 asserts and the evidence demonstrates that Respondent is not authorized or licensed by Complainant to use either its TEST KING mark or the Domain Name. Complainant further asserts and the evidence demonstrates that Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. Respondent’s use of the Domain Name, which incorporates Complainant’s mark, to divert customers to his website does not confer upon Respondent any right or legitimate interest in respect of the Domain Name. Complainant has thus established a prima facie case that Respondent lacks rights and legitimate interest in the Domain Name under Policy ¶ 4(a)(ii), and the burden accordingly shifts to Respondent to show that it does have rights or legitimate interest.
Respondent failed to offer any evidence that he is commonly known by the Domain Name or any variation of it. Indeed, he affirmatively states that he has never transacted business under the name TEST KING. Respondent’s only claim to some right or legitimate interest in the Domain Name is the fact that he has been using it in connection with his sales of IT certification test preparation materials since 2007.
It is well settled that Respondent’s use of the Domain Name, which is legally identical to Complainant’s mark, to market and sell competing goods is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Respondent is using the Domain Name to sell goods and services which compete with Complainant’s goods and services to Internet users. Respondent claims that the distinction between his PDF format and Complainant’s interactive products is sufficient to defeat any claim of competition between them. As Complainant points out, however, Respondent’s website sells the same type of goods (IT certification exams), in the same marketplace (the internet), to the same target consumers, using the same look-and-feel and logo of Complainant’s <testking.com> site. The Panel concludes that Respondent’s website competes directly with Complainant, and that his use of the Domain Name in connection with this enterprise is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Further, the Panel notes that the appearance of Respondent’s website is very similar to Complainant’s official website, using generally the design scheme and the same colors, even to the same shades of blue and orange, as Complainant’s. Respondent is using the Domain Name knowingly and intentionally to attract Internet users to his website for commercial gain by creating a likelihood of confusion between his website and Complainant’s TEST KING mark and Complainant’s website. This is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
Accordingly, the Panel finds and determines that Respondent has registered and is using the Domain Name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief sought shall be GRANTED.
Accordingly, it is Ordered that the <testking.us> domain name be TRANSFERRED from Respondent to Claimant.
Charles A. Kuechenmeister
December 1, 2010
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