Freetech Services, Ltd. v. ZHANG AIHUA / ZHANG AIHUA
Claim Number: FA1411001592211
Complainant is Freetech Services, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., District of Columbia, USA. Respondent is ZHANG AIHUA / ZHANG AIHUA (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pass4sure.net>, registered with Xin Net Technology Corporation.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2014; the National Arbitration Forum received payment on November 25, 2014. The Complaint was received in English and Chinese.
On November 26, 2014, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <pass4sure.net> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 December 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2014 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@pass4sure.net. Also on December 5, 2014, 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 January 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant has registered the PASS4SURE mark with the State Administration for Industry and Commerce (“SAIC”) (e.g, Reg. No. 7,191,953, registered December 28, 2010). Complainant has used to PASS4SURE mark in connection with the sale of information technology certification test prep materials over the Internet since November 23, 2005. The <pass4sure.net> domain name contains the PASS4SURE mark and adds the generic top-level domain (“gTLD”) “.net.”
ii) Respondent has no rights or legitimate interests in the <pass4sure.net> domain name. Respondent is not known by this domain name nor has Respondent ever been licensed to use PASS4SURE in domain names. In addition, Respondent is using the disputed domain name to pass itself off as the Complainant in order to sell counterfeit products and services that directly compete with Complainant’s products and services.
iii) Respondent has registered and is using the <pass4sure.net> domain name in bad faith. First, Respondent is intentionally trying to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s PASS4SURE mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website or location or of products or services located on Respondent’s website or location. Second, Respondent has used the disputed domain name with both actual and constructive knowledge of Complainant’s rights in the PASS4SURE mark, which is also evidence of bad faith.
B. Respondent
Respondent did not submit a response. The disputed domain name was registered December 6, 2005.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
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.”).
Complainant has registereed the PASS4SURE mark with the SAIC (e.g., Reg. No. 7,191,953, registered December 28, 2010). Complainant uses the PASS4SURE mark in connection with the sale of information technology certification test prep materials over the Internet. The Panel agrees that this SAIC registration is satisfactory evidence of Complainant’s Policy ¶ 4(a)(i) rights in this trademark. See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
On the other hand, registration of a trademark is not necessarily required for one to obtain trademark rights. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues that the PASS4SURE mark had acquired secondary meaning by the time of the disputed domain name’s registration. Complainant has used the mark to sell information technology certification test prep materials using Complainant’s <pass4sure.com> domain name since November 23, 2005. See Compl., at Attached Ex. J (showing Internet Archive entry for first commercial <pass4sure.com> website on November 23, 2005). As seen in Exhibit G, Complainant operates an active and busy website associated with the PASS4SURE mark. From 2005–2010 Complainant avers that it obtained gross revenues in excess of $15 million USD from the operation of its <pass4sure.com> website, evidencing the fame and notoriety the website and PASS4SURE mark obtained amongst computer software certification examination organizations and purchasers of computer software certification examination preparation materials throughout the world. The Panel agrees that all of this evidence amounts to a showing of secondary meaning in the mark going back to 2005, and thus finds Policy ¶ 4(a)(i) to such date. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel finds that the evidence establishes secondary meaning sufficient to grant Complainant common law rights in the PASS4SURE mark.
Complainant asserts that the <pass4sure.net> domain name is identical to the PASS4SURE mark and adds the gTLD “.net.” The Panel thus concludes that the disputed domain name is identical to the PASS4SURE mark under Policy ¶ 4(a)(i), as the addition of the gTLD “.net” is not relevant. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the respondent’s <honeywell.net> domain name to be identical to the complainant’s HONEYWELL mark).
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 claims that Respondent is not known by the disputed domain name and has never been licensed to use PASS4SURE in domain names. The Panel notes that the WHOIS information lists “Zhang Aihua” as the registrant. Given these uncontested allegations, the Panel agrees that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent fails to use the <pass4sure.net> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. First, Complainant contends that Respondent is diverting Internet users to his website by using a domain name identical to the PASS4SURE mark in order to advertise and sell counterfeit products that compete with those products sold by Complainant. Second, Complainant claims that Respondent is attempting to pass itself off as the Complainant. Complainant notes that Respondent has placed an identification line at the bottom of the <pass4sure.net> website in which Respondent is purporting to be Complainant. See Compl., at Attached Ex. Q. In addition, Respondent refers to itself and its products and services as “Pass4sure” on the disputed domain name’s website. See Compl., at Attached Ex. F. The Panel views the evidence and concludes that the Respondent has no rights and legitimate interests because he has failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of 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).
Complainant argues that Respondent’s counterfeiting disrupts Complainant’s own business operations. See Compl., at Attached p. 4. Prior panels have determined that the use of a disputed domain name to sell counterfeits of the complainant’s goods equates to Policy ¶ 4(b)(iii) bad faith as such use disrupts the complainant’s control and sale of its genuine products. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Accordingly, the Panel finds Respondent’s counterfeiting activities under the <pass4sure.net> domain name is disruptive of Complainant’s business and therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Next, Complainant claims Respondent’s efforts to pass itself off as Complainant through the use of the disputed domain name and PASS4SURE mark create consumer confusion from which Respondent commercially gains. See Compl., at Attached p. 7. Prior panels have found evidence of Policy ¶ 4(b)(iv) bad faith in similar cases. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Accordingly, the Panel agrees that Respondent attempts to commercially gain from the user confusion generated by the <pass4sure.net> domain name to sell counterfeit products and services, and thus finds Respondent has engaged in Policy ¶ 4(b)(iv) bad faith.
Complainant asserts that Respondent was on notice of Complainant’s rights in its mark prior to domain name registration because Respondent included the entire mark in the domain name. Complainant states that Respondent ought to be held to an actual and/or constructive notice standard. While Complainant believes that constructive notice is sufficient, the Panel agrees that the trend in UDRP proceedings is to find bad faith only through actual knowledge. See, e.g., BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). However, the Panel agrees that the content of the <pass4sure.net> domain name’s website provides evidence that Respondent knew enough about Complainant’s business to give Respondent the idea to place images of Complainant’s PASS4SURE mark on the domain name’s website. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pass4sure.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 16, 2015
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