Case No. D2005-1346

1. The Parties

The Complainant is ITIPS Ltd, Haslemere, Surrey, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Saeed Ahmed, Surrey, British Columbia of Canada.

2. The Domain Name and Registrar

The disputed domain name <actualtests2.com> is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2005. On December 28, 2005, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On December 28, 2005, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details and confirming that the language of the registration agreement is English.

An Amended Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2006. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Amended Complaint, and the proceedings commenced on January 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2006.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 13, 2006. 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, or a predecessor-in-title, registered the domain name <actualtests.com> in July 2001. It, and its predecessors-in-title, have been using the domain name since then to promote and sell its software for preparing for and passing various standardized exams such as the MCSE exams.

The Respondent registered the domain name, <actualtests2.com> on October 18, 2005. Prior to the filing of the Complaint, the domain name resolved to a website which reproduced the content from the Complainant’s website, including logos and taglines, as it existed at around the time the domain name was registered. See Annex 2 to the Complaint.

It would appear that, sometime shortly after the Complaint was initiated, the website to which the domain name resolved became inactive.

5. Discussion and Findings

As noted above, there has been no Response from the Respondent. The Center has emailed copies of the Complaint, including Annexures, to each of the email addresses provided by Melbourne IT as the Whois details for the Respondent.

The address details included in the Whois information do not include a fax number or a physical street or postbox address. The Center has couriered, however, a copy of the Complaint to the physical address of the Technical Contact provided in the Whois address.

The Respondent having failed to provide adequate physical or fax address details and having provided only an email address, the Panel finds that the Center has taken all appropriate steps to bring the Complaint to the Respondent’s attention and, in the circumstances, the Respondent has been given an adequate opportunity to respond.

There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as rule 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:

(i) The 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 domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Panel considers each of these in turn below.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to the trademark in which the Complainant has those rights.

The Complainant claims rights at common law in the trademark ACTUALTESTS.COM. It recognizes the inherent descriptiveness of the term, “actual tests,” and seeks to differentiate its mark from the descriptive term by reliance on the conjoining of the two words into one term. The Panel considers that this is far too slight a difference to constitute the sign as distinctive and, in any event, notes that common law rights derive from use and reputation. See e.g. Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; and Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322.

In support of its claim to common law rights, the Complainant alleges that it has had over 50,000 paid customers for its products since it commenced operations in July 2001. Annex 4 to the Complaint is stated to be a print out from the Complainant’s Merchant Control Center for the online credit card payments processor Paysystems.com. This shows that between September 2002 and August 2004 (apparently when Paysystems.com ceased trading), the Complainant and its predecessors had generated sales of USD$730,884 for its products.

In addition, Annex 6 shows that Metacharge.com, which replaced Paysystems.com as the Complainant’s online credit card payments processor) processed USD$68,789 from 841 customers in June 2005. Annex 7 shows the print out of the same information for November 2005: USD$60,174 from 805 customers.

The Complaint states that the Complainant’s customers come from all around the world.

The Complainant claims that the advertising expenditure by it and its predecessors is in the hundreds of thousands of dollars. It gives as a concrete example the banner advertisement and links on the independent “www.examnotes.net” website, an example of which is included in Annex 8. The Complaint states that the Complainant and its predecessors have been continuously advertising in this fashion on the “www.examnotes.net” website since June 2003. Random checks of the archive maintained at the Wayback Machine, “www.archive.org”, confirm this claim.

By way of further evidence of acquired secondary meaning, the Complainant points to evidence that its competitors include its trademark in their metatags. One such example is included in Annex 10. In addition, the Complainant notes that “warez” or “crack” sites now often provide copies of the Complainant’s software products “cracked” so that they can be used for free. An example of such use is included in Annex 11.

Having regard to the cumulative weight of this evidence, and the fact that it is not contested by the Respondent in any way, the Panel concludes that the Complainant has in fact established common law rights in ACTUALTESTS.COM as a trademark sufficiently for the purposes of the Policy.

The Respondent’s domain name differs from this trademark only by the addition of the figure “2”, <actualtests2.com>. The Complainant contends that people browsing the Internet are likely to conclude that a website at, and operating under, this domain name will likely consider it to be a second or alternative to the known site. The Panel agrees and has no difficulty at all in concluding, therefore, that the Respondent’s domain name is confusingly similar to the Complainant’s common law trademark. See also Slipknot, Inc v. For Sale, WIPO Case No. D2001-1099.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The instances are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.

In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.

The Complainant states that no relationship exists between it and the Respondent. It also points out that the domain name is not the Respondent’s own name. Nor does it have any obvious relationship to the Respondent’s name.

Further, the Complainant alleges that the Respondent’s website blatantly copies the content of the Complainant’s website, including logos and taglines, without any authority from the Complainant with the evident purpose of diverting custom from the Complainant to the Respondent.

These factors are sufficient to raise a prima facie case against the Respondent sufficient to cast an onus on the Respondent to rebut the inference that it has no rights or legitimate interests in the domain name.

The Respondent has failed to avail itself of that opportunity which, in accordance with paragraph 14(b) of the Rules, leads to an inference that the Respondent cannot provide a basis from which to claim it has rights or legitimate interests in the domain name.

Accordingly, the Panel finds that, on the basis of this record, the Complainant has established that the Respondent does not have rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

b. Evidence of Registration and Use in Bad Faith.

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

These are examples of “bad faith” only and not an exhaustive listing as they are listed “without limitation”.

Under this head, the Complainant relies on the confusing similarity of the domain name to the Complainant’s own domain name and trademark, the notoriety of the Complainant’s trademark and the blatant copying of the Complainant’s website on the website to which the domain name resolved.

These factors clearly lead to an inference that the domain name was registered and, until the Complaint was served, was being used to disrupt the Complainant’s business or to divert Internet users from the Complainant’s website to the Respondent’s website.

The Complainant further alleges that unauthorized materials could be purchased from the Respondent’s website in competition with the Complainant’s materials.

The Respondent has not sought to deny these allegations or otherwise to justify his registration and use of the domain name.

In these circumstances, the Panel finds that the inference is open, and can appropriately be drawn, that the Respondent has registered and used the domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <actualtests2.com>, be transferred to the Complainant.

Warwick A Rothnie
Sole Panelist

Dated: March 17, 2006