Cisco Technology, Inc. v. Qadir Khan / PETER RODRIGUES / CCIEDATACENTERLABS / VOICE IE
Claim Number: FA1611001702031
Complainant is Cisco Technology, Inc. (“Complainant”), represented by Rochelle D. Alpert of Morgan, Lewis & Bockius LLP, California, USA. Respondent is Qadir Khan / PETER RODRIGUES / CCIEDATACENTERLABS / VOICE IE (“Respondent”), represented by Justin Mercer of Lewis & Lin LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ccievoicelabs.com> and <cciecollaborationlabs.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com and <cciedatacenterlabs.com>, <cciewirelesslabs.com>, <cciewritten.com>, <cciesecuritylabs.com>, <cciernslabs.com>, and <cciewrittendumps.com>, registered with eNom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.
Dawn Osborne, Kenneth Port and Debrett Lyons (chair) as panelists.
Complainant submitted a Complaint to the Forum electronically on November 8, 2016; the Forum received payment on November 8, 2016.
On November 9, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ccievoicelabs.com> and <cciecollaborationlabs.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 9, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <cciedatacenterlabs.com>, <cciewirelesslabs.com>, <cciewritten.com>, <cciesecuritylabs.com>, <cciernslabs.com>, and <cciewrittendumps.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On November 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2016 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@cciedatacenterlabs.com, postmaster@cciewirelesslabs.com, postmaster@cciewritten.com, postmaster@cciesecuritylabs.com, postmaster@ccievoicelabs.com, postmaster@cciernslabs.com, postmaster@cciecollaborationlabs.com, postmaster@cciewrittendumps.com. Also on November 15, 2016, 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 December 5, 2016.
On December 12, 2016, Complainant made Additional Submissions which were received in a timely manner and in compliance with the Forum's Supplemental Rule #7.
On December 13, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed as Dawn Osborne, Kenneth Port and Debrett Lyons (chair) as panelists (the "Panel").
Having reviewed the communications records, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in CCIE and alleges that the disputed domain names are identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
In particular, Complainant asserts that the disputed domain names divert internet users to websites offering products which directly compete with those provided by Complainant under the CCIE trademark.
B. Respondent
Respondent denies having acted in bad faith and claims to have a right and legitimate interest in the disputed domain names since it dissociates itself from Complainant by way of disclaimers and makes nominative, fair use of the CCIE trademark.
Respondent submits that proper adjudication of its right to nominative fair use of the CCIE trademark is a matter for a court and goes beyond the scope of the UDRP. Accordingly, Respondent claims that this Panel should refuse to make a determination under the Policy.
C. Additional Submissions
As indicated above, Complainant made Additional Submissions. Panel has taken these into account in reaching its decision and they are referred to as required in the following Discussion.
The factual findings pertinent to the decision in this case are that:
1. Complainant is the owner of the intellectual property rights of Cisco Systems Inc., a Californian business which provides, inter alia, educational services in the field of IT networking equipment and educational and training products associated therewith (“the Goods and Services”);
2. the Goods and Services are provided by reference to the trademark CCIE (“the Trademark”);
3. the letters of the Trademark stand for “Cisco Certified Internetwork Expert”, a certification achieved by formal examination;
4. the Trademark is the subject of United States Trademark Reg. No.2,468,247, registered on July 10, 2001;
5. the disputed domain names were registered on the following dates (and to the following registrants):
<ccievoicelabs.com> on May 19, 2009 to Qadir Khan;
<cciecollaborationlabs.com> on May 29, 2013 to Qadir Khan;
<cciedatacenterlabs.com> on September 3, 2011 to Peter Rodrigues;
<cciewirelesslabs.com> on December 16, 2010 to VOICE IE;
<cciewritten.com> on October 9, 2015 to VOICE IE;
<cciesecuritylabs.com> on March 12, 2011 to VOICE IE;
<cciernslabs.com> on December 16, 2010 to VOICE IE; and
<cciewrittendumps.com> on November 17, 2015 to VOICE IE.
6. the domain name resolves to websites showing the Trademark which promote products in the nature of examination preparation materials competitive with those offered by Complainant; and
7. Complainant has not authorized Respondent to use the Trademark or to register any domain name incorporating the Trademark.
A. Procedural Issues
Paragraph 3(c) of the Rules states that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant requests that these Administrative Proceedings be consolidated against all eight disputed domain names in spite of the fact that there are three domain name holders involved.
Panelists have in the past relaxed Rule 3(c) so as to allow a single Administrative Proceeding against multiple domain name holders where there was sufficient evidence that the domain names at issue were controlled by the one person or entity.
Complainant bases it request on (i) the observation that six of the eight disputed domain names are registered with eNom Inc., (ii) the observation that five of the domain names are registered to VOICE IE, (iii) two of the domain names are registered to Qadir Kahn, and (iv) that all of the disputed domain names point to substantially identical websites.
Panel considers only the last claim noteworthy. Complainant supports that claim by noting commonalities in the resolving websites including the use of Complainant’s Trademark, a disclaimer of any affiliation with Complainant, and identical functionality in terms of help, messaging and payment methods.
Nonetheless, Panel finds the study of association between the domain name holders redundant since the Response accepts all three domain name holders as “Respondents”. Panel notes, too, that the declaratory statement filed in support of the Response is made by Qadir Khan, who is described as the Principal of VOICE IE.
For the purposes of Rule 3(c), Panel treats the disputed domain names as being registered to the one domain name holder, which in this decision is referred to as “Respondent”.
Respondent’s essential argument is that it has made nominative, fair use of the Trademark. It argues that proper assessment of that claim is outside the scope of the UDRP and the mandate of the Panel and is best left to the competency of a court.
Panel notes that paragraph 4(c)(iii) of the Policy was drafted with the intention that such use might give a respondent a legitimate interest in a domain name. Further, Panel notes that UDRP decisions going back to Oki Data Americas v. ASD, Case No. D2001-0903 (WIPO Nov. 6, 2001) (“Oki Data”), cited by Respondent, have considered this issue in detail.
Panel finds that the facts put before it indicate that the Policy is directly applicable and that there is no reason for the Panel to disqualify itself. Panel therefore proceeds to apply the Policy.
B. Primary Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Respondent has made no submissions in relation to paragraph 4(a)(i). Nonetheless, Complainant must still make a case that it has rights and that the domain names are identical or confusingly similar to the Trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”). Since Complainant provides evidence of its USPTO trademark registration for CCIE, the Panel is satisfied that it has trademark rights.
The generic Top-Level Domain, “.com”, can generally (as it can here) be disregarded for the purposes of comparing the disputed domain names with the Trademark (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000). The comparisons are then between CCIE and the following terms:
cciedatacenterlabs
cciewirelesslabs
cciewritten
cciesecuritylabs
ccievoicelabs
cciernslabs
cciecollaborationlabs, and
cciewrittendumps.
Complainant’s submission is that the
“domain names are identical and/or confusingly similar to the [Trademark]. The domain names incorporate [the Trademark]. The only alteration is the addition of various descriptive or generic terms, such as “written,” and “wireless labs,” …”.
Clearly, none of the domain names is identical to the Trademark. If regard is paid to the nature of Complainant’s Goods and Services offered under the Trademark then it might be said that the added terms/phrases are indeed descriptive, or allude to CCIE accreditation in some way. The Response in fact states that “the Domain Names in general correspond with [the categories of competency] and the respective exams.” Panel observes that it is only the letter string, “rns”, in one of the domain names which appears to be without explanation.
What is important in Panel’s assessment is that the Trademark is the formative part of each term and is, of itself, a relatively distinctive letter combination having no obvious meaning (putting to one side its trademark significance). Panel finds that in each case the Trademark is the distinctive and memorable component and so finds that the disputed domain names are confusingly similar to Complainant’s Trademark.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information does not provide prima facie evidence that any of the named respondents might be commonly known by any of the disputed domain names and there is submission that might be so.
There is no evidence that Respondent has relevant trademark rights. There is no evidence that Complainant has authorized Respondent to use the Trademark and Complainant denies any such authorization. Each domain name resolves to a website displaying the Trademark and offering products in competition with those offered by Complainant.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names.
At one level it might be said that Complainant seeks to monopolize not just the examination and accreditation of potential experts in the field of networking techniques, but also the training materials directed towards successful accreditation. Were that the argument, then Respondent might have been right to assert that the matter was outside the scope of the Policy. However, Complainant’s position is simply that Respondent has neither permission nor right to use the Trademark as part of the domain names.
The Response has in this regard, two, related arms. The first is that the resolving websites carry a disclaimer of any affiliation with Complainant.
Complainant’s objection is that the disclaimer is not easily discernable in any of the sites. Complainant’s further objection is that once the Respondent’s website is reached, the damage is done.
Panel agrees with these criticisms and notes the consensus view of UDRP panelists in connection with so-called "initial interest confusion":
“- by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved.”[1]
Respondent’s second and corollary argument is that by applying the disclaimer to the resolving websites, Respondent has already partially satisfied the criteria of fair use first laid out in the Oki Data case and that it has otherwise met the standards set by that decision.
Panel is of the view that reference to the Oki Data case is largely a distraction. The respondent in that case was a distributor and, as the panel there recognized at the time, the case raised “the difficult question of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name.” Of relevance is the fact that the Oki Data case and the line of cases which have adopted its reasoning are concerned with resellers – sometimes authorized, sometimes not – of “genuine” goods; of goods first put on the market by the trademark owner. In the case before this Panel, Respondent is offering competitive goods.
In short, Panel finds the disclaimers ineffective and the reliance on the Oki Data case either misplaced, or miscalculated, since Respondent’s actions would be akin to the criticized practice of “bait and switch”.
What remains is Respondent’s slightly different argument of nominative fair use, best expressed by Respondent’s submission “that it would be considerably more difficult, if not impossible, to market CCIE Certification exam preparation materials without use of the CCIE designation.”
Aside from Respondent’s reluctance to call it what it is – a trademark – Panel’s attention rests on Respondent’s “admission” that to market competitive material other than by reference to Complainant’s Trademark is “considerably more difficult”.
Panel’s finds that there is no imperative for Respondent to use the Trademark as part of the domain names, but by doing so, Respondent perceives a commercial advantage. It is immaterial to these matters that third parties might also be taking advantage of Complainant’s Trademark rights by doing a similar thing, as Respondent claims.
Panel finds that Respondent has not brought itself under paragraph 4(c)(iii) of the Policy and has not otherwise shown a right to, or legitimate interest in, the disputes domain names. For these reasons Complainant has established the second element of the Policy.
Complainant must prove on the balance of probabilities that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph (iv) above. Respondent’s intention to attract internet users to the resolving websites is admitted. The websites exist for commercial gain. Panel has already found the disputed domain names to be confusingly similar to the Trademark and so there exists a likelihood of confusion as to source, affiliation, or endorsement (see, for example, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”)).
Additionally, the Panel finds that the Respondent proceeded with actual knowledge of Complainant’s prior rights and interests in its valid and subsisting Trademark. As such, the Panel finds that, under the totality of the circumstances, the Respondent has proceeded with bad faith use and registration.
Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cciedatacenterlabs.com>, <cciewirelesslabs.com>, <cciewritten.com>, <cciesecuritylabs.com>, <ccievoicelabs.com>, <cciernslabs.com>, <cciecollaborationlabs.com>, and <cciewrittendumps.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett Lyons (chair)
Dawn Osborne, and
Kenneth Port,
Panelists
Dated: December 22, 2016
[1] See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at para. 3.5 where it is asked : What is the role of a disclaimer on the web page of a disputed domain name? (http://www.wipo.int/amc/en/domains/search/overview2.0).
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page