Freetech Services, Ltd. v. John Adword / SELFEXAMGINES
Claim Number: FA1408001574455
Complainant is Freetech Services, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., District of Columbia, USA. Respondent is John Adword / SELFEXAMGINES (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pass4sureofficial.com>, registered with ENOM, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
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 13, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <pass4sureofficial.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 August 13, 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@pass4sureofficial.com. Also on August 13, 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 September 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant uses the PASS4SURE mark to promote and sell IT certification test prep materials. Complainant has used the mark since in commerce since at least November 23, 2005. Complainant relies on the <pass4sure.com> domain, which Complainant registered on July 8, 2005. Complainant’s continued use since its inception has garnered notoriety in the world of computer software certification exams and affiliated organizations. Complainant holds a valid trademark registration of the PASS4SURE mark with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 7,191,953, registered December 28, 2010). The <pass4sureofficial.com> domain name, registered May 9, 2011, is confusingly similar to the PASS4SURE mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent’s use of the mark. Respondent uses the <pass4sureofficial.com> domain name to sell practice tests and preparation materials that directly compete with Complainant. Respondent’s efforts to mislead and divert users amounts to passing off.
Respondent has violated Policy ¶ 4(b)(iv) by attempting to mislead Internet users as to Complainant’s affiliation of Respondent’s website. From this confusion, Respondent is able to operate a competing site to offer knock-off practice certification exams.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 uses the PASS4SURE mark to promote and sell IT certification test preparation materials. Complainant claims to have used the mark in commerce as early as November 23, 2005. Complainant relies on the <pass4sure.com> domain, which Complainant registered on July 8, 2005. Complainant claims that it has garnered notoriety in the world of computer software certification exams and affiliated organizations. Complainant cites ownership of PASS4SURE mark via registration with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 7,191,953, registered December 28, 2010). Complainant was not the initial registrant of the mark, but rather it has acquired the mark through assignment. Still, the Panel finds that the SAIC registration and assignment satisfies the Policy ¶ 4(a)(i) rights requirement. See Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment); Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <pass4sureofficial.com> domain name is confusingly similar to Complainant’s PASS4SURE mark. Complainant argues the domain includes the PASS4SURE mark in full, and adds the term “official” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD is immaterial to the Policy ¶ 4(a)(i) analysis and that the generic term “official” fails to sufficiently distinguish the domain name from the included mark. See, e.g., Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity).
Complainant has proven this element.
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 it has not authorized Respondent’s use of the mark. The WHOIS record identifies “John Adword” of “SELFEXAMINES” as the domain registrant. In Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007), the panel concluded that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response. Here, Respondent has failed to submit a response contesting Complainant’s contentions. Accordingly, in light of the available evidence, the Panel finds that Respondent does not have the requisite association to support a Policy ¶ 4(c)(ii) finding in its favor.
Complainant argues that Respondent uses the <pass4sureofficial.com> domain name to sell practice test and preparation materials that directly compete with Complainant. The panel in Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), wrote, “The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Similarly, this Panel finds that Respondent’s use of the <pass4sureofficial.com> to sell exam preparation supplies in competition with Complainant does not give rise to any legitimate interest in the domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proven this element.
Complainant argues that Respondent has violated Policy ¶ 4(b)(iv) by attempting to mislead Internet users as to Complainant’s affiliation with Respondent. Complainant claims that through this confusion, Respondent is able to operate a competing site to offer knock-off practice certification exams. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant. This circumstances at present are comparable. As such, the Panel finds evidence of Respondent’s bad faith use and registration pursuant to Policy ¶ 4(b)(iv), based on Respondent’s use of the <pass4sureofficial.com> domain name to market competing products for commercial gain.
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <pass4sureofficial.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 24, 2014
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