ACT, Inc. v Domain Administrator, See PrivacyGuardian.org / max ma

WIPO Case No. D2022-1638

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

ACT, Inc. v. Domain Administrator, See PrivacyGuardian.org / max ma

Case No. D2022-1638

1. The Parties

The Complainant is ACT, Inc., United States of America (“United States”), represented by Davis Graham &

Stubbs LLP, United States.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / max ma, China.

2. The Domain Names and Registrar

The disputed domain names <acter.org>, and <crackacc.com> are registered with NameSilo, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2022.

On May 6, 2022, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On May 6, 2022, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain names,
which differed from the named Respondent and contact information in the Complaint. The Center sent an
email communication to the Complainant on May 9, 2022, 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 13, 2022.

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 the due date for Response was June 9, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on June 10, 2022.

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The Center appointed Adam Taylor as the sole panelist in this matter on June 20, 2022. 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

For some 60 years, the Complainant has supplied tests / assessments to assist with “college and career readiness” under the mark “ACT”.

The Complainant owns a number of trade mark registrations for ACT, including United States registration

No. 2,888,069, filed on April 27, 1999, registered on September 28, 2004, in classes 9, 16, 41 and 42.

The Complainant operates a website at “

The disputed domain name <acter.org> was registered on September 14, 2016, and the disputed domain name <crackacc.com> was registered on September 24, 2021.

As of April 20, 2022, the disputed domain names both resolved to similar websites that were branded

respectively with similar “ACTer.org” and “CrackACC.com” logos and purported to offer a range of “ACT” practice tests for download under headings such as “ACT Test Downloads_ACT Past Papers Download”. and “Real ACT Tests Pdf Download”.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The Complainant owns common law rights in the term “ACT” in addition to its registered trade marks.

The disputed domain names are confusingly similar to the Complainant’s trade mark, which they incorporate.

The Respondent lacks rights or legitimate interests in the disputed domain names.

The Complainant has not authorised the Respondent to register the disputed domain names, or to use its trade marks or copyrights, or to resell its products.

The Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the Respondent is trying to deceive users into thinking that the disputed domain names and related products and services are affiliated with the Complainant.

The disputed domain names were registered and are being used in bad faith.

The Respondent is attempting to profit from the goodwill and fame of the Complainant’s marks by creating a likelihood of confusion on the part of users searching for the Complainant’s goods and services. The

Respondent’s websites provide no disclaimer or other indication that it is not a provider of the Complainant’s

products or services.

The disputed domain names have been used in a manner that infringes the Complainant’s trade mark. The

Respondent has also infringed the Complainant’s copyright by providing copies of the Complainant’s own

tests for download.

The Respondent has engaged in a pattern of such activity.
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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant
has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

- the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established registered rights in the mark ACT, as well as unregistered trade mark

rights deriving from the Complainant’s extensive and longstanding use of that mark.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”) makes clear that the first element functions primarily as a standing requirement.

The test for confusing similarity involves a reasoned but relatively straightforward comparison between the

complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant

mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that
mark for purposes of UDRP standing.

As explained in section 1.7 of WIPO Overview 3.0, the overall facts and circumstances of a case, including relevant website content, may support a finding of confusing similarity in certain situations, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.

Section 1.8 of WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the
disputed domain name, the addition of other terms, whether descriptive, meaningless or otherwise, would
not prevent a finding of confusing similarity under the first element.

Here, the disputed domain name <acter.org> consists of the Complainant’s trade mark, together with the suffix “-er”, which does not prevent a finding of confusing similarity as explained above.

The disputed domain name <crackacc.com> consists of “acc”, which is phonetically similar to the

Complainant’s trade mark, prefixed by the term “crack”.

Furthermore, it is obvious from the content of the relevant websites, as described in section 4 above, that the

Respondent registered both disputed domain names precisely because he believed that they were

confusingly similar to the Complainant’s mark.

For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the

Complainant’s trade mark and that the Complainant has therefore established the first element of

paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

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Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.

As to paragraph 4(c)(i) of the Policy, for reasons explained in section 6C below the Panel considers that the Respondent has used the disputed domain names to intentionally attempt to attract, confuse and profit from

Internet users seeking the Complainant’s goods and/or services, including by use of the Complainant’s

copyrighted materials. Such use of the disputed domain names could not be said to be bona fide.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel considers that the Respondent has intentionally attempted to attract Internet users to its websites

for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark in accordance

with paragraph 4(b)(iv) of the Policy.

The Respondent has used the disputed domain names for websites that create the impression of an official

association with the Complainant including by prominent display of the Complainant’s mark, as well as by the

unauthorised use of what the Respondent describes as “Real ACT Tests”, namely the Complainant’s own

copyrighted materials.

The Complainant also asserts that the Respondent is connected with the respondent in ACT, Inc. v. 马程遥

(Max Will), WIPO Case No. D2021-3128, who was held to have registered and used the domain name
<crackact.com> in bad faith. That respondent operated a similar website, which directed users to the same

download source as the websites at the disputed domain names.

The Panel notes that the Respondent has not come forward to deny this or any of the Complainant’s other

allegations of bad faith.

For the above reasons, the Panel considers that the Complainant has established the third element of paragraph 4(a) 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 names, <acter.org> and <crackacc.com>, be transferred to the

Complainant.

/Adam Taylor/

Adam Taylor

Sole Panelist
Date: July 4, 2022