Freetech Services, Ltd. v N/A
Claim Number: FA1408001574454
Complainant is Freetech Services, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., District of Columbia, USA. Respondent is N/A (“Respondent”), represented by Karen J. Bernstein of Bernstein IP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pass4sureexam.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable Charles K. McCotter Jr., (Ret.), Honorable Neil Anthony Brown, Q.C., and James A. Carmody, Esq., (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 11, 2014; the National Arbitration Forum received payment on August 11, 2014.
On August 12, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <pass4sureexam.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@pass4sureexam.com. Also on August 12, 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.
A timely Response was received and determined to be complete on September 16, 2014.
On September 24, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Charles K. McCotter Jr., (Ret.), Honorable Neil Anthony Brown, Q.C., and James A. Carmody, Esq., (Chair) as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant has a device mark registration with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 7,191,953, registered December 28, 2010). Complainant was assigned the rights within and underlying this SAIC mark in April 13, 2014. Complainant has used PASS4SURE.COM to offer its IT certification preparation materials since November 23, 2005. Complainant first registered the <pass4sure.com> domain name on July 8, 2005, several months before the mark’s commercial use. The disputed domain name is confusingly similar in that Respondent merely adds “exam” (a descriptive term related to products sold by Complainant) and the generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent uses the <pass4sureexam.com> domain name which associates with a website designed to convince Internet users they are buying legitimate PASS4SURE.COM study material when, in reality, Complainant has absolutely no control over the quality or nature of the materials sold through the disputed domain name or its associated website.
Respondent is trying to pass itself off as Complainant by selling competing test preparation materials through the <pass4sureexam.com> domain name in a manner that is likely to cause confusion amongst Internet users as to the source or origin of the products sold.
B. Respondent’s Contentions
Complainant’s rights are suspect. First, the <pass4sure.com> domain name is shrouded by a privacy service making it unclear who really owns this domain name. Second, the contact information for Complainant is that of its law firm and there is no evidence as to who or what exactly Complainant is. Third, the trademark provided is merely a SAIC device mark and the translated assignment is not sworn or certified to attest to the truth of the claim made by Complainant that it does own the trademark. Further, there is no evidence of the entity with which this assignment has been filed, the assignment does not list the assignor, the alleged assignor never signed the assignment, and there was no identifying information provided in the Complaint. To add to all of this, the mark that Complainant is now using is distinctively different from the PASS4SURE design and device mark registered with the SAIC. Complainant can no longer rightfully say it has trademark rights when the critical component of the trademark registration—the appearance of the mark rather than the words in the mark—is no longer being used. Finally, the registrars of the United Kingdom, Korea, Japan, and the United States have thus far not recognized any PASS4SURE mark for Complainant (attaching correspondence noting that Complainant has withdrawn several trademark applications).
Respondent also claims that generic nature of the domain name bars a finding of confusing similarity.
Respondent has rights to use this domain name to market its test preparation materials because it is using the phrase “pass 4 sure” in the descriptive sense. Complainant’s “passing off” claims are irrelevant here as they touch upon findings that must be made by a court of competent jurisdiction applying the applicable substantive trademark law precepts.
Respondent could not have registered or used this domain name in bad faith. There can be no bad faith registration when the trademark registration provides suspect basis for longstanding rights and Respondent has used the domain name since May 8, 2013. There is no bad faith use in that Respondent merely sells exam preparation materials through a descriptive domain name.
Complainant has embarked on a course of reverse domain name hijacking. Complainant knew or should have known it lacked sufficient rights in any trademark. Complainant is merely seeking to defeat the business of its competitors through the UDRP rather than in the open marketplace.
C. Additional Submissions
Complainant and Respondent filed Additional Submissions which were considered by the Panel.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
The Panel determines that this dispute falls outside the scope of the Policy, and therefore chooses to dismiss the Complaint. That practice has been followed in appropriate circumstances by prior UDRP panels. For example, in Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000), the panel indicated that legitimate disputes not falling within the ambit of the UDRP should be decided by the courts:
“The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.”.
In particular, previous panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes. See, e.g., Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”). Therefore, the Panel chooses to dismiss the instant Complaint.
Reverse Domain Name Hijacking
The Panel declines to make a finding of Reverse Domain Name Hijacking under the circumstances.
Having found that the subject matter of the current case would not be appropriately disposed of by the UDRP, the Panel concludes that this case shall be dismissed and relief shall be DENIED without prejudice to any proceeding that may be brought in another forum.
Accordingly, it is Ordered that the <pass4sureexam.com> domain name REMAIN WITH Respondent.
Honorable Charles K. McCotter Jr., (Ret.), Honorable Neil Anthony Brown, Q.C., and James A. Carmody, Esq., (Chair) as Panelists.
James A. Carmody, Esq. (for the Panel)
September 29, 2014
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