Pass Guaranteed, Ltd. v. N/A
Claim Number: FA1002001305815
Complainant is Pass
Guaranteed, Ltd. (“Complainant”), represented by Steven L.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <pass-guarantee.com> and <passguarantee.com>, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 2, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 22, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@pass-guarantee.com and postmaster@passguarantee.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pass-guarantee.com> and <passguarantee.com> domain names are confusingly similar to Complainant’s PASS-GUARANTEED mark.
2. Respondent does not have any rights or legitimate interests in the <pass-guarantee.com> and <passguarantee.com> domain names.
3. Respondent registered and used the <pass-guarantee.com> and <passguarantee.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pass Guaranteed, Ltd., develops, markets, and
sells informational services, study aids, and training certification products
relating to standardized IT examinations.
Complainant offers these services online through the use of its domain
name, <pass-guaranteed.com>, which Complainant registered on
Respondent registered the <pass-guarantee.com> and <passguarantee.com>
domain names on
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.
Respondent registered the <pass-guarantee.com> and <passguarantee.com>
domain names on
Complainant uses the PASS-GUARANTEED mark to conduct
business and market its informational services, study aids, and training
certification products relating to standardized IT examinations. Complainant began offering these services in
2001 and is registered with the Companies House of the
Complainant offers its products and services online through
the use of its domain name, <pass-guaranteed.com>, which Complainant
registered on
Complainant alleges that the <pass-guarantee.com> and <passguarantee.com>
domain names are confusingly similar to Complainant’s PASS-GUARANTEED
mark. The disputed domain names remove
the letter “d” an add the generic top-level domain
(“gTLD”) “.com.” The <passguarantee.com>
domain name also removes the hyphen from Complainant’s mark. The Panel finds the removal of a letter and a
hyphen combined with the addition of a gTLD fails to sufficiently distinguish
the disputed domain name from Complainant’s mark. See
Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding
that the <pfzer.com> domain name was confusingly similar to the
complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum
Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <pass-guarantee.com> and <passguarantee.com> domain names. 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). 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 names. See 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.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by either of the disputed domain names. Complainant asserts that Respondent has never been authorized or licensed to use the PASS-GUARANTEED mark. The WHOIS information lists the domain name registrant as “N/A.” Therefore, the WHOIS information does not provide evidence that Respondent is commonly known by the disputed domain names. The Panel finds that Respondent has not established rights or legitimate interests in the
<pass-guarantee.com> and <passguarantee.com> domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Respondent’s <pass-guarantee.com> domain name resolves to a website featuring products and services that compete with Complainant’s products and services relating to standardized IT examinations. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Respondent’s <passguarantee.com> domain name does not resolves to an active website. Respondent fails to make an active use of the disputed domain name. The Panel finds Respondent’s failure to make an active use of the confusingly similar disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <pass-guarantee.com>
domain name to redirect Internet users, interested in Complainant’s products
and services relating to standardized IT examinations, to Respondent’s website
featuring competing products and services.
Internet users may purchase these competing products and services
relating to standardized IT examinations instead of purchasing Complainant’s
products and services because of Respondent’s use of the confusingly similar
disputed domain name. Therefore, the Panel finds Respondent’s use of the
disputed domain name constitutes disruption of Complainant’s business and
evidences bad faith registration and use under Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
Respondent is using the confusingly similar <pass-guarantee.com> domain name to link to a website offering competing goods and services. Respondent’s use of a confusingly similar disputed domain name may cause confusion among Internet users as to Complainant’s sponsorship or association with the <pass-guarantee.com> domain name and resolving website. Respondent attempts to profit from this confusion. The Panel finds Respondent’s use of the <pass-guarantee.com> domain name constitutes 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 Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii)
analysis, and that it is not limited to the enumerated factors in Policy ¶
4(b). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Respondent’s <passguarantee.com> domain name
does not resolve to an active website.
Respondent registered the <passguarantee.com> domain name
on
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 <pass-guarantee.com> and <passguarantee.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 16, 2010
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