Certification Trendz, Ltd. v. TIEN VU NGOC / aiotestking.com
Claim Number: FA1709001749175
Complainant is Certification Trendz, Ltd. ("Complainant"), represented by Robert A. Auchter of McKool Smith, P.C., Washington D.C., USA. Respondent is TIEN VU NGOC / aiotestking.com ("Respondent"), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aiotestking.com>, registered with Name.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2017; the Forum received payment on September 15, 2017.
On September 20, 2017, Name.com, Inc. confirmed by email to the Forum that the <aiotestking.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to email@example.com. Also on September 21, 2017, 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.
A timely Response was received and determined to be complete on October 9, 2017.
Additional Submissions were received from Complainant and Respondent on October 10, 2017, and October 12, 2017, respectively. Both of these submissions were received in a timely manner according to the Forum's Supplemental Rule 7.
On October 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is in the business of providing information technology testing and certification test preparation materials to individuals. Complainant has used the TEST KING mark in connection with this business since January 2002. Complainant owns a U.S. trademark registration for TEST KING issued in 2009. Complainant states that it has widely promoted the TEST KING mark in the United States and throughout the world, and that the mark has become well known as a result; Complainant notes that it has successfully challenged several infringing domain names in previous proceedings under the Policy.
Respondent operates a website at the disputed domain name, <aiotestking.com>, at which it distributes practice test questions and preparation materials. The disputed domain name was registered in 2011; Complainant describes it as a combination of the generic acronym "aio," meaning "all in one," and Complainant's TEST KING mark. Complainant states that in many cases the materials distributed by Respondent cover the same topics as those marketed and sold by Complainant. Complainant asserts that among the materials distributed by Respondent are copies of Complainant's own materials, including at least six questions and answers for three different Microsoft exams, authored by or for Complainant and subsequently redistributed by Respondent; and that Respondent knowingly solicited users to provide Complainant's materials for inclusion on Respondent's site. Complainant provides printouts of pages from Respondent's website that appear to substantiate these assertions. Respondent's site also contains advertisements for other competitors to Complainant.
Complainant contends on the above grounds that the disputed domain name <aiotestking.com> is confusingly similar to Complainant's TEST KING mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
Respondent states that it selected the disputed domain name <aiotestking.com> in 2011 because it wanted to "become a king in sample tests in all fields," and that any correspondence to Complainant's TEST KING mark was unintentional. Respondent distinguishes its goals from those of Complainant, stating that it provides users with a discussion forum rather than selling test preparation packages; Respondent denies uploading or downloading Complainant's materials. Respondent also criticizes Complainant for having waited several years after Respondent's initial registration of the disputed domain name to challenge the registration.
C. Additional Submissions
The parties' Additional Submissions appear merely to reiterate material already presented in their initial submissions, and neither party has identified any exceptional circumstances that might warrant consideration of these submissions. Paragraph 12 of the Rules confers upon the Panel the sole discretion to decide whether to receive supplemental material from the parties, and a Panel should consider such material only in exceptional circumstances, such as where the material reflects newly discovered evidence or rebuts arguments that could not reasonably have been anticipated. See, e.g., Valeant International Bermuda v. DNS Administrator, FA 1573544 (Forum Sept. 15, 2014). No such circumstances being apparent here, the Panel declines to consider the parties' Additional Submissions.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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.
The disputed domain name <aiotestking.com> incorporates Complainant's registered TEST KING mark, omitting the space and adding "aio" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Certification Trendz, Ltd. v. WeiWang/WeiWang, FA 1352950 (Forum Nov. 30, 2010) (finding <freetestkingdownload.com> confusingly similar to TEST KING); Certification Trendz, Ltd. v. Domain ID Shield Service Co., LTD, FA 1343932 (Forum Oct. 8, 2010) (finding <testkingprep.com> confusingly similar to TEST KING); Canon U.S.A., Inc. v. donnylong.com, D2010-0245 (WIPO Mar. 28, 2010) (finding <canonallinone.com> confusingly similar to CANON). Accordingly, the Panel finds the disputed domain name <aiotestking.com> to be confusingly similar to Complainant's TEST KING mark.
Under the Policy, the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name combines Complainant's mark with a generic abbreviation. It is being used to compete directly with Complainant and to promote other direct competitors. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Certification Trendz, Ltd. v. WeiWang/WeiWang, supra (finding lack of rights or legitimate interests in similar circumstances); Certification Trendz, Ltd. v. Domain ID Shield Service Co., LTD, supra (same). The Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent is using a domain name that incorporates Complainant's trademark for a website that promotes competing services, and the Panel considers it likely that the use of Complainant's mark represents an intentional effort to create and exploit confusion. See, e.g., Certification Trendz, Ltd. v. WeiWang/WeiWang, supra (finding bad faith registratoin and use in similar circumstances); Certification Trendz, Ltd. v. Domain ID Shield Service Co., LTD, supra (same). The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aiotestking.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 20, 2017
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