Commission on Graduates of Foreign
Nursing Schools v. Jai Kumar a/k/a Jaikumar
Claim Number: FA0203000106123
PARTIES
Complainant
is Commission on Graduates of Foreign
Nursing Schools, Philadelphia, PA (“Complainant”) represented by John B. Berryhill. Respondent is Jai Kumar a/k/a Jaikumar, Mumbai, INDIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <cgfnsonline.com>
and <navtam-cgfns.com>, registered with DomainPeople, Inc.
PANEL
On
May 2, 2002, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 27, 2002; the Forum received a hard copy of the
Complaint on March 29, 2002.
On
April 1, 2002, DomainPeople, Inc. confirmed by e-mail to the Forum that the
domain names <cgfnsonline.com> and <navtam-cgfns.com> are registered with DomainPeople, Inc. and
that Respondent is the current registrant of the names. DomainPeople, Inc. has verified that
Respondent is bound by the DomainPeople, Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
April 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 23,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@cgfnsonline.com, postmaster@navtam-cgfns.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<cgfnsonline.com> and <navtam-cgfns.com>
domain names are confusingly similar to Complainant's CGFNS mark.
Respondent
has no rights or legitimate interests in the disputed domain names.
Respondent
registered and used the disputed domain names in bad faith.
B.
Respondent
No
Response was received.
FINDINGS
Complainant is a non-profit organization
founded in 1975. Its function is to
certify the competence of foreign-educated nurses. Complainant administers an examination to graduates of foreign
nursing schools seeking entry into the United States for employment in the
nursing field. The examination is known
as the “CGFNS Examination.” The United
States Department of Labor requires the passage of this examination as a
condition for issuing labor certification for aliens seeking employment in the
nursing profession.
Complainant operates its official website
at <cgfns.org>. The website
provides information about Complainant’s products and services. The Complainant uses the CGFNS mark to
indicate the source of its services.
Complainant also engages in the sale of study and informational
materials under the CGFNS mark.
Complainant also has testing centers on almost every continent, and
therefore the CGFNS mark is known nationally and internationally to identify
Complainant’s examination and certification services.
Respondent registered the disputed domain
names on November 28, 2001. Respondent
is operating a website at <cgfnsonline.com> that states, “Welcome
to our Commission on Graduates of Foreign Nursing Schools Crash Course
Programme,” conveying the impression that the website is authorized by Complainant. There is only a very small disclaimer at the
bottom of the page. The <navtam-cgfns.com>
domain name does not currently display a website.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the 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.
Identical and/or Confusingly Similar
Complainant has established that it has
rights to the CGFNS mark through continuous and extensive use. The Policy does not require that Complainant
have a registered mark to claim rights.
The ICANN Policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
complaint under the Policy. McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000).
See Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does
not require that the mark be registered in the country in which a Respondent
operates. It is sufficient that a
Complainant can demonstrate a mark in some jurisdiction).
Respondent’s domain names are confusingly
similar to Complainant’s mark because they incorporate the entirety of
Complainant’s mark and merely add the generic term “online,” and the unidentifiable
prefix “NAVTAM.” The addition of these
terms to Complainant’s well-known mark is not enough to overcome a claim of
confusing similarity. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the Complainant combined with a generic
word or term); see also Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that,
given the similarity of the Complainant’s marks with the domain name, consumers
will presume the domain name is affiliated with the Complainant).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to
submit a Response, the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent registered two confusingly
similar domain names and is offering services that are similar to Complainant’s
services. The use of a confusingly
similar domain name for a similar service that competes with Complainant’s
business is not a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii), and therefore does not create legitimate rights and interests in the
disputed domain names. See MBS
Computers Ltd. v. Workman, FA
96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate
interests when Respondent is using a domain name identical to Complainant’s
mark and is offering similar services); see also America Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that “[i]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of web-site using a
domain name which is confusingly similar to the complainant’s mark and for the
same business”); see also Caterpillar
Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does
not have a legitimate interest in using the domain names
<caterpillarparts.com> and <caterpillarspares.com> to suggest a
connection or relationship, which does not exist, with Complainant's mark
CATERPILLAR).
Respondent has not presented any evidence
that it is commonly known as CGFNS therefore it has no rights and legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent’s use of <cgfnsonline.com>
to offer services that are similar to Complainant’s is an attempt to divert Internet
users to Respondent’s website and create Internet user confusion as to the
source, sponsorship, and affiliation of Respondent’s website. This type of use is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe on Complainant’s
goodwill and attract Internet users to Respondent’s website); see also Yahoo! Inc. v. Zuccarini, D2000-0777
(WIPO Oct. 2, 2000) (finding bad faith where Respondent linked the domain
names, which contained the YAHOO! mark, to several of YAHOO!’s own websites).
Furthermore, Respondent’s registration of
<cgfnsonline.com> and <navtam-cgfns.com>, two
confusingly similar domain names at the same time is evidence of a pattern of
infringing registration. Engaging in a
pattern of registering infringing domain names is evidence of bad faith
pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies the burden imposed by the Policy ¶
4(b)(ii)); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two
domain names incorporating Complainant's YAHOO! mark).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the <cgfnsonline.com>
and <navtam-cgfns.com> domain names be transferred from
Respondent to Complainant.
James P. Buchele, Panelist
Dated: May 9, 2002
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