The Complainant is TestOut Corporation of Pleasant Grove, Utah, United States of America ("United States"), represented by Thorpe North & Western, United States.
The Respondent is Shah Ali of Lahore, Pakistan. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2017. On October 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 11, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 of the Complaint, and the proceedings commenced on October 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 7, 2017.
The Center appointed John Swinson as the sole panelist in this matter on November 14, 2017. 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
The Complainant is TestOut Corporation, a company which provides information technology ("IT") training products and services to prepare IT professionals to pass industry certifications exams. The Complainant launched its business in 1991. According to the Complaint, over the last 20 years, the Complainant's business has expanded internationally and has offices in the United States, United Kingdom of Great Britain and Northern Ireland, Colombia, Australia, the Philippines and India.
The Complainant owns United States registered trade mark number 2724334 for TESTOUT (the "Trade Mark") which was registered on June 10, 2003. According to the Complaint, the Complainant has been offering software using the Trade Mark since 1994.
The Complainant owns a domain name which incorporates the Trade Mark, being , at which it provides its products and services (the "Complainant's Website"). This was registered on February 26, 1998.
The Respondent is Shah Ali, an individual of Pakistan and the registered owner of the Disputed Domain Name. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on May 5, 2014. At the time the Complaint was filed, the website associated with the Disputed Domain Name provided IT certification test preparation materials which appeared to be operated by an entity also named TestOut. At the time of this decision, the Disputed Domain Name redirects to a website at the domain name (the "Respondent's Website"). 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions. Identical or confusingly similar
The Top-Level Domain ("TLD") is a standard registration requirement and as such is disregarded for the purposes of determining whether the Disputed Domain Name is identical or confusingly similar to a trade mark. When disregarding the TLD ".co", the Disputed Domain Name is identical to the Trade Mark. No rights or legitimate interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent registered the Disputed Domain Name more than 16 years after the Complainant registered the domain name for the Complainant's Website and 20 years after the Complainant first started using the Trade Mark.
The Complainant has never authorised the Respondent to use the Trade Mark, endorsed the Respondent or the Respondent's registration of the Disputed Domain Name, or had any affiliation with the Respondent or the Disputed Domain Name. On August 17, 2017, the Complainant's counsel sent a cease and desist letter to the Respondent.
The Complainant has conducted reasonable searches and cannot find any evidence that the Respondent has been known or identified by the Disputed Domain Name or the Trade Mark.
Further, the commercial nature of the Respondent's Website shows that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The use of the Disputed Domain Name to provide IT certification study materials similar to those provided by the Complainant strongly suggests that the Respondent is attempting to profit from the reputation and goodwill in the Trade Mark by diverting the Complainant's customers. Registered and used in bad faith
By using the Disputed Domain Name for a website which uses the Complainant's name and offers the same products, the Respondent has registered the Disputed Domain Name for the purpose of competing against the Complainant and disrupting the Complainant's business. Panels have previously found that similar behavior is deemed to be registration and use of a domain name in bad faith.
The Respondent's registration and use of the Disputed Domain Name demonstrates an intentional attempt to attract Internet users to the Respondent's Website for commercial gain by creating a likelihood of confusion between the Trade Mark and the source, sponsorship or affiliation of the Disputed Domain Name. Due to the identical nature of the Disputed Domain Name and the Trade Mark, Internet users looking for the Complainant's products and services could clearly be deceived with respect to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent's failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013‑2059). However, the Panel may draw appropriate inferences from the Respondent's default. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel is satisfied that the Complainant satisfies the threshold requirement of having rights in the Trade Mark (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
The Panel considers that the Disputed Domain Name is identical to the Trade Mark. In this case, the generic Top-Level Domain ("gTLD") ".co" is immaterial in assessing confusing similarity under the Policy and may be ignored.
The Complainant is successful on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in a name or trade mark which is similar to the Trade Mark.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services. At the time the Complaint was filed, the website associated with the Disputed Domain Name provided products similar to those provided by the Complainant and appeared to be provided by an entity of the same name as the Complainant. At the time of this decision, the Disputed Domain Name redirects to a website at the domain name which appears to be substantively the same as the website at the Disputed Domain Name at the time the Complaint was filed, but references to "TestOut" have been replaced with "CertsOut". Further, the Panel accepts the Complainant's assertions that the Respondent is using the Disputed Domain Name to profit from the reputation and goodwill of the Trade Mark. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Disputed Domain Name is identical to the Trade Mark which carries a high risk of implied false affiliation (see section 2.5.1 of the WIPO Overview 3.0). Further, based on the evidence provided by the Complainant, the Panel considers that the Respondent is using the Trade Mark to redirect Internet users to the Respondent's Website, a competing site, which does not confer rights or legitimate interests on the Respondent (see section 2.5.3 of the WIPO Overview 3.0).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
The Complainant has held registered rights in the Trade Mark since June 10, 2003 which pre-dates registration of the Disputed Domain Name by over 10 years. The Complainant likely had common law rights in the Trade Mark well before this time.
The Respondent clearly had knowledge of the Trade Mark at the time of registering the Disputed Domain Name. The Panel finds that the Respondent sought to take unfair advantage of the reputation of the Complainant's business and the Trade Mark, and registered the Disputed Domain Name because of this reputation.
The Panel considers that the effect of the Respondent's registration and use of the Disputed Domain Name was to attract, for commercial gain, Internet users to the Respondent's Website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's Website. The Respondent is using the Complainant's Trade Mark in the Disputed Domain Name to redirect Internet users to the Respondent's Website which provides services which compete with those of the Complainant. This is evidence of bad faith registration and use (see paragraph 4(b)(iv) of the Policy).
Further, at the time the Complaint was filed, the Respondent's use of the Trade Mark in the website at the Disputed Domain Name was a clear attempt to deceive Internet users into believing that the Respondent's Website is the Complainant's or at least associated with the Complainant. At some point between the Complaint being filed and the time of this decision, the Respondent has changed direct references to the Trade Mark to "CertsOut". This is not sufficient to avoid a finding of bad faith registration and use. In fact, the Panel considers this conduct contributes to a finding of bad faith use as it shows that the Respondent is aware he has been taking unfair advantage of the Trade Mark.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element of the Policy. 7. Decision
For 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 be transferred to the Complainant.
John Swinson
Sole Panelist
Date: November 28, 2017
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