Certification Trendz, Ltd. v. Sunny Ahmed / TestKingCerts
Claim Number: FA1110001413548
Complainant is Certification Trendz, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., Washington, D.C., USA. Respondent is Sunny Ahmed / TestKingCerts (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <testkingcerts.com>, registered with OnlineNIC Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2011; the National Arbitration Forum received payment on October 31, 2011.
On November 1, 2011, OnlineNIC Inc confirmed by e-mail to the National Arbitration Forum that the <testkingcerts.com> domain name is registered with OnlineNIC Inc and that Respondent is the current registrant of the name. OnlineNIC Inc has verified that Respondent is bound by the OnlineNIC 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 November 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@testkingcerts.com. Also on November 1, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 30, 201, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <testkingcerts.com> domain name is confusingly similar to Complainant’s TEST KING mark.
2. Respondent does not have any rights or legitimate interests in the <testkingcerts.com> domain name.
3. Respondent registered and used the <testkingcerts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Certification Trendz, Ltd., is in the business of selling IT certification test preparation materials over the Internet. Complainant contends that it began using its mark in December of 2001 when it first registered its official <testking.com> domain name. Complainant also owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for the TEST KING mark (Reg. No. 3,630,272 filed September 2, 2008; registered June 2, 2009) and with the United Kingdom Intellectual Property Office (“UKIPO”) for the TESTKING mark (Reg. No. 2,416,636 registered October 20, 2006).
Respondent, Sunny Ahmed / TestKingCerts, registered the <testkingcerts.com> domain name on November 8, 2005. Respondent’s domain name resolves to a website that looks and feels like Complainant’s official website and sells the same or similar test preparation materials as 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.
Under Policy ¶ 4(a)(i) a complainant must first prove that it has rights in its asserted mark by presenting the Panel with evidence of trademarks that it owns or through evidence that its mark has established secondary meaning through the common law.
Complainant first submits its trademark registrations with the USPTO for the TEST KING mark (Reg. No. 3,630,272 filed September 2, 2008; registered June 2, 2009) and with the UKIPO for the TESTKING mark (Reg. No. 2,416,636 registered October 20, 2006). The Panel first notes that these registrations alone establish Complainant’s rights in the TEST KING and TESTKING marks under Policy ¶ 4(a)(i), dating back to September 2, 2008 for the USPTO and October 20, 2006 for the UKIPO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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 Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Further, the Panel also notes that under Policy ¶ 4(a)(i), it does not matter that Respondent resides in a different geographic location than where Complainant owns a trademark registration. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant also contends that it has been continuously using its TEST KING and TESTKING marks since January 22, 2002, which is the date its official website was up and running. Complainant submits information to show that it first registered the <testking.com> domain name in December of 2001. Further, Complainant asserts that its company is well known “to computer software certification examination organizations and to purchasers of computer software certification examination preparation materials throughout the world.” The Panel determines that Complainant has submitted sufficient information to establish common law rights in the TESTKING and TEST KING marks under Policy ¶ 4(a)(i) which date back to at least January 22, 2002. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also 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).
Complainant asserts that Respondent’s <testkingcerts.com> domain name is confusingly similar to its TESTKING mark. Complainant contends that the term “certs” in the domain name is an abbreviation for the term “certifications,” thereby rendering the domain name confusingly similar to its mark. The Panel agrees and finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). 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 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.”).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not any rights and legitimate interests in the <testkingcerts.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to show that it possesses rights or 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 Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <testkingcerts.com> domain name. See 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.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent does not have rights and legitimate interests in the <testkingcerts.com> domain name because Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain identifies “Sunny Ahmed / TestKingCerts” as the registrant. Previous panels have determined that even though a respondent may appear to be commonly known by a disputed domain name that, absent evidence indicating as such, a respondent is not to be considered as commonly known by the domain name under Policy ¶ 4(c)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”); see also Skyline Displays, Inc. v. Hangzhou Skyi Display Equip. Co., FA 187706 (Nat. Arb. Forum Oct. 14, 2003) (“Despite the fact that Respondent lists itself as Hangzhou Skyi Display Equipment Co., Ltd. in its WHOIS contact information, there is no evidence presented to the Panel showing that Respondent is commonly known by the <skyidisplay.com> domain name prior to registering the domain name.”). Based on the foregoing information and previous UDRP decisions, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) despite the information presented in the WHOIS.
Complainant argues that Respondent is using the disputed domain name as a nearly identical website as Complainant’s official website in order to sell competing IT certification test preparation materials. Complainant has supplied screen shots of previous web pages that it has used in order to show that Respondent’s website is a nearly cloned version of those previous websites. Complainant argues that such use cannot be a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel agrees and finds that Respondent’s use of the disputed domain name to sell directly competing goods under the guise of being Complainant, or at least being affiliated with Complainant, is not 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (finding that the 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); see also 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)).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent is using the disputed domain name to divert unwary Internet users who are looking for Complainant to its own website. Respondent’s resolving website appears to look just like Complainant’s website and sells the same or similar test preparation materials. The Panel finds that this use disrupts Complainant’s business and is evidence of bad faith under 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).
Further, it is apparent that Respondent is using the disputed domain name and resolving website to create a false association between it and Complainant for the purpose of selling competing goods. The Panel finds that such use of a confusingly similar domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Lastly, the Panel finds that Respondent is attempting to pass itself of as Complainant in order to sell similar goods. Complainant’s evidence indicates that Respondent’s resolving website is nearly identical to an earlier version of Complainant’s official website. Because of this, the Panel finds that Respondent also registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also 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).
The Panel finds that Complainant has satisfied the requirements of 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 <testkingcerts.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 6, 2011
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