Commission on Graduates of Foreign Nursing Schools v. Free Speech Alliance a/k/a Wilson Martinez
Claim Number: FA0204000109364
Complainant is Commission on Graduates of Foreign Nursing Schools, Philadelphia, PA (“Complainant”) represented by John B. Berryhill. Respondent is Free Speech Alliance a/k/a Wilson Martinez, Los Angeles, CA (“Respondent”) represented by Wilson Martinez.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cgfns.com> and <cgfns.net>, registered with BulkRegister.com.
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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 8, 2002; the Forum received a hard copy of the Complaint on April 8, 2002.
On April 8, 2002, BulkRegister.com confirmed by e-mail to the Forum that the domain names <cgfns.com> and <cgfns.net> are registered with BulkRegister.com and that the Respondent is the current registrant of the names. BulkRegister.com has verified that Respondent is bound by the BulkRegister.com 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 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 29, 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on April 29, 2002.
On April 30, 2002, the parties jointly requested a stay of this proceeding, which was granted by the Forum on May 1, 2002.
Pursuant to Complainant’s request, the proceeding was reinstated on May 14, 2002.
On May 20, 2002, Respondent submitted an “amended response” to the Forum, which was not in compliance with Forum Supplemental Rule 5.
Complainant submitted an e-mail to the Forum on May 20, 2002, which did not comply with Forum Supplemental Rule 7, in response to Respondent’s “amended response.” Respondent responded with another e-mail on May 21, 2002, which also failed to comply with Forum Supplemental Rule 7.
The Panel considered the Respondent's amended response because of the confusion concerning receipt of the Complaint and attached Exhibits. The Panel did not consider the e-mails of Complainant and Respondent that did not comply with Forum Supplemental Rule 7.
On May 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is a non-profit corporation formed in response to a 1975 decision of the U.S. Department of Health Education and Welfare to authorize a private non-profit corporation 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. This exam is known as the "CGFNS Examination". Passage of this exam and certification thereof is required for entry into the United States under 8 CFR 212 of the regulations of the Immigration and Naturalization Service. Also, the United States Department of Labor, under 20 CFR 656.10 requires certification of passage of the CGFNS Exam as a condition for issuing labor certification for aliens seeking employment in the nursing profession.
Complainant has operated a website at <cgfns.org> which has been registered to Complainant since 1996. At that time, it was considered proper for non-profit organizations to register only in the ".org" TLD. This website provides information about Complainant's products and services. "CGFNS" is used by Complainant as a mark indicating the source or origin of these services. Complainant also engages in the sale of study and information materials under the "CGFNS" mark, as shown in the "cgfns storefront" catalog. Complainant advertises and promotes its services worldwide through the website at <cgfns.org> and through printed materials such as brochures and other advertisements. Complainant is well known as the sole and exclusive source of the "CGFNS Examination" wherein "CGFNS" serves as a designator of source or origin.
The disputed domain names <cgfns.com> and <cgfns.net> each incorporate the Complainant's CGFNS mark in its entirety. The letters "CGFNS" have no meaning or significance apart from Complainant's trademark and thus, the registered second-level domain names are identical to the Complainant's mark.
Respondent has no rights or legitimate interests in the Complainant's mark. Respondent is not licensed or authorized by Complainant to use the mark. Until being contacted concerning this dispute, the domain names were registered to "Advent Home Health". Both names resolved to a website at <Domainhouse.com> at which the names were offered for sale on a "make an offer" basis. Domainhouse.com trades in domain names and has been the subject of a prior dispute under this Policy. As of April 2, 2002, while Complainant's representative was corresponding with Respondent, the registrant data was changed to "Free Speech Alliance" having an address at 2501 Colorado Ave., Suite G in the Eagle Rock area of Los Angeles. A declaration from Brett Fausett and a photograph reveal that the address is occupied by "Good Life Home Health Services". On information and belief, "Good Life Home Health Services" is a home health care agency which likely employs nurses or home health workers of foreign origin. By this evidence, it is clear that Respondent is connected with a health care business of some kind and therefore is surely aware of the reputation and significance of the "CGFNS" mark in the health care profession.
The domain names were registered and are being used in bad faith. Respondent has obviously registered both names as a pattern to prevent Complainant from using them and to offer the names for sale to Complainant or a competitor. Also, manipulation of the registration data from Advent Home Health to Free Speech Alliance is evidence of bad faith domain name registration and use. The address, phone number and administrative contact remain the same. It is apparent that there is a connection to a health care service and that Respondent is familiar with the significance of the CGFNS mark in that field. Domainhouse.com has registered at least one other domain name consisting of the coined name of a non-profit health organization, namely <masscare.com>.
Respondent is an individual that provides a bona fide offering of goods and services on the internet through DomainHouse.com, Inc., a global computer network-based domain name exchange. Respondent registers domain names for identification of users on a global computer network, develops websites and hosts the web sites of others on a computer server for a global computer network.
Complainant is acting inequitably and is attempting to use its common law trademark to secure rights beyond those granted by law and in a way contrary to the public policy underlying the grant of a trademark. The fact that someone has secured a domain name that happens to be, or resembles another party's trademark is not cause for concern, absent some real likelihood of confusion in the relevant market or evidence of dilution of a famous mark. In this case, the domain name holder is not in competition with the trademark owner and the mark is not shown to be a "famous" mark.
Respondent has rights or legitimate interests to use the domain names at issue. Respondent has paid registration and renewal fees and had been using the domain names continuously for almost three years without objection from Complainant. The domain names are not being used as a "trademark or service mark" to identify a source of goods or services but to identify a numeric address on Respondent's website. Respondent bona fide offering of goods and services is the offering of the domain names for sale and the hosting of domain names offered to the public.
The domain names were not registered in bad faith. It was never intended that the domain names be offered to Complainant. Respondent was using Advent Home Health in the contact information because it was the only organization by Respondent existing at the time the domain names were registered. Contact information was immediately changed and the domain names removed from the database of domain names for sale when Respondent received the cease and desist letter from Complainant.
With respect to the registration of <masscare.com>, this domain name has expired and is available for registration at the time of the filing of this Complaint. Respondent has thousands of domain names, which are mostly generic and common words.
Respondent does not dispute the fact that the domain names in question are similar to the marks of the Complainant and that the Complainant has valid and legitimate rights over their marks. However, Complainant has not acted promptly and sufficiently to protect its marks.
B. Additional Submissions:
The amended submission of Respondent was considered and incorporated into the
foregoing paragraph. Subsequent email submissions were not considered.
1 - The disputed domain names are identical or confusingly similar to Complainant's marks.
2 - The Respondent has no rights or legitimate interests in the disputed domain names.
3 - The disputed domain names were registered and used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;
(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 trademark rights in the CGFNS mark through continuous and widespread use as the designator of source or origin of the CGFNS Examination. See Comm’n on Graduates of Foreign Nursing Sch. v. Kumar a/k/a Jaikumar, FA 106123 (Nat. Arb. Forum May 9, 2002) (finding that Complainant has enforceable rights in the CGFNS mark pursuant to Policy ¶ 4(a)(i)).
The disputed domain names are identical to Complainant's CGFNS mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
Rights or Legitimate Interests
Respondent registered the disputed domain names with knowledge of Complainant’s mark and rights therein, and with the intent to sell the domain names for profit. Such intentions demonstrate Respondent’s lack of rights and interests in the domain names. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling it); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
The disputed domain names were registered nearly three years ago, with no actual use having been made. Respondent’s passive holding of the names demonstrates its lack of rights or interests therein. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).
Registration and Use in Bad Faith
Respondent’s posted offer to sell the disputed domain names evidences bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer, rejected Complainant’s nominal offer of the domain in lieu of greater consideration).
It also appears that Respondent registered the two nearly identical domain names for the purpose of preventing Complainant from obtaining domain names that reflect its mark. Complainant contends that this, along with Respondent’s registration of <masscare.com> demonstrates a pattern of such conduct pursuant to Policy ¶ 4(b)(ii). See 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); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks).
It also appears that Respondent has provided false information to the domain name registrar, and that such behavior also demonstrates bad faith under the Policy. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Video Direct Distrib. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that Respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).
Finally, it clearly appears from the evidence that Respondent is familiar with the non-profit health care industry, and that as such, it was aware of or should have been aware of Complainant's rights in the CGFNS mark. In fact, there is no significance to the CGFNS letters other than Complainant's use of them as its mark. Registration with such actual or constructive knowledge has been held to be evidence of bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
REVERSE DOMAIN NAME HIJACKING:
This panelist, having found in favor of the Complainant, finds that there is no reverse domain name hijacking in this case. A decision favoring Complainant necessarily precludes a finding of reverse domain name hijacking. See World Wrestling Fed'n Entm't, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001).
It is ordered that the disputed domain names <CGFNS.COM> and <CGFNS.NET> be transferred to Complainant.
Banks, Jr., Panelist
Dated: June 12, 2002
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