Certification Trendz, Ltd. v. Sana Ullah
Claim Number: FA1109001408223
Complainant is Certification Trendz, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., Washington, D.C., USA. Respondent is Sana Ullah (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <testkingworld.net>, registered with Wild West Domains, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2011; the National Arbitration Forum received payment on September 20, 2011.
On September 21, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <testkingworld.net> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2011 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.net. Also on September 22, 2011, 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.
Respondent requested an extension of fifteen days for the filing of its Response, which was granted on October 10, 2011. Respondent, however, failed to meet this extended deadline and did not submit a Response.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <testkingworld.net> domain name is confusingly similar to Complainant’s TESTKING mark.
2. Respondent does not have any rights or legitimate interests in the <testkingworld.net> domain name.
3. Respondent registered and used the <testkingworld.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Certification Trendz, Ltd., has sold and continues to sell IT certification test preparation materials over the Internet from its website at the <testking.com> domain name since January 2002. Complainant owns trademark registrations for its TESTKING and related marks with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,416,636 registered October 20, 2006) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,630,272 registered June 2, 2009).
Respondent, Sana Ullah, registered the <testkingworld.net> domain name on July 25, 2010. The disputed domain name resolves to a commercial website selling practice tests and preparation materials, using the TESTKING mark, which are designed to be indistinguishable from those sold by Complainant.
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 registered its TESTKING mark with the UKIPO (Reg. No. 2,416,636 registered October 20, 2006) and the USPTO (Reg. No. 3,630,272 registered June 2, 2009). The Panel finds that these trademark registrations, despite not being in Respondent’s listed country of Pakistan, are nevertheless sufficient to prove Complainant’s rights in the TESTKING pursuant to Policy ¶ 4(a)(i). See Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (finding that the complainant’s timely registration with the USPTO and “subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s <testkingworld.net> domain name is confusingly similar to Complainant’s TESTKING mark because the disputed domain name merely combines the mark with the generic term “world” and the generic top-level domain (“gTLD”) “.net.” Past panels have previously established that neither a generic term nor a gTLD create a domain name distinct from a mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). In line with these prior decisions, the Panel here concludes that Respondent’s <testkingworld.net> domain name is confusingly similar to Complainant’s TESTKING mark according to Policy ¶ 4(a)(i).
The Panel determines that Complainant has proven Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name. The Panel still elects to consider the evidence presented against the Policy ¶ 4(c) factors, however, in order to make an independent determination on Respondent’s rights and legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant asserts that Respondent is not a licensee of Complainant and that Complainant has not authorized Respondent to use the TESTKING mark in any way. The Panel finds that the WHOIS information for the <testkingworld.net> domain name identifies the registrant as “Sana Ullah,” a name which has no nominal affiliation with the disputed domain name. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel relied on the lack of affiliation between the WHOIS information and the disputed domain name and the absence of other evidence supporting the respondent’s rights to conclude that the respondent was not commonly known by the disputed domain name. With similar reasoning, the Panel determines that there is no evidence showing that Respondent is commonly known by the <testkingworld.net> domain name, which supports a finding that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s <testkingworld.net> domain name resolves to Respondent’s commercial website that uses Complainant’s TESTKING mark to sell practice tests and preparation materials that compete with, and are virtually indistinguishable from, Complainant’s products. Complainant argues that Respondent’s actions in taking advantage of Complainant’s mark to sell competing products reveal that Respondent is not making a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also 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.”).
Complainant argues that the products sold at Respondent’s <testkingworld.net> domain name are knock-off practice tests and preparation materials that are virtually indistinguishable from Complainant’s products. After viewing the screenshots submitted by Complainant of its own website and Respondent’s resolving website, the Panel also finds that the two websites are very similar in design, color, and layout. Based on this evidence, the Panel concludes that Respondent is attempting to pass itself off as Complainant, which further supports a finding that Respondent lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); 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).
The Panel determines that Complainant has proven Policy ¶ 4(a)(ii).
Complainant does not make any specific allegations under Policy ¶ 4(b)(iii), but it does allege that Respondent uses the <testkingworld.net> domain name to sell competing practice tests and test preparation materials. Complainant also asserts that Respondent markets and offers these products under Complainant’s mark and has designed them so that they appear virtually indistinguishable from Complainant’s. Based on this evidence, the Panel finds that Respondent is disrupting Complainant’s business at the <testkingworld.net> domain name by selling competing products, which is evidence of bad faith registration and use according to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant contends that Respondent uses the TESTKING mark to intentionally attract consumers seeking test preparation materials and create a likelihood of confusion as to whether Complainant is affiliated with Respondent. Complainant alleges that Respondent has designed its products so that they are virtually indistinguishable from Complainant’s. The Panel also finds that Respondent’s resolving website is very similar to Complainant’s actual website in design, layout and color scheme, which is evidence that Respondent is increasing confusion by attempting to pass itself off as Complainant. Complainant asserts that Respondent uses the <testkingworld.net> domain name in this way for commercial gain by marketing and selling its competing products. The Panel finds that Respondent’s actions in misappropriating Complainant’s mark to attract consumers and create confusion for its own profit demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant also argues that the particular circumstances of Respondent’s registration of the <testkingworld.net> domain name show bad faith. Complainant asserts that it previously initiated a complaint in regard to the <testkingworld.com> domain name. Complainant contends that the <testkingworld.com> domain name was transferred to Complainant on September 8, 2010 in a UDRP proceeding and only eight days later, an almost identical website appeared at the <testkingworld.net> domain name. Complainant submits screenshots to show the similarity between the websites at the two domain names. Complainant accordingly alleges that Respondent, while concealing its identity in its registration of the disputed domain name, simply moved its website from the <testkingworld.com> domain name to the <testkingworld.net> domain name. The Panel finds that Respondent’s opportunistic registration and its knowing, continuous, and illegitimate use of Complainant’s mark to host an offending website signal bad faith registration under Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”).
The Panel determines that Complainant has proven Policy ¶ 4(a)(iii).
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.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 2, 2011
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