Commission on Graduates of Foreign
Nursing Schools v. Techindia Infoway Pvt Ltd.
Claim
Number: FA0303000152122
Complainant is
Commission on Graduates of Foreign Nursing Schools, Philadelphia, PA,
USA (“Complainant”) represented by John B. Berryhill. Respondent
is Techindia Infoway Pvt Ltd., Chennai TN, INDIA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cgfnstraining.com>, registered with Network
Solutions, Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 26, 2003; the Forum received a hard copy of the
Complaint on March 26, 2003.
On
March 28, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <cgfnstraining.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
March 31, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 21, 2003 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@cgfnstraining.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.
On
April 27, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch 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."
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 makes the following assertions:
1. Respondent’s <cgfnstraining.com>
domain name is confusingly similar to Complainant’s CGFNS common law mark.
2. Respondent does not have any rights or
legitimate interests in the <cgfnstraining.com> domain name.
3. Respondent registered and used the <cgfnstraining.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Commission on Graduates of Foreign Nursing Schools, is known by the acronym
CGFNS. Complainant is a corporate entity founded in response to a 1975 decision
by the U.S. Department of Health Education and Welfare that authorized 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. Complainant’s
examination is known as the “CGFNS Examination.” Passage of the CGFNS
Examination, and certification resulting from such achievement, is required for
entry into the United States under 8 Code of Federal Regulations (“C.F.R”) 212 of the Immigration and Naturalization
Service regulations, as noted by the Immigration and Naturalization Service in
a 1999 Federal Register notice of an amendment to 8 C.F.R. 212:
The
Service finds that CGFNS has an established track record in issuing
certificates because it has experience in administering the examination that
predicted success of foreign-trained educated nurses under the previous H-1A
visa category.
Additionally,
the U.S. Department of Labor, under 20 C.F.R. 656.10, requires completion of
the CGFNS Examination as a condition for issuing labor certification to aliens
seeking employment in the nursing profession.
Complainant
operates its official website from the <cgfns.com> domain name, which
provides information about Complainant’s products and services.
Respondent,
Techindia Infoway Pvt Ltd., registered the <cgfnstraining.com> domain
name on January 23, 2002. Complainant’s investigation of Respondent reveals
that Respondent is currently not using the domain name for any purpose, or in
connection with any services or goods. However, Complainant’s “archive copy” of
a previous website connected to the disputed domain name indicates that
Respondent’s domain name initially forwarded Internet users to a website
located at <rscons.com/nurse_requirements.htm>. The website prominently
used the term “CGFNS’ in its title and elsewhere in the content on the website.
Text on the website suggests, “If you are a foreign nurse seeking employment in
the United States PLEASE CONTACT US.”
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 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 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 has
established rights in the CGFNS common law mark through continuous use of the
mark in connection with its foreign nurse accreditation exams since at least
1975. The Policy does not require that Complainant’s mark be registered with a
government authority for protectable rights to exist, especially where there is
evidence indicating that Complainant’s mark has acquired significant secondary
source identification. The Panel finds that Complainant has provided sufficient
evidence in order to support a finding of common law rights in the CGFNS mark. See
Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also McCarthy on
Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000) (The ICANN
dispute resolution 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).
Respondent’s <cgfnstraining.com>
domain name is confusingly similar to Complainant’s CGFNS mark.
Respondent’s domain name incorporates Complainant’s mark in its entirety, and
merely adds the word “training,” which describes Complainant’s specialty
service. Respondent’s domain name conveys the impression that it is an online
presence or representation of Complainant. The CGFNS acronym has no meaning or
significance apart from Complainant’s trademark, and the presence of an
additional term fails to alter the impression that Respondent’s domain name is
confusingly similar to Complainant’s mark. See Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also PG&E Corp. v. Anderson, D2000-1264
(WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common
descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’,
create new or different marks in which it has rights or legitimate interests,
nor does it alter the underlying PG&E mark held by Complainant”).
Additionally,
because top-level domains are a required feature in a domain name registration,
their presence is inconsequential when determining “confusing similarity” or “identicality”
under the Policy. See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
did not respond to Complainant’s submission, thereby failing to fulfill its
burden of demonstrating rights or legitimate interests in the subject domain
name. Respondent’s failure to submit a Response allows all reasonable
inferences made by Complainant to be regarded as true, unless clearly
contradicted by the evidence. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain name,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true).
Moreover,
Respondent’s failure to submit evidence of circumstances that may support a
finding of rights or legitimate interests in the disputed domain name
corroborates Complainant’s assertions that Respondent has none. See Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has
advanced no basis on which the Panel could conclude that it has a right or
legitimate interest in the domain names, and no use of the domain names has
been established).
Respondent is not currently using the domain name. However, uncontested
circumstances indicate that Respondent has previously used the <cgfnstraining.com>
domain name in connection with a commercial website that infringed on
Complainant’s services. Respondent’s initial website made unauthorized use of
Complainant’s CGFNS mark in its content, and suggested, “If you are a foreign
nurse seeking employment in the United States PLEASE CONTACT US.” Respondent’s
opportunistic use of Complainant’s CGFNS mark in its domain name to divert
Internet users to its commercial website fails to establish rights in the
domain name under Policy ¶¶ 4(c)(i) or (iii). See Vapor Blast Mfg. Co. v.
R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev,
188 F.Supp.2d 110, 114 (D. Mass. 2002)
(finding that, because Respondent's sole purpose in selecting the domain names
was to cause confusion with Complainant's website and marks, its use of the
names was not in connection with the offering of goods or services or any other
fair use).
No
evidence before the Panel suggests that Respondent is commonly known by the <cgfnstraining.com>
domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS administrative
contact is recorded as “R, kumar.” Additionally, Respondent’s initial purpose
for the subject domain name was to redirect users to another URL, circumstances
that suggest Respondent lacks rights in the domain name under the Policy. See
Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Policy paragraph
4(b) is a non-exhaustive listing of bad faith criteria. When deciding whether
Respondent registered or used the domain name in bad faith it is proper for the
Panel to consider the “totality of circumstances” surrounding the dispute. See Cellular One Group v. Brien,
D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of
the Policy do not constitute an exhaustive listing of bad faith evidence); see also Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining
if a domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”).
Circumstances
suggest Respondent had knowledge of Complainant’s rights in the CGFNS mark
prior to its registration of the infringing domain name. Specifically,
Respondent’s <cgfnstraining.com> domain name was selected
for conveying the impression that Respondent’s website was endorsed or
affiliated with Complainant. Respondent’s registration of the subject domain
name, despite knowledge of Complainant’s rights, evidences bad faith
registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse").
Respondent used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Respondent
appears to have derived commercial gain by offering its purported training
service under the guise of Complainant’s CGFNS mark and accreditation.
Therefore, evidence indicates Respondent has intentionally attempted to attract
Internet users to its website, for commercial gain, by opportunistically using
Complainant’s mark in the domain name. Such actions constitute bad faith use
under the Policy. See State Farm
Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000)
(finding that Respondent registered the domain name <statefarmnews.com>
in bad faith because Respondent intended to use Complainant’s marks to attract
the public to the website without permission from Complainant); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its own website for commercial
gain).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <cgfnstraining.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch , Panelist
Dated:
May 6, 2003
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