The aged domain TestBusters.com existed a dozen years before Testbusters S.r.l., Italy, formed.
The Italian company filed a UDRP to usurp the domain. The Respondent in this case pointed out his domain is 12 years senior to the Complainant’s own corporation, and yet, the sole panelist at the WIPO did not declare a finding of Reverse Domain Hijacking, asserting the Complainant was not aware of the domain’s past history.
Not being aware is not an excuse, as the Complainant had legal representation in this case. In our opinion, the WIPO panelist delivered a mere slap on the Complainant’s wrist, merely denying the domain’s transfer but not declaring a finding of RDNH.
The domain transfer was denied.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Testbusters S.r.l. v. Vivek Israni, Test Masters Educational Services, Inc.
Case No. D2021-13541. The Parties
The Complainant is Testbusters S.r.l., Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Vivek Israni, Test Masters Educational Services, Inc., United States of America (“United States”), represented by Pirkey Barber PLLC, United States.
2. The Domain Name and Registrar
The disputed domain name <testbusters.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2021. On May 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 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 May 5, 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 amended Complaint on May 7, 2021.
The Center verified that the Complaint, together with the amended 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 May 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. On May 26, 2021, the Respondent contacted the Center requesting an extension to the Response due date. Pursuant to paragraph 5(b) of the Rules, on May 26, 2021, the Center notified the Parties that the Response due date was extended until May 31, 2021. The Response was filed with the Center on May 29, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 3, 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
Founded in 2012, the Complainant is an Italian training company and publishing house specializing in the preparation for admission tests to limited enrolment degree courses of medicine, dentistry, veterinary medicine, and health or scientific professions. The Complainant’s services are provided across Italy and the Complainant employs 400 teachers in 26 Italian cities. The Complainant is the owner of the domain name <testbusters.it>, created on October 15, 2012.
The Complainant is the owner of two registered trademarks featuring the term “Testbusters”. The earlier of these is Italian registered trademark No. 302017000032473 for a figurative mark consisting of a variation on the “Ghostbusters” theme being a “ghost doctor” with stethoscope over which a red circular prohibition-style road sign with diagonal bar is superimposed, beside which is the word “Testbusters” in a large all-capitalized typeface above the words “Studenti Per Gli Studenti” in a smaller all-capitalized typeface. This mark was registered on February 28, 2018, in class 41. The later mark is European Union registered trademark No. 18362416 for a similar figurative mark featuring the same wording in similar typeface but with a differently rendered logo of the “ghost doctor” entirely in red, which omits the diagonal bar of the prohibition road sign. This mark was registered on April 22, 2021, in classes 9, 16, and 41.
According to the WhoIs record supplied by the Complainant, the disputed domain name was created on April 17, 2000. The website associated with the disputed domain name uses the Registrar’s “CashParking” solution and features pay-per-click advertising from which the Respondent claims to have earned USD 19.60 to date. The top link when accessed from the Complainant’s location is “Preparazione Test Medicina”, which ultimately points to what the Complainant says is one of its competitors’ sites. There is a bar at the top of the page which states, “Interested in this domain?” and which, if clicked, takes the user to a web form page inviting the user to “Use this form to submit an inquiry to the owner of this domain”. At the foot of the page is a disclaimer in smaller text which states “This form is for inquiry purposes only. Any information provided in this form does not constitute an offer to sell this domain name, and the registrant of this domain name is not otherwise stating any intention to sell the name […]”.
For the purposes of this Decision, the Respondent and the Respondent’s company may be treated as one and the same. Unless otherwise stated, references to “the Respondent” hereafter refer to both Respondents collectively. The Respondent, Test Masters Educational Services, Inc., was established in 1991. It offers test preparation products from kindergarten to graduate school to professional exams, including materials designed to help improve scores on various standardized tests. The Respondent does not produce medical courses. The Respondent offers its goods and services under the United States federally-registered TESTMASTERS trademark, No. 4224421, registered on October 16, 2012, in class 41. The Respondent also uses the domain name <testmasters.com>, which it registered on October 11, 1995. The Respondent was engaged in litigation for some 20 years with regard to its TESTMASTERS trademark and <testmasters.com> domain name (see, for example, Test Masters Educ. Servs., Inc. v. Robin Singh Educ. Servs., Inc., 799 F.3d 437 (2015), which recounts four of the lawsuits concerned as “Testmasters I – IV”). The Respondent registered the disputed domain name in 2000 due to the then-ongoing uncertainty arising from the litigation, in order to use it in connection with the name “Testbusters” for its products in certain geographic regions and markets.
Between 2000 and 2005, the Respondent used the disputed domain name to redirect consumers to its website at <testmasters.com> (evidence provided from the Internet Archive “Wayback Machine”). The Respondent also attests that it used the disputed domain name for email addresses, though does not provide evidence of this. Beginning in 2005, the Respondent activated a registrar parking service for the disputed domain name and continued to maintain and renew it. The Respondent asserts that it has never offered the disputed domain name for sale and has never responded to the multiple enquiries which it has received over the years from interested parties wishing to purchase it.
The Complainant used the said webform inquiry page on the Respondent’s website to make contact with the Respondent proposing a purchase of the disputed domain name for EUR 350. The Respondent did not reply to such inquiry.
5. Parties’ Contentions
A. Complainant
The Complainant contends as follows:
Identical or confusingly similar
Numerous UDRP panels have held that a domain name is confusingly similar to a company’s name and trademark where, as here, the domain name incorporates that whole company name and trademark. The Top-Level Domain cannot mitigate the confusion between the Complainant’s TESTBUSTERS trademark and the disputed domain name. When confronted with the disputed domain name, Internet users will focus their attention on the “testbusters” element and confuse this with the Complainant’s trademark.
Rights and legitimate interests
The Respondent has no rights in the TESTBUSTERS trademark and holds no corresponding applications or registrations. The Complainant has not authorized the Respondent to register the disputed domain name. The disputed domain name is being used to attract current and potential customers of the Complainant. The disputed domain name is not used in connection with a bona fide offering of goods or services but only with regard to hyperlinks relating to other services. These take advantage of the trademark value of the disputed domain name and trade on the Complainant’s goodwill. There is no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The disputed domain name contains the link to a form to submit an inquiry to the owner regarding the purchase of the disputed domain name. The only possible purpose of the disputed domain name is to promote third party sites for commercial gain.
Registered and used in bad faith
The disputed domain name was registered in bad faith because there is no connection between the Complainant and Respondent, and the disputed domain name is not used in good faith for the offer of goods and services to the public or for legitimate noncommercial or commercial use without the intention to mislead the Complainant’s customers. The disputed domain name leads to competitive hyperlinks and a purchasing offer page, which offer indicates that the disputed domain name was registered with intent to sell it to the Complainant or a competitor. Passive holding is also applicable. The term “testbusters” is not a common or descriptive term but a trademark in which the Complainant has rights and an increasing reputation. Such term is the only distinctive component of the disputed domain name. It is improbable that the Respondent does not know of the Complainant since the first hyperlink on the corresponding website relates to one of the Complainant’s major competitors. The Respondent failed to reply to an attempt at negotiations by the Complainant. The Respondent is also taking advantage of the increasing reputation of the Complainant’s trademark to create a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Respondent’s website.
B. Respondent
The Respondent contends as follows:
Identical or confusingly similar
The Complainant’s trademark is not for TESTBUSTERS alone, nor does it show use thereof, but rather for TESTBUSTERS STUDENTI PER GLI STUDENTI and device. The Complainant’s argument that the disputed domain name is confusingly similar to its asserted mark rests on a faulty foundation and the panel should not dissect the mark and focus on the use of “Testbusters” alone. The Complainant’s mark includes the stylization of a ghost figure which is a play on the world-famous “Ghostbusters” franchise of movies and related merchandise. The source-identifying function of the mark is inextricably tied to that element and the design element comprises the dominant portion of the relevant mark such that it effectively overtakes the textual element in prominence. Any comparison with the disputed domain name should be with the mark as a whole, including the ghost figure design element, and the Panel should conclude that this fails to establish confusing similarity.
Even if the design element is ignored, “testbusters” is the dominant portion of the mark and such term is weak because others also use it, including an entity in the United Kingdom which owns a corresponding registered trademark. The Complainant cannot argue that such term is famous in a trademark sense. The Complainant also uses the term inconsistently.
Rights or legitimate interests
The Respondent’s evidence conclusively establishes its rights and legitimate interests in the disputed domain name. The Respondent registered the disputed domain name as a precaution, lest it be ordered by a court to relinquish <testmasters.com>. This was duly ordered, although overturned on appeal. The registration took place a decade before the Complainant began its business and almost two decades before it registered its marks. The Respondent used the disputed domain name to redirect to the website at its primary domain name for five years before the Complainant existed. The Complainant’s argument that the Respondent lacks rights and legitimate interests in the disputed domain name focuses entirely on the presence of paid links and fails to account for the history of the Respondent’s registration and use of the disputed domain name. The costs to maintain the disputed domain name exceed the financial gain to the Respondent and it would be economically irrational for the Respondent to maintain the disputed domain name purely to profit from such paid links.
Registered and used in bad faith
The Respondent’s lack of bad faith is demonstrated in the Complaint itself. The Respondent registered the disputed domain name 12 years before the Complainant’s business existed and before the Complainant’s trademark rights accrued. The Respondent has no interest in selling the disputed domain name. The Registrar has provided an option to list the disputed domain name for sale which the Respondent has declined to select. The link referred to by the Complainant allows an inquiry to be submitted to the owner of the disputed domain name “in case you are interested in buying that domain”. This is a means to contact the Respondent provided by the Registrar and does not mean that a registrant must be trying to sell its domain name.
The Complainant cannot credibly argue in favor of bad faith under paragraphs 4(b)(ii) and 4(b)(iii) of the Policy because its business did not exist in 2000. The Respondent’s registration is rooted in legitimate business purposes. The Respondent is not one of the Complainant’s competitors. Although there is circumstantial evidence regarding paragraph 4(b)(iv) of the Policy, arising from the use of the disputed domain name as a parking page, that evidence is wholly inadequate, given that the Respondent parked the disputed domain name in 2005, years before the Complainant existed. The Complainant’s evidence establishes that it operates only in Italy and it does not argue that its mark is famous or even known outside that country. The Respondent operates in the United States and has never marketed its products in the Italian marketplace. The Respondent does not intend to profit from confusion with the Complainant.
Reverse Domain Name Hijacking
The Respondent requests a declaration of reverse domain name hijacking. The Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements of the Policy and had clear knowledge of a lack of the Respondent’s bad faith. The Complainant knew the registration date of the disputed domain name and expressly referenced this in its Complaint. The Complainant knew its business began 12 years later and that its earliest trademark issued 17 years later. The Complainant is represented by counsel who should be deemed to have knowledge of the applicable rules.
The Complainant’s decision to file its Complaint notwithstanding its knowledge of the Respondent’s prior registration of the disputed domain name was “an abuse of the administrative proceeding” and the Panel should so declare.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
A. Identical or Confusingly Similar
On this topic, the Complainant relies upon its registered trademark as described in the factual background section above. The Respondent challenges whether the disputed domain name can be considered to be confusingly similar to such mark given that, first, a significant component of the mark is in its graphical element and, secondly, even if the words in the mark are severable from the graphical element, the dominant portion of the mark is TESTBUSTERS, which is weak because others use it.
The Panel does not agree with the Respondent that the graphical element is not severable from the word elements of the Complainant’s mark for the purposes of the comparison exercise. The Panel does not consider that the graphical element is so dominant that it effectively overtakes the textual elements in prominence (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In these circumstances, the comparison is between “testbusters”, the second level of the disputed domain name (the generic Top-Level Domain (“gTLD”), in this case “.com”, being typically disregarded in the comparison exercise) and the word elements of the Complainant’s figurative mark TESTBUSTERS STUDENTI PER GLI STUDENTI.
On the comparison exercise, it could not be argued that the entirety of the Complainant’s mark is recognizable in the disputed domain name. The Parties however seem to be agreed that the TESTBUSTERS element is the most dominant aspect. Bearing in mind that a translation of the word elements of the Complainant’s mark is “Testbusters Students for Students”, the Panel is not convinced that the disputed domain name is indeed confusingly similar, even if the TESTBUSTERS element is the most dominant. The other words seem to the Panel to be integral to the mark and indeed to the essence of the Complainant’s offering, based on the description of its services in the Complaint. In any event, in light of its finding on the third element of the Policy, the Panel does not require to reach a definitive ruling on this question.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, discussed below, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The requirement that the disputed domain name “has been registered and is being used” in bad faith is a conjunctive requirement, meaning that both of these elements must be proven by the Complainant. While attempts have historically been made to imply retroactive bad faith in certain cases, current UDRP jurisprudence is clear that no such approach is permissible and that the respondent must be shown to have known of, and to have targeted, the complainant’s trademark at the date of registration of the disputed domain name for the purposes of the third element of the Policy (see: Reboxed Limited v. Adesoji Adeyemi, WIPO Case No. D2021-0886).
In the present case, it is impossible for the Respondent to have been targeting the Complainant when it registered the disputed domain name in 2000 as the Complainant did not exist at that time. Furthermore, the Respondent has provided ample evidence of its reasoning for selecting and registering the disputed domain name at the time when it chose to do so. In these circumstances, the Complainant has failed to prove that the disputed domain name was registered in bad faith and the Complaint therefore fails.
In light of its finding regarding registration in bad faith, the Panel does not require to determine the issue of use in bad faith, given the conjunctive nature of the third element under the Policy.
D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) in the present case. The definition of RDNH in the Rules is “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. It is generally accepted that mere lack of success of a complaint is not itself sufficient for such a finding. Further discussion as to the nature of RDNH and examples of certain past cases under the Policy in which it has been found are detailed in section 4.16 of the WIPO Overview 3.0.
The Respondent’s submissions on this topic appear on a superficial level to make out a case on the basis of which a finding of RDNH could be made. The Respondent points out that the Complainant was aware of the fact that the disputed domain name predated the registration of the Complainant’s trademarks and even predated its own existence, by a considerable margin in each case. The Respondent correctly points to section 4.16 of the WIPO Overview 3.0 as described above and submits that, in similar circumstances, findings of RDNH have been made in previous cases.
The Panel considers that the actions of the Complainant in this particular case do not quite merit a finding of RDNH, albeit that it is a close call. Importantly, the disputed domain name was parked with pay per click links which targeted the Complainant’s rights and which, at least if accessed from Italy, were pointing visitors towards one of the Complainant’s major competitors. Therefore, at first sight, the Complainant had reason to believe that the use of the disputed domain name was presently abusive in nature – something that would not reasonably be expected from a party with a commercial reason for defensively holding the disputed domain name.
The net effect of the Respondent’s position on RDNH is that notwithstanding the appearance of such clear and present targeting, the Complainant should have focused all of its attention on the age of the disputed domain name and triggered a detailed investigation into its history, given that the registration date evidently predated the Complainant’s existence. In the specific circumstances of the present case, the Panel is of the view that this constitutes an unrealistic counsel of perfection. The Panel notes in this respect that the disputed domain name does not correspond to the Respondent’s business name, so the connection may not be obvious for one not familiar with the cited litigation. The Panel moreover considers that the use of the “CashParking” solution by the Respondent which, however inadvertently from the Respondent’s perspective, pointed Italian visitors arriving at the Respondent’s website on to one of the Complainant’s major competitors formed a reasonable basis for the Complainant to launch the administrative proceeding. The present case illustrates that such solutions, even if deployed by a registrant with a bona fide basis for holding a domain name, can be globally indiscriminate in effect and it is this that ultimately led to the Respondent being on the receiving end of the Complaint.
If there is any criticism to be made of the Complainant, it is the fact that it did not send the typical style of demand notice to the Respondent rather than make the enquiry regarding a possible purchase of the disputed domain name. With the benefit of hindsight, a formal demand might have caused the Respondent to come forward and explain its position before a Complaint was filed. Had the Complainant then persisted with the Complaint, that might have merited the finding of RDNH which the Respondent seeks. However, the fact remains that when the Complaint was launched, the Complainant did not know any of the complex history and background to the disputed domain name. The Panel is of the opinion that the fact that the Complainant viewed the direct targeting of its mark and likely confusion caused by the Respondent’s website to warrant a Complaint under the Policy is not unreasonable in the specific circumstances of this case and did not constitute use of the Policy in bad faith in an attempt to deprive the Respondent of the disputed domain name.
In all of the above circumstances, the Respondent’s request for a finding of RDNH is denied.
7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: June 17, 2021
