national arbitration forum

 

DECISION

 

Certification Trendz, Ltd. v. IT SOL EXPERT / ITSOLEXPERT Limited

Claim Number: FA1203001435237

 

PARTIES

Complainant is Certification Trendz, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., Washington, D.C., USA.  Respondent is IT SOL EXPERT / ITSOLEXPERT Limited (“Respondent”), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <testking.me>, registered with OnlineNIC, Inc.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2012; the National Arbitration Forum received payment on March 19, 2012.

 

On March 22, 2012, OnlineNIC, Inc confirmed by e-mail to the National Arbitration Forum that the <testking.me> 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 March 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2012 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.me.  Also on March 22, 2012, 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 April 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Respondent’s <testking.me> domain name, the domain name at issue, is confusingly similar to Complainant’s TEST KING and TESTKING marks.

 

Respondent does not have any rights or legitimate interests in the domain name at issue.

 

Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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 following its registration of the <testking.com> domain on December 5, 2001.  Further, Complainant owns trademark registrations for its TEST KING (Reg. No. 3,630,272 registered June 2, 2009) and TESTKING (Reg. No. 2,416,636 registered October 20, 2006) marks with the USPTO and UKIPO, respectively.  Respondent registered the domain name at issue on July 17, 2008.  Complainant has not licensed or otherwise authorized Respondent to use the TEST KING mark and Respondent is not commonly known by the domain name at issue.  Respondent operates a website at <testking.me> where practice tests and preparation materials using the TEST KING® mark are featured and which are designed to be virtually indistinguishable to the consumer from those marketed and sold by Complainant.

DISCUSSION

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.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant owns trademark registrations for its TEST KING (Reg. No. 3,630,272 registered June 2, 2009) and TESTKING (Reg. No. 2,416,636 registered October 20, 2006) marks with the USPTO and UKIPO, respectively.  Such trademark registrations are sufficient for Complainant to establish rights in its marks under Policy ¶ 4(a)(i).  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 The Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).

 

Further, the <testking.me> domain name is identical to Complainant’s TEST KING and TESTKING marks.  The domain name contains Complainant’s TESTKING mark entirely while adding the ccTLD “.me,” which is the country code for Montenegro.  Based on the comparison between the disputed domain name and Complainant’s TESTKING mark, the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).  See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

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 has never authorized Respondent to use its marks in any manner and Respondent does not have rights or legitimate interests in the domain name at issue.  The WHOIS information identifies “T SOL EXPERT / ITSOLEXPERT Limited” as the domain name registrant.  Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Respondent’s domain name resolves to a website that was cloned from a previous version of Complainant’s official website and the website is nearly identical to Complainant’s current website and identical to its prior website.  Respondent sells competing goods that are designed to be passed off as Complainant’s goods.  Accordingly, Respondent is passing itself off as Complainant on the Internet, for commercial gain, by presenting a nearly identical website to Internet users that also sells directly competing goods.  Such use does not amount to 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 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); see also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

Respondent is currently engaged in bad faith conduct that is evidenced by its intentional copying of Complainant’s prior official website in order to market and sell competing goods.  Respondent’s use of the domain name clearly creates financial gain for Respondent through the sale of goods on the website.  This use of the disputed domain name is evidence of bad faith registration and use under 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 Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

 

Further, Respondent’s attempts to pass itself off as Complainant, by using a cloned copy of Complainant’s prior official website, is evidence of bad faith registration and use under 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 Policy ¶ 4(a)(iii) has been established. 

 

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 <testking.me> domain name be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  April 20, 2012

 

 

 

 

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