CFA Institute v. Mattie Allen / Integra Investment Service
Claim Number: FA2004001892470
Complainant is CFA Institute (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP, United States. Respondent is Mattie Allen / Integra Investment Service (“Respondent”), Michigan, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cfafinances.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2020; the Forum received payment on April 16, 2020.
On April 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cfafinances.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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@cfafinances.com. Also on April 20, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <cfafinances.com> domain name is confusingly similar to Complainant’s CFA mark.
2. Respondent does not have any rights or legitimate interests in the <cfafinances.com> domain name.
3. Respondent registered and uses the <cfafinances.com> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant, CFA Institute, is a global, not-for-profit association that is dedicated to developing and promoting professional standards in the investment industry. Complainant holds a registration for the CFA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,493,899, registered Oct. 2, 2001).
Respondent registered the <cfafinances.com> domain name on July 21, 2019, and uses it to redirect users to competing third-party websites.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the CFA mark under Policy ¶ 4(a)(i) based upon its registration of the mark with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership of a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”).
Respondent’s <cfafinances.com> domain name incorporates Complainant’s CFA mark, and adds the generic term “finances” and the “.com” gTLD. The addition of a generic word and a gTLD to a mark does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i)”). Accordingly, the Panel finds that Respondent’s <cfafinances.com> domain name is confusingly similar to Complainant’s CFA mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <cfafinances.com> domain name because is not commonly known by the domain name. Respondent is not licensed or authorized to use Complainant’s CFA mark. The WHOIS information of record lists “Mattie Allen” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the domain name, and thus has no rights under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant contends that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent uses the disputed domain name to mislead consumers and redirect them to Respondent’s website, which they may believe is affiliated with Complainant. The use of a disputed domain name to divert Internet users to a respondent’s site and lead them to believe that there is an affiliation with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the website at <cfafinances.com> featuring news content and products similar to Complainant’s. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and uses the <cfafinances.com> domain name in bad faith. Specifically, Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that wholly incorporates Complainant’s CFA mark, and by giving the impression that interested individuals will receive information regarding Complainant. However, individuals are actually presented with a webpage that features news content that is similar to Complainant’s own products accompanied by the CFA mark. See Compl. Annex K. The Panel may agree with Complainant and find that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent attempts to disrupt Complainant’s business by initially redirecting users through the domain name to competing third-party websites. Use of a domain name to host links to competitors of a complainant may demonstrate bad faith in use and registration. See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Complainant alleges that Respondent’s initial use of the domain name redirected users to competing third-party web pages. The Panel may therefore find Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant contends that Respondent did not respond to multiple cease and desist letters. A failure to respond to a cease and desist letter may indicate bad faith domain name registration and use. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides a copy of the cease and desists that were sent to Respondent on December 4, 2019, and December 17, 2019. See Compl. Annex N and O. Complainant contends that Respondent did not respond as of the date of filing this complaint. The Panel may or may not find that Respondent’s non-response indicates bad faith use and registration of the <cfafinances.com> domain name under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent must have had knowledge of Complainant’s CFA mark due to the fame and unique qualities of the CFA mark, adopted long before the registration of the disputed domain name, and to the content on Respondent’s website. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the CFA mark, which constitutes bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cfafinances.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 15, 2020
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