Certification Trendz, Ltd. v. WeiWang/WeiWang
Claim Number: FA1010001352950
PARTIES
Complainant is Certification Trendz, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., Washington D.C., USA. Respondent is WeiWang/ WeiWang (“Respondent”), Kazakhstan
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freetestkingdownload.com>, registered with Xin Net Technology Corporation.
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.
The Hon. Sir Ian Barker as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2010; the National Arbitration Forum received payment on October 19, 2010. The Complaint was submitted in both Chinese and English.
On October 20, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <freetestkingdownload.com> domain name is registered with Xin Net Technology Corporation and the Respondent is the current registrant of the name. 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 October 27, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 16, 2010 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@freetestkingdownload.com. Also on October 27, 2010, the Chinese language 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 in English was received from the Respondent and determined to be complete on November 16 , 2010. A timely Additional Submission from the Complainant was received and determined to be complete on November 19, 2010.
On November 22, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Hon. Sir Ian Barker as Panelist.
Pursuant to Rule 11(a), these proceedings should be conducted in Chinese because the registration agreement is in Chinese. However, as the Response is in English, it appears that Respondent is capable of understanding and proceeding in English, and therefore the Panel may choose to conduct the proceedings in English. See Rule 11(a) of the UDRP (stating that the Panel has the authority to choose the language of the proceedings based on the circumstances of the proceeding). The Panel accordingly has decided to give this decision in English.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is a United Kingdom corporation which has been selling IT certification test materials over the internet continuously since January 2002. It registered in December 2001 the domain name <testking.com>. The Complainant sells computer software certification examination preparation materials and study guides on a worldwide basis.
The Complainant registered a trademark in the United Kingdom on October 28, 2006 for the words TEST KING in various configurations. It registered a trademark for TEST KING in the United States on June 2, 2009. The certificate for this trademark shows a first use in commerce in January 2002.
The Complainant offers “state of the art” practice tests with verified answers to ensure that students will pass their exams on the first try. The lists of certification organizations are similar on the websites of both parties.
The Respondent operates a website at the disputed domain name which was registered on September 18, 2008. The Respondent’s website says that it provides professional software certification information for various examinations and industry-based examination simulations. It lists a number of various certification organizations whose examinations are covered. On the website there is a link to <cheat-test.com> through which products or services of competitors of the Complainant are offered for purchase.
The Complainant alleges that the disputed domain name is confusingly similar to its registered mark TEST KING and that the addition of the words “free” as a prefix and “download” as a suffix are not significant when determining whether the disputed domain name is identical or confusingly similar. These words are generic.
The Complainant alleges that the Respondent has established no rights or legitimate interests in respect of the disputed domain name. Respondent is not a licensee of the Complainant and has never been authorised by the Complainant to use its mark in any way. Moreover, the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services: the disputed domain name is used to mislead customers and to tarnish the trademark of the Complainant by passing itself off as the Complainant.
The Respondent has intentionally attempted to attract for commercial gain internet users to the Respondent’s site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or a product or service on the Respondent’s website. The Respondent offers for sale via the link goods or services designed to compete directly with those available on the Complainant’s point of sale website. The Complainant’s legitimate traffic is thereby directed to the Respondent’s website. Accordingly, the Panel should infer registration and use in bad faith.
B. Respondent
The disputed domain name is not identical or confusingly similar to the Complainant’s trademarks. The Respondent was unaware of the trademarks and of the Complainant’s domain name <testingking.com> when he registered the disputed domain name. The two domains are easily distinguishable. If the disputed domain name is considered identical or confusingly similar with the Complainant’s domain name, then the Complainant could claim a right to thousands of similar domains.
The Respondent is operating the website at the disputed domain name for non-commercial purposes and is making a legitimate non-commercial and fair use of the disputed domain name without intent for commercial gain misleadingly to divert customers or to tarnish the trademark or service mark at issue. The Respondent claims that he does not sell any product or service but offers thousands of useful web pages with information on the latest IT certification exams. He puts useful information or links on his website without intent for commercial gain. He is not selling practice tests or preparation materials.
The Respondent did not register the disputed domain name in bad faith and did not acquire it for the purpose of selling, renting or transferring it. He was unaware of the existence of the Complainant’s trademark or its website when completing registration. His website is completely free with no products offered for sale. He has never disrupted the Complainant’s business. His website has its own logo and design with no connection between that and the Complainant’s website.
Accordingly, the Respondent should not be held to have registered or to have used the disputed domain name in bad faith.
C. Additional Submissions of Complainant
The Respondent lacks a legitimate interest in the disputed domain name. It is not disputed that the Complainant was the first to use the TEST KING mark in commerce or that the Complainant has continuously used that mark since that time. The Respondent’s assertion that he was unaware of the Complainant’s mark is unbelievable, given that the disputed domain name is a manipulation of the Complainant’s mark.
The Respondent’s argument that he has legitimate interests in the disputed domain name and that he is just putting in useful information on the website with no commercial gain or interest is incorrect. It ignores the fact that the website is used to sell competing products to the Complainant’s by a link to the competing <cheat-test.com> website.
Selling competing products by linking to the purchase page of the Complainant’s competitor does not establish a legitimate interest and establishes bad faith. The Respondent is using the disputed domain name to advertise goods and services of the Complainant’s competitors, thereby disrupting the Complainant’s business. Presumably, the Respondent earns click-through fees.
FINDINGS
1. The disputed domain name is confusingly similar to the Complainant’s registered trademarks.
2. The Complainant has established that the Respondent has no right or legitimate interest in respect of the disputed domain name.
3. The Respondent registered and is using the disputed domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Respondent owns registered trademarks for the mark TEST KING. The disputed domain name has the generic term “free” as a prefix and the generic term “download” as a suffix. Adding generic terms to a complainant’s mark does not create a domain name that is distinct from a complainant’s mark.
This proposition has been decided in many cases under the UDRP, one of the most recent being TPI Holdings, Inc. v. Armengol, D2009-0361 (WIPO May 9, 2009). There, the learned panelist summarised the situation and cited a number of authorities in the following words:
“Many UDRP panelists have held that the addition of descriptive or generic wording to a mark satisfies paragraph 4(a)(i) of the Policy, requiring that a disputed domain name be “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” See Société AIR FRANCE v. Angelika Freitag, Angelika Freitag Company, WIPO Case No. D2008-1219; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Nikon Inc. and Nikon Corporation v. Photocom Korea, WIPO Case No. D2000-1338; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627.”
The generic term “free” fails adequately to distinguish the disputed domain name from the Complainant’s mark. See Victoria’s Secret Stores Brand Mgmt Inc. v. Luxxe Mktg. c/- Mona Hanson, FA1334509 (Nat. Arb. Forum Aug. 21, 2010). This case held that the addition of the generic term “free” did not distinguish a domain name from the mark to which it was added a prefix.
Nor does the addition of the generic term “download” sufficiently distinguish the domain name. See Warner Bros. Entm’t Inc. v. Elsasser, FA1189689 (Nat. Arb. Forum June 30, 2008). That case held that the addition of the term “download” did not sufficiently distinguish the registered mark when added as a suffix.
Moreover, as pointed out in the Complainant’s submissions, the term “download” is merely descriptive and is obviously connected with the Complainant’s mark because all of the Complainant’s products are downloaded by internet customers.
Accordingly, the Complainant has satisfied the first limb of Para. 4(a) of the Policy.
The Complainant has established that it gave the Respondent no rights or legitimate interests in the disputed domain name. The onus therefore shifts to the Respondent to establish a right or legitimate interest in one or other of the circumstances set out in paragraph 4(c) of the Policy.
The Respondent relies only on paragraph 4(c)(iii) and alleges that he is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert customers or to tarnish the trademark.
The Respondent’s claim that he is merely offering a service to display various requirements of IT certification authorities is somewhat ingenuous because there is a link to a website which offers for sale products of competitors which are similar to products offered by the Complainant.
It is clear from a large number of cases under the Policy that selling competing products by a link to a purchase page for competitors of the Complainant does not establish a legitimate interest. See, for example, Tesco Pers. Fin. Ltd. v. Domain Mgmt. SVCS, FA877982 (Nat. Arb. Forum Feb. 13, 2007).
The Respondent has not satisfied the onus on him that he comes within paragraph 4(c)(iii) of the Policy.
Accordingly, the Complainant has satisfied the second limb of Para. 4(a) of the Policy.
The above finding on rights and interests impacts on the consideration of bad faith. The Respondent is located in Kazakhstan, very distant from both the United Kingdom and the United States where the Complainant has registered trademarks. However, the Complainant has been operating as an unregistered mark long before the trademark registrations came into force through its website <testking.com>. The outreach of the Complainant’s services is worldwide.
The Panel finds it hard to accept the Respondent’s claim that he did not know of the Complainant, particularly when the website of the Respondent lists many of the same organisations conducting certification examinations for IT as does the Complainant’s website.
The distinctive word “king”—used in combination with the word “test” —is such as to make one very skeptical about the claim that the Respondent knew nothing of the Complainant when the disputed domain name was registered.
Operating a site by means of which a competitor’s products may be sold creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the location of or a product or service of the Respondent’s website or location. See Paragraph 4(b)(iii) of the Policy. The Respondent clearly engages in a pattern of facilitating the sale of goods competing with the Complainant’s website. This conduct has the effect of misleading internet users into thinking they are dealing with the Complainant. One can infer that the Respondent would receive “click through” fees.
Accordingly, the Complainant has satisfied the third limb of Para. 4(a) of the Policy.
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 <freetestkingdownload.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker, Presiding Panelist
Dated: November 30, 2010
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