Intertek Testing Services NA Inc. v. Ananth Reddy / Mind Q Systems Pvt Ltd
Claim Number: FA1410001582828
Complainant is Intertek Testing Services NA Inc. (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Ananth Reddy / Mind Q Systems Pvt Ltd (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etltestingonline.com>, registered with GODADDY.COM, LLC..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2014; the National Arbitration Forum received payment on October 1, 2014.
On October 2, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <etltestingonline.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 October 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@etltestingonline.com. Also on October 6, 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 October 20, 2014.
A timely Additional Submission was received and determined to be complete on October 27, 2014.
On October 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
i. The Complainant, Intertek Testing Services NA Inc, has been using the ETL mark in commerce since at least as early as 1927 in connection with product testing and certification services.
ii. The Complainant owns substantial common-law rights in its ETL Marks based on its substantial, continuous and extensive use and promotion of the marks since at least as early as 1942. Further, by virtue of Intertek’s efforts, the ETL marks have become famous.
In addition, Intertek owns numerous registrations for its ETL Marks in many countries, including the following representative examples of its U.S. registrations:
a. U.S. Trademark Reg. No. 0699548 for ETL; filed March 16, 1959; issued June 14, 1960; in International Class 42; claiming a first use date of 1942;
b. U.S. Trademark Reg. No. 1014974 for ETL; filed April 26, 1972; issued July 1, 1975; in International Class 42; claiming a first use date of 1942;
c. U.S. Trademark Reg. No. 0966730 for ETL (and Design); filed April 26, 1972; issued August 21, 1973; in International Class 42; claiming a first use date of 1942;
d. U.S. Trademark Reg. No. 0962076 for ETL (and Design); filed April 27, 1972; issued June 26, 1973; in International Class 16; claiming a first use date of 1927.
In addition, Intertek owns several federally-registered certification marks in the United States that relate to the exact type of testing services that Respondent purports to offer through its use of the disputed domain name, including the following representative registrations:
a. U.S. Trademark (Certification) Reg. No. 1458857 for ETL VERIFIED (and Design); filed July 29, 1985; issued September 22, 1987; covering Class A certification services; claiming a first use date of January 1984.
b. U.S. Trademark (Certification) Reg. No. 1874883 for ETL LISTED (and Design); filed April 15, 1992; issued January 17, 1995; covering Class A certification services; claiming a first use date of May 1992.
c. U.S. Trademark (Certification) Reg. No. 3025124 for ETL INTERTEK LISTED (and Design); filed September 24, 2003; issued December 13, 2005; covering Class A certification services; claiming a first use date of January 1973.
d. U.S. Trademark (Certification) Reg. No. 3038969 for ETL INTERTEK VERIFIED (and Design); filed September 24, 2003; issued January 10, 2006; covering Class A certification services; claiming a first use date of August 2003.
e. U.S. Trademark (Certification) Reg. No. 3971323 for ETL LISTED INTERTEK (and Design); filed October 19, 2009; issued May 31, 2011; covering Class A certification services;
claiming a first use date of September 2009.
Intertek’s trademark rights in its ETL Marks long predate the registration of the disputed domain name by Respondent.
iii. Respondent’s <etltestingonline.com> domain name is confusingly similar to Complainant’s ETL mark because Respondent has simply added the generic terms “testing” and “online” to the mark.
i. Respondent lacks rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the <etltestingonline.com> domain name. Respondent is neither licensed nor authorized to use the ETL mark.
iii. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
iv. Respondent is currently using the disputed domain name for a website on which Respondent claims to be a service provider for Complainant’s third-party product and technology testing services in order to pass itself off as a legitimate licensee or affiliate of Complainant.
i. Respondent uses the disputed domain name to attract Internet users to its own website for commercial gain and to disrupt Complainant’s business.
ii. Respondent had actual or constructive knowledge of Complainant’s rights in the ETL mark.
B. Respondent
i. The disputed domain name is made up of generic terms. ETL can have different meanings and is therefore not owned by Complainant.
b. b. Policy 4(a)(ii)
i. Respondent is providing a bona fide offering of services on the disputed domain name.
i. Respondent could not have acted in bad faith, because the disputed domain name is made up of generic terms and ETL is a common term of reference in the software and data sciences industry.
ii. The Intertek logo is only used on the website because of a previous business relationship with Intertek.
iii. Respondent is providing a bona fide offering of services on the disputed domain name.
C. Additional Submission by Complainant:
a. ETL does in this case not refer to a generic term as Respondent is using an exact copy of the “E” from Complainant’s stylized E mark to promote its own testing services and uses Intertek’s logo on its website.
b. Respondent promotes itself for services that do compete with Complainant. In fact, previously Respondent provided these very competing services to Complainant.
c. Respondent previously used the <mindqsystems.com> domain name, and the only reason for registering the disputed domain name is to create a link between Complainant and Respondent.
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.
Complainant is the holder of several U.S. registered trademarks concerning the term ETL. Complainant has not provided evidence of validly registered trademarks in Respondent’s country, India. The Panel notes that the Policy does not require Complainant’s mark to be protected in Respondent’s country. Therefore, the aforementioned U.S. registered trademarks are sufficient to initiate an action under the Policy against Respondent. See Kansas City Life Insurance Company v. Bryan Winstanley / Winstanley Internet Sales, FA 1560359 (Nat. Arb. Forum., June 27, 2014); see also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum., August 24, 2010).
The Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy 4(a)(i) i.e. that Complainant has showed rights in the ETL mark.
The disputed domain name consists of the term “etl”, which is the same letter combination as the Complainant’s registered trademarks, and the words “testing” and “online”. First, according to well-established consensus among panels, the mere addition of the gTLD “.com” is insufficient to differentiate a disputed domain name from a mark. Second, the Panel finds that the addition of the generic terms “testingonline” which the Panel notes are descriptive of the services offered under the ETL trademarks (i.e. various testing services) does not distinguish the disputed domain name from the ETL trademarks. Consequently the Panel finds that the disputed domain name <etltestingonline.com> is confusingly similar to the Complainant’s ETL marks pursuant to Policy 4(a)(i).
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), the burden of proof then shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The Panel finds that Complainant, with the WHOIS printout concerning the disputed domain name, has fulfilled its prima facie burden of proof that Respondent lacks rights or legitimate interests in the domain name <etltestingonline.com>.
Respondent has not claimed to have a right; therefore the Panel has only to access the question of legitimate interest.
Respondent claims to have a legitimate interest in the disputed domain name since it offers training in a data warehousing process that is abbreviated with the term “ETL”, which allegedly means “Extraction Transformation Loading” and third party software testing services with use of “Extraction Transformation Loading”. Respondent previously had Intertek India as a client and thus displays the Intertek logo on the website.
Considering Complainant’s numerous trademark rights in the mark ETL concerning testing services the Panel finds that Respondent’s assertions that ETL has made reference to the term “Extraction Transformation Loading” and that Respondent only have offered training services and testing services limited to software does not suffice to show that Respondent has a legitimate interest in the domain name <etltestingonline.com>.
Further, the Panel finds that Respondent cannot be considered to make a bona fide use of the domain name since the use of the Intertek logo and the parties’ previous business relationship, considered together with the Complainant’s rights in the mark ETL, is a very strong indicator that the Respondent had knowledge of the trademark ETL and its use in the field of testing services, prior to the registration of the disputed domain name.
The Panel therefore finds that Respondent has failed to overcome Complainant’s prima facie case and to show that it has rights or legitimate interests in the domain name <etltestingonline.com>.
Complainant argues that Paragraph 4 (b)(III)-(IV) of the Policy are applicable in this case and substantially asserts the following in support of its argumentation.
First, Complainant asserts that the Respondent’s registration and use of the disputed domain name constitutes bad faith under Paragraph 4 (b)(III) and alleges that Respondent uses the disputed domain name to disrupt Complainant’s business by increasing traffic to their website where Respondent provides competing testing services. In its additional submission Complainant alleges that Respondent has previously provided contract labor to Complainant to perform software testing services.
Second, Complainant asserts that Respondent’s use of the disputed domain name constitutes bad faith pursuant to Paragraph 4(b) IV since Respondent by using ETL in the disputed domain name and the Intertek logo and stylized E on the web site is attempting to benefit commercially from a likelihood of confusion with Complainant and its services.
Respondent asserts that the use and registration of the disputed domain name do not constitute bad faith. The basis for Respondent’s assertion is the same as discussed regarding the question of legitimate interest above. Namely, that Respondent is not offering any competing services and is acting in good faith since ETL refers to “Extraction Transformation Loading”. The Intertek logo is displayed on their website because of the earlier association with Intertek in India.
The Panel finds that the correspondence between Respondent and Intertek Hyderabad, dated November 25, 2013, which is before the registration of the disputed domain name, shows that Respondent must have had knowledge of Complainant and its area of business at the time of registration.
Further, the Panel finds that the correspondence additionally supports that Respondent is offering competing testing services within software testing since the Panel finds it unlikely that Intertek India would be interested in contracting labor from a company which does not perform services within their area of business.
Finally, the Panel finds that Respondent has intentionally and for commercial gain tried to benefit from the Intertek logo on its website and the use of the ETL mark, which has a clear connection to testing services, in the disputed domain name.
The Panel therefore finds that that Respondent’s use and registration of the disputed domain name <etltestingonline.com> has been conducted in bad faith as defined in Paragraph 4 (b)(iii) and (iv) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etltestingonline.com> domain name be TRANSFERRED from Respondent to Complainant
Jonas Gulliksson, Panelist
Dated: November 13, 2014
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