Freetech Services, Ltd. v. JAMAL RAMZAN
Claim Number: FA1502001602891
Complainant is Freetech Services, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., District of Columbia, USA. Respondent is JAMAL RAMZAN (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pass4sures.com> ('the Domain Name'), registered with UNIREGISTRAR CORP.
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.
<<Dawn Osborne>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2015; the Forum received payment on February 2, 2015.
On February 2, 2015, UNIREGISTRAR CORP confirmed by e-mail to the Forum that the <pass4sures.com> domain name is registered with UNIREGISTRAR CORP and that Respondent is the current registrant of the name. UNIREGISTRAR CORP has verified that Respondent is bound by the UNIREGISTRAR CORP 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 February 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2015 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@pass4sures.com. Also on February 3, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 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 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
Complainant's contentions can be summarized as follows:
The Complainant is in the business of selling IT certification test prep materials over the Internet and has been doing so from www.pass4sure.com since at least November 23, 2005. PASS4SURE is well known in this field having recorded revenues in excess of $15M. It is registered in China as a trade mark for educational services.
Respondent operates a web site at the Domain Name selling practice tests and materials which directly compete with the Complainant and are designed to be difficult for the consumer to distinguish from those of the Complainant. It started trading five years after the Complainant.
Respondent has engaged in a sustained effort to pass itself off as the Complainant by directly copying material and mimicking the trade dress of the website of the Complainant. The copying demonstrates the Respondent's awareness of the Complainant and its web site. The Respondent is selling similar materials in the same marketplace to trade off the Complainant's goodwill. The Domain Name was registered in bad faith and has caused and continues to cause confusion in the form of misdirected traffic and customers tricked into buying the Respondent's materials instead of the Complainant's.
The addition of the gTLD .com is irrelevant in determining confusing similarity .
Minor spelling changes such as the addition of an 's' do not distinguish the Domain Name from the Complainant's trade mark and it is confusingly similar thereto.
The Complainant has not authorised the Respondent to use its mark. The Respondent is not using it in connection with a bona fide offering of goods and services, but is mimicking the Complainant’s web site to pass its services off as those of the Complainant. The Respondent has no rights or legitimate interests in the Domain Name.
Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent's web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation and endorsement of Respondent's web site or a service on that site. Copying from the Complainant’s web site by the Respondent shows actual knowledge of the Complainant and bad faith on the part of the Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is in the business of selling IT certification test prep materials over the Internet and has been doing so from www.pass4sure.com since at least November 23, 2005. It is registered in China as a trade mark for educational services.
Respondent operates a web site at the Domain Name selling practice tests and materials which directly compete with the Complainant and has directly copied text from the Complainant's web site. It started trading five years after the 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."
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 or Confusingly Similar
The Complainant's PASS4SURE mark registered in China for educational services and has been used since 2005. It has the distinctive element of using the number 4 for the word 'for' in a phonetic equivalent of the more usual expression 'pass for sure'.
The Domain Name consists of the Complainant's PASS4SURE mark and an additional letter 's'. See Nat'l Geographic Soc'y v Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001)(finding that the domain name nationalgeographics.com was confusingly similar to the complainant's NATIONAL GEOGRAPHIC mark). The Panel agrees with the Complainant that the addition of an 's' to the Complainant's mark does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy.
The gTLD .com does not serve to distinguish the Domain Names from the PASS4SURE mark, which is the distinctive component of the Domain Names. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Complainant maintains that the Respondent is not using the Domain Name to offer bona fide goods and services and that the Complainant has not authorised the use of its mark. The Complainant contends that the site is set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights.
The web site attached to the Domain Name uses the confusingly similar name 'Pass4Sures' and the Complainant provides evidence of copying from its web site of material which has been used on the Respondent's web site. The Respondent has used the site to promote goods and services in competition with those of the Complainant. It uses a confusingly similar trading name to the Complainant's trade mark and does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc. v Benjamin FA 944242 (Nat. Arb. Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.)
Additionally the Domain Name appears to be a typo squatted version of the Complainant's Domain Name chosen in the hope that a customer might mistakenly reach Respondent's web site by using an additional 's'. See Amazon.com, Inc. v JJ Domains, FA 514939 (Nat Arb. Forum Sept 2, 2005)(respondent lacks rights and legitimate interests in the domain name because it constituted typo squatting).
As such the Panellist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Complainant also alleges that the Respondent's use of the site is commercial and he is using it to make profit by competing with the Complainant in a confusing manner. In the opinion of the panellist the use made of the Domain Name in relation to the site is confusing in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it began to offer the same services under a confusingly similar name five years after the Complainant. The taking of identical text from the Complainant's web site which has been used on the Respondent's web site shows that the Respondent is aware of the Complainant and is targeting it in bad faith. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Asbury Auto Group Inc. v Tex. Int'l Prop Asics FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panellist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pass4sures.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 18, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page