The Complainant is ACT, Inc., United States of America (“United States”), represented by Sheppard, Mullin, Richter & Hampton LLP, United States.
The Respondent is 马程遥 (Max Will), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2021. On September 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on September 29, 2021.
On September 24, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 24, 2021, the Respondent transmitted an email in Chinese to the Center enquiring about the details of the proceeding. On September 29, 2021, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceeding commenced on October 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified Parties that it would proceed to panel appointment on November 3, 2021.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 25, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background A. ComplainantThe Complainant is a company incorporated in the State of Iowa in the United States and a provider for over 60 years of assessments and related services to assist with higher education admission, under the trade mark ACT (the “Trade Mark”).
The Complainant is the owner of registrations for the Trade Mark, including United States registration No. 2,888,069, with a registration date of September 28, 2004; and United States registration No. 4,517,656, with a registration date of April 22, 2014.
The Complainant provides its services under the Trade Mark via its website at “www.act.org”.
B. RespondentThe Respondent is apparently an individual resident in China.
C. The Disputed Domain NameThe disputed domain name was registered on March 9, 2015.
D. The Website at the Disputed Domain NameThe disputed domain name is resolved to an English language website providing for download unauthorised “free” copies of the Complainant’s ACT tests (the “Website”).
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith.
B. RespondentExcept for his email communication dated September 24, 2021, enquiring about the details of the proceeding, the Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingThe language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for several reasons, including the fact that the Website is an English language website.
Apart from the email communication dated September 24, 2021, the Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language, including the fact that the Website is in English and the disputed domain name is composed of English words such as “crack”. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2. Substantive Elements of the PolicyThe Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7), prefaced by the word “crack” – meaning, amongst other things, “very good or skillful”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The broader case context – namely the Respondent’s use of the Website to trade off the reputation of the Complainant in its Trade Mark – also supports a finding of confusing similarity (see WIPO Overview 3.0, section 1.7).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been resolved to the Website, containing unauthorised copies of the Complainant’s ACT tests, and infringing both the Complainant’s Trade Mark and the Complainant’s copyright in its ACT tests, for commercial gain by way of monetized pop-up advertisements for unrelated third party products and services.
The Complainant, fairly, points out that the following disclaimer (the “Disclaimer”) appears at the bottom of the Website:
“ACT® is a registered trademark of ACT, Inc., which was not involved in the production of, and does not endorse, this product.”
The Panel finds that, in all the circumstances, the Respondent is unable, for the purposes of the Policy, to establish rights or legitimate interests in the disputed domain name by virtue of this Disclaimer, as the Respondent has not been authorised by the Complainant to offer free downloads of the Complainant’s ACT tests on the Website; and the Website prominently offers for download “Real ACT Tests”, which suggests affiliation with, sponsorship by or approval by the Complainant, contrary to the fact. Further, the Panel notes that the Website also purports to offer preparation for tests apparently not developed by the Complainant, such as “SAT Prep” and “AP Exam Prep”.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithIn light of the evidence of the Respondent’s use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy. Further, the mere existence of the Disclaimer at the bottom of the Website cannot cure such bad faith established by the overall circumstances of this case, rather it may be considered as an admission by the Respondent that users may be confused (see WIPO Overview 3.0, section 3.7).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name
Sebastian M.W. Hughes
Sole Panelist
Dated: December 9, 2021