CFA Institute v. Satish Singh
Claim Number: FA2004001892176
Complainant is CFA Institute (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), United States of America. Respondent is Satish Singh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cfaacd.com>, registered with BigRock Solutions Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2020; the Forum received payment on April 15, 2020.
On April 16, 2020, BigRock Solutions Ltd confirmed by e-mail to the Forum that the <cfaacd.com> domain name is registered with BigRock Solutions Ltd and that Respondent is the current registrant of the name. BigRock Solutions Ltd has verified that Respondent is bound by the BigRock Solutions Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cfaacd.com. Also on April 17, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 4, 2020.
On May 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
1. Complainant provides an education program for financial analysists. Complainant has rights in the CFA mark through its registration of the mark with numerous trademark offices around the world.
2. Respondent registered the <cfaacd.com> domain name on March 25, 2014.
3. The disputed domain name is confusingly similar to Complainant’s mark as Respondent includes the CFA mark in the domain name and merely adds the letters “acd”, for “academy of career development.”
4. Respondents has no rights or legitimate interests in the <cfaacd.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark.
5. Respondent’s use of the domain name is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely attempting to compete with Complainant.
6. Respondent registered and uses the <cfaacd.com> domain name in bad faith. Specifically, Respondent is attempting to compete with Complainant in a manner that falsely gives an impression of affiliation with Complainant . The registration and use of the domain name is disruptive of Complainant’s business. Furthermore, Respondent had knowledge of Complainant’s rights in the CFA mark at the time of registration.
B. Respondent
Respondent made the following contentions.
1. Respondent is a resident of India. He registered the <cfaacd.com> domain name for use in his educational business.
2. Respondent operates a training program for various professional credentials and has been using the domain name in that regard so for over 9 years.
3. Respondent has changed the logo on his website to remove any use of the word CFA.
4. Respondent’s website neither contains any logo with the name CFA nor any content with CFA. However, in the future he is ready to cooperate with Complainant about the same. So, concern about the trademark was solved.
5. The domain name is not confusingly similar to the trademark as it had nothing to do with the CFA Trademark. The domain name is over 9 years old.
6. There are many live domain names and websites available which contain the letters ‘CFA’.
7. The Complainant cannot have rights over all words that contain the letters “CFA”.
8. In the Respondent’s domain name <cfaacd.com>, “cfaacd” means Courses For All Academy of Career Development. So I booked my domain as <cfaacd.com>. It had nothing to do with CFA Trademark and Its Courses or Program. If Respondent is practicing any kind of course or program related to investment, fiancé (semble finance ) or any of the courses which the CFA Institute is offering then Complainant had to raise its concern. So Complain about Respondent’s domain that it is creating confusion is totally baseless. It is also not identical to that trademark of CFA as an alphabet in Respondent’s domain name is “cfaacd” and its means “Courses For All Academy of Career Development. However the program or Course Offered by CFA Institute is opted by Graduate Students. They very well understand the CFA Institute and cfaacd, i.e. Courses For All Academy of Career Development.”
9. With respect to rights and legitimate interests, Respondent has been using this domain name since a long time i.e. more than 9 Years, So Respondent has 100% rights with respect to the domain name.
10. With respect to bad faith, Respondent’s domain name is over 9 Years old and Respondent is using it to represent his tuition academy in Noida. When he booked this domain name Respondent did not know anything about the CFA Institute and its courses and Programs. At the time of setting of Respondent’s Academy i.e. Courses For All Academy of Career Development, Respondent wished to start such as Academy where tuition classes would be given for every course. So Respondent got the idea of Courses For All Academy of Career Development. And he registered the academy with that name and at the time of booking the domain name the word came out as “cfaacd” and hence <cfaacd.com> was booked.
11. The Panel should therefore dismiss the Complaint.
1. Complainant is a not-for-profit corporation pursuant incorporated pursuant to the Virginia nonstock Corporation Act. Its headquarters are in Charlottesville, Virginia.
2. Complainant is an internationally renowned global, not-for-profit association comprised of investment professionals whose function is to develop and promote the highest educational, ethical, and professional standards in the investment industry for the ultimate benefit of society.
3. Complainant offers training and examinations in financial analysis and also offers educational programs and services for members, program candidates, investors, employers, institutions, and the press.
4. Respondent operates a business in Noida in India which offers quality based education to the students of colleges and school in a variety of subjects and disciplines.
5. Complainant has established its trademark rights to numerous trademark registrations for the CFA, CFA INSTITUTE, and CHARTERED FINANCIAL ANALYST marks (the “CFA Marks”) around the world and in particular :
(a) the CFA mark registered with the United States Patent and Trademark office , on October 2, 2001, registration number 2,493,899; and
(b) the CFA mark registered with the Government of India Trademark Registry on February 17, 2014, registered number 1263709.
6. Respondent registered the <cfaacd.com> domain name on March 25, 2014. It resolves to the website of All Courses Academy which gives details of courses and other training offered by Courses For All Academy Of Career Development.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant is a not-for-profit corporation incorporated pursuant to the Virginia nonstock Corporation Act. Its headquarters are in Charlottesville, Virginia.
It is the exclusive administrator and grantor of the Chartered Financial Analyst designation and owner of the CHARTERED FINANCIAL ANALYST and CFA trademarks.
Complainant submits that it is an internationally renowned global, not-for-profit association comprised of investment professionals with over 150,000 members in 140 countries worldwide and 148 local member societies in seventy-three countries.
Its function is to develop and promote the highest educational, ethical, and professional standards in the investment industry for the ultimate benefit of society.
To that end, it coined the designation “Chartered Financial Analyst” or “CFA” and began using it to identify its certification program to its members and those belonging to its sister organization. Significantly, it conducts the Chartered Financial Analyst Program (the “CFA Program”) which is a graduate level, self-study examination system for investment professionals. Complainant offers training and examinations in financial analysis and also offers educational programs and services for members, program candidates, investors, employers, institutions, and the press.
In the course of its work, Complainant makes extensive use of the CFA marks.
The Respondent registered the disputed domain name on March 25, 2014 and uses it in his business. The domain name leads to a website and the website describes the business in which Respondent is engaged.
The heading of the website promotes a business named All Courses Academy, which operates from Noida which is close to New Delhi in India. The website states as follows: “Courses For All Academy Of Career Development of Career Development (sic) is working since 2006, but professionally it is founded in the year 2009 to impart quality based education to the students of colleges and school. Courses For All Academy Of Career Development is working in the different verticals like M.Tech Tutorial Classes, B.Tech Tutorial Classes, AMIE Tutorial Classes , MCA Tutorial Classes, MBA Tutorial Classes, BCA Tutorial Classes, BBA Tutorial Classes, B. Com Tutorial Classes, BA Tutorial Classes, B.Sc Tutorial Classes, CBSE Tutorial Classes as well as Computer Courses (C, C++, JAVA, .NET, Python, PHP, Web-Designing, Linux, CCNA,MCSE). It also provide Different competitive Exam Coaching Such Judicial Services(PCS-J), CLAT Entrance, Banking, RRB, SSC-CGL/JE/AE,CTET/UPTET/Other State TET/DSSSB, UP/Delhi Police and Other Government Jobs, MCA Entrance, BCA Entrance, Hotel Management, NDA and Military School”.
The website then deals in more detail with the services offered by the business.
Accordingly, Respondent is using the disputed domain name to promote a service that offers the aforementioned educational services under the logo All Courses Academy.
The Complainant maintains that the disputed domain name has been registered and used in breach of the provisions of the Policy. Accordingly, it has brought this proceeding to have the disputed domain name transferred to the Complainant.
The Panel will now proceed to deal in turn with each of the three elements that Complainant must prove under the Policy.
Identical and/or Confusingly Similar
The first question that arises is whether Complainant has a trade or service mark on which it can rely. It is clear that Complainant has established its rights in all of the CFA marks through its registration of the mark with numerous trademark offices around the world. Evidence of the registration of all of those marks has been adduced by Complainant and the Panel accepts that evidence. But for present purposes, the Panel need only refer specifically to the CFA mark itself and in particular to :
(a) the CFA mark registered with the United States Patent and Trademark office , on October 2, 2001, registration number 2,493,899; and
(b) the CFA mark registered with the Government of India Trademark Registry on February 17, 2014, registered number 1263709.
The Panel notes the Indian trademark as Respondent is domiciled in India.
Registration with the various trademark offices around the world is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Here, Complainant provides a table of trademark registrations for the above-mentioned marks with different trademark offices, as well as certificates the two specific trademarks referred to. Therefore, the Panel finds that the Complainant has rights in the CFA mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to the CFA trademark. Before proceeding , the Panel notes that one of its findings is that Respondent registered the <cfaacd.com> domain name on March 25, 2014. The Panel made that finding because Complainant submitted that it was so, and tendered in evidence a copy of the WHOIS record which states that the domain name was created on March 25, 2014 and that Respondent is the registrant. Respondent did not deny Complainant’s submission. It is true that Respondent on several occasions submitted that he had owned the domain name for over 9 years, meaning that the domain name would have been registered prior to March 25, 2014. The Wayback Machine at <archive.org> also has screenshots taken at dates prior to that date. However, there is no evidence other than the evidence submitted by Complainant and the Panel must therefore proceed on the assumption that the domain name was registered by Respondent on March 25, 2014.
The Panel now returns to the question whether the domain name is identical or confusingly similar to the trademark. Clearly the domain name is not identical to the trademark as the domain name contains more letters and presumably more meaning that the trademark. But is it confusingly similar to the trademark?
Complainant argues that the <cfaacd.com> domain name is confusingly similar to the CFA mark because it includes the trademark in its entirety. As to the rest of the domain name Complainant submits that this is a “ non-distinctive element “acd,” which stands for the descriptive terms “academy,” which is synonymous to “institute” in Complaint’s CFA INSTITUTE mark, and “of career development” which are all purely descriptive and serve no distinguishing purpose.”
Respondent in reply submits that the domain name is not confusingly similar to the trademark because “In My domain (cfaacd.com) cfaacd means Courses For All Academy of Career Development,…”. That of course is possible, although the explanation seems somewhat contrived. Moreover, for the panel to accept that submission requires it to speculate on what Respondent meant or could have meant, which is not the role of the Panel.
Accordingly, the Panel is not able to accept the Respondent’s argument. Rather, the Panel will attempt to answer the question by reference to three basic principles that are often brought in aid by panels when engaged in the exercise of determining whether a domain name is confusingly similar to a trademark. These principles are as follows.
First, in making the comparison between the domain name and the trademark, the task is to make a straight comparison between the two expressions without regard to any extraneous facts such as the way the domain name has been used or the contents of a website. The Panel will follow that approach as it would be reluctant to depart from such a well-established principle.
Secondly, it is also widely accepted that if a domain name includes the text of a trademark, prima facie it should be assumed that the domain name is confusingly similar to the trademark in question. That is so because the trademark will often be the dominant portion of the domain name and will therefore color the way the internet user is likely to see the domain name. In some cases, such as the present, this dominance comes about, as Complainant’s counsel has submitted, because the letters of the trademark come first in time in the domain name and are therefore likely to be given more prominence in the mind of the reader than the remainder of the domain name. It should also be said that such a presumption is not irreversible, as the primary task of the panel is to decide, in the light of the comparison whether the domain name is confusingly similar to the trademark or not. Nevertheless, the principle has a lot of sense and is a good aid in interpretation.
The third principle is that the question has to be determined on the balance of probabilities. This has led to its sometimes being said that the first element, now under consideration, is a “ low threshold”, meaning that it is only a requirement to give standing to a complainant to enable it to launch its claim and obtain a hearing.
Also, in this exercise, the “.com” generic top-level domain (“gTLD”) is ignored as it does not distinguish a disputed domain name from a trademark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that the Complainant has made out a prima facie case which arises from the following considerations.
(a) The Panel has found that Respondent has formulated a domain name that includes Complainant’s CFA trademark at the beginning of the domain name, giving it prominence, adding the letters “acd” which does not negate the confusing similarity between the domain name and the trademark, but which adds to the confusion;
(b) Respondent registered the <cfaacd.com> domain name on March 25, 2014;
(c) Complainant has submitted and the Panel finds that Complainant has no business relationship whatsoever with Respondent and has not licensed or otherwise permitted Respondent to use the CFA Marks or to register or acquire any domain name incorporating the CFA Marks. Indeed, Complainant made Respondent aware of this on multiple occasions beginning on June 12, 2019 when Complainant sent the Respondent a cease and desist letter stating that Respondent’s use of the CFA Mark in the Domain Name was not authorized;
(d) Complainant argues that Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. The Panel notes that the WHOIS record for the domain name identifies the Respondent as “Satish Singh” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <cfaacd.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii); and
(e) At least prima facie, the Respondent appears to have used the domain name to conduct its business in the field of education, an activity which is one of the business activities of Complainant.
The prima facie case having been made out, it now remains to see whether Respondent has rebutted it.
Respondent’s argument with respect to this element is, first, that he has had the domain name for more than 9 years which gives him a right to it. That of course cannot resolve the entire proceeding by itself. There is certainly an argument that long tenure of a domain name can give rights to it and there is a related argument that it can be held against a complainant that it has done nothing over time to assert its rights to a domain name that it later claims. The Panel’s view is that delay can be taken into account, but it would be unlikely if the facts as they are known in the present case would, by themselves, give Respondent a right to register the domain name or a legitimate interest in it. What is far more important to resolve in this proceeding is whether the registration of the domain name was legitimate and whether the conduct of Respondent has in any way negated that entitlement. It is here that the Panel must look at the Respondent’s entire argument in this proceeding.
Complainant had argued that Respondent in effect had simply taken the CFA trademark and used it in its domain name for its own benefit. Respondent’s argument in reply is that he was minded to start an academy that would “give tuition classes for every courses”. Accordingly, as he put it, he “got the idea of Courses For All Academy of Career Development. And I Registered Academy With that name and at the time of booking domain the word comes out cfaacd and hence “cfaacd.com” booked.” It is clear from the fact that he repeated the argument several times that what Respondent is saying is that he conceived the name Courses For All Academy of Career Development as the name of his proposed academy and that he then simply took the first letter of each of the constituent words (except the word “of”) and strung them together, making the term “cfaacd”. The “cfa” is presumably said to stand for “courses for all” and the “acd’ is presumably said to stand for “academy of career development”.
It is of course possible that this is the reason why the Respondent chose the string of his domain name that he did, i.e. <cfaacd.com> and that he did it by this means. But the Panel has to say that it is unlikely and the Panel does not accept that it happened. There are several factors that suggest to the Panel that Respondent’s explanation for his so prominently using the letters CFA as part of his domain name and elsewhere on his website as part of his promotional material, does not hold water and that the real explanation lies elsewhere. Those factors are:
(a) Ordering the words in the way the Respondent has ordered them seems to be inherently improbable if the academy is the Academy of Career Development. If the name of the academy is the Courses for all Academy, adding the words “of Career Development” sit incongruously after the name, giving it an air of unreality. The problem for the Respondent in this odd ordering of the words is that it raises the suspicion that the domain name is an invention to explain away what each word could stand for, after the main objective had been achieved, the main objective being to include the letters “cfa” at the beginning of the domain name.
(b) The second factor comes from the statement that the Respondent “got the idea of Courses For All Academy of Career Development. And I Registered Academy With that name…”. This can only mean that the name of the academy was the Courses For All Academy of Career Development. Apart from the fact that this a somewhat unlikely way of expressing the name of an academy, giving it the air of being contrived and artificial, there is no evidence that it is or was the name of the academy. On the Wayback Machine[i], the first screenshot after the domain name was registered, was recorded on December 16, 2014, and it would be expected that, by then, the website would shows that the entity being created was the Courses For All Academy of Career Development. But it is not. It is named the C-F-A Academy of Career Development . It is never referred to on the website as the Courses For All Academy of Career Development. Respondent’s explanation for why the letters “cfa” are in the domain name at all is therefore not correct, as a simple matter of fact. This suggests that there must be another reason for the inclusion of those letters.
(c) On the website at the same time, there is a statement concerning Swami Jyanand Jee Giri, “the guiding force behind the institute”. The statement includes an observation about services that are provided for students at “CFA Academy of Career Development”. This again suggests that the name of the institution was “CFA Academy of Career Development” , not “Courses For All Academy of Career Development” as the Respondent claimed and as he submitted was the reason for ordering the letters of the domain name in the way that he did. Consequently, the reason for including the letters “cfa” in the domain name was not that they were an acronym for the first three words of the name of an institution called “Courses For All Academy of Career Development”, but for some other reason.
(d) On the same website and remaining there to this day, the contact address of the institution is given as “email : enquiry.cfa@gmail.com”, again solely identifying the institution by the letters “cfa” and using them in a stand-alone form.
(e) The further statement appears on the website : “Copyright© 2010 C-F-A- courses for all.” Again, this important statement does not carry the name of the institution claimed by Respondent, but the name CFA, the Complainant’s trademark.
(f) Throughout 2011 and at the date of the first screenshot for the domain name on the Wayback Machine, November 23, 2010, the business was C-F-A Academy of Career Development and not “Courses For All Academy of Career Development.” Throughout 2012 -2017, the institution was called “CFA Academy of Career Development ( a Division of Pushti Infotech Pvt Ltd)”. In 2019 the institution was called CFA Academy of Career Development and promoted as such with sections of the website such as “About CFA Academy.” Only in 2020, under the logo All Courses Academy is the institution described as “Courses For All Academy Of Career Development of Career Development.”
(g) It should also be acknowledged, however, that when Respondent registered his business for Indian tax purposes, it was described as “Courses-For-All Academy of Carear (sic) Development” and Respondent has exhibited two letters from the authorities reflecting that fact, albeit apparently written in 2009, before the apparent date of registration of the domain name. They therefore had little if anything to do with the creation of the domain name.
(h) On June 28,2019, Respondent replied to the cease and desist letter from Complainant’s then counsel. That letter is in evidence. It purports to come from “CFA for All Academy of Career Development “and not from Courses for All Academy of Career Development”. In small print under the letters CFA appear the words “courses for all”.
The repeated use of “ C-F-A” and “CFA” as illustrated, suggests that the reason for including the letters “cfa” in the domain name was not that they were an acronym for the first three words of the name of the institution, but for some other reason. In other words, the primary submission of the Respondent is that he devised the name of the institution, namely Courses for All Academy of Career Development, took the initials of those words in the name and thereby produced the domain name <ctfaacd.com>. The history just described shows that this is not true and that there was no entity that had the name before or after the domain name was registered until very recent times. Respondent’s explanation for the construction of the domain name is therefore untrue and the Panel does not accept it.
Moreover, the history shows very clearly that the entity that the Respondent ran and currently runs put a heavy and predominant emphasis of the acronym CFA, which he used to advance his own competing business for his own commercial advantage.
On the balance of probabilities, the Panel finds that Respondent put such repeated emphasis on the letters CFA because they made up Complainant’s trademark and that Respondent has for several years simply copied Complainant’s trademark and used it himself as he saw a commercial benefit in trading on the reputation of Complainant encapsulated in that trademark.
That conclusion is made the more likely because Respondent is using the term in connection with what is at least one of the activities of Complainant and its approved associates, namely education, coaching and tutoring. At the very least, Respondent’s use of the trademark is likely to mislead internet users into believing that the services offered by Respondent were the equivalent to those offered by or on behalf of Complainant or alternatively that they were being offered with the approval of Complainant, neither of which was true.
Such a situation cannot give rise to a right or legitimate interest in a domain name and cannot rebut the prima facie case found against Respondent.
To put it concisely, the Respondent’s argument is unlikely to be true, as the domain name is not an accurate representation of the name that Respondent claims is the name of his institution. Moreover, the arrangement of the letters designed to create the domain name, according to Respondent’s claim, has an air of unreality about it that makes it difficult to accept Respondent’s case. The probabilities are therefore on the side of Complainant.
Finally, it must be said that if the intention of Respondent was to have a domain name that reflected the expression “courses for all”, or “all courses academy,” why did he not register a domain name that stated that expression clearly? Such domain names are readily available and were presumably available on the day Respondent decided to create his domain name in the manner that the Panel finds singularly unpersuasive.
The Panel is fortified in the decision it has reached on this issue by the result of the analogous proceeding concerning the Indian domain name <cfaacademy.co.in> in CFA Institute v. Reshu Anand Singh/CFA Academy of Career Development, INDRP Case 1177 (Jan. 20, 2020) and particularly the observations of the learned arbitrator that the CFA trademark was distinctive of Complainant’s organization, that it was extensively used, there was there was no disclaimer on Respondent’s website, Respondent was using the CFA mark to attract customers based on the fame and reputation associated with the mark and that those circumstances constituted a “bait-and-switch” situation which negated any suggestion of the Respondent having a right or legitimate interest in the domain name. The same observations could be applied to the present case.
Accordingly, Respondent has not rebutted the prima facie case against him, the prima facie case stands and Complainant has shown Respondent has no rights or legitimate interests in the domain name.
Complainant has thus made out the second of the three elements that he must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <cfaacd.com> domain name in bad faith because Respondent is attempting to compete with Complainant in a manner that falsely gives an impression of affiliation with Complainant and his conduct with respect to the domain name is disruptive to Complainant’s business. Registering a disputed domain name so to attract and mislead Internet users for financial gain and disrupt a complainant’s business by offering a competing service may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”); see also Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018). As has already been shown in the section of this decision dealing with rights and legitimate interests, the Respondent has made extensive use of Complainant’s CFA trademark while promoting and offering services which at least in part are similar to those offered by Complainant. In both cases, they involve coaching and tutoring in the commercial and financial fields. It is almost inevitable that some internet users will think that Respondent is offering the same or similar courses as those offered by Complainant and may well direct their custom to Respondent rather than Complainant when acting under that false belief. Here, Complainant provides screenshots of the <cfaacd.com> domain name’s resolving webpage at different points in time, all of which show use of the CFA mark to promote services similar to those of Complainant. See Compl. Ex. G and H. Accordingly, the Panel finds Respondent registered and uses the <cfaacd.com> domain name in bad faith within the meaning of Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent had knowledge of Complainant’s rights in the CFA mark at the time of registering the <cfaacd.com> domain name. The Panel finds it is reasonable to conclude on the balance of probabilities that Respondent must have had actual knowledge of Complainant's rights in the CFA mark prior to registering the disputed domain name and that actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (FORUM January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations along with the fact that Respondent purports to work in a similar field and has also been a party to an INDRP dispute involving the Complainant. Besides that, Complainant has over many years achieved a renown in the commercial, governmental and financial fields such that Respondent had probably heard of and knew of Complainant and its renown. Indeed, it was probably on that renown that Respondent was seeking to trade and why he placed so much reliance on using Complainant’s CFA trademark. Accordingly, the Panel finds that Respondent had actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CFA mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that he must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cfaacd.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 12, 2020
[i] The Wayback Machine is in evidence as the Complainant referred to it on page 6 and Appendix H of the Complaint.
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