CFA Institute v. WMD Web Hosting / private registration private registration
Claim Number: FA1701001711476
Complainant is CFA Institute (“Complainant”), represented by Ryan Compton of DLA Piper LLP, USA. Respondent is WMD Web Hosting / private registration private registration (“Respondent”), Croatia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cfassistant.com>, registered with 1API GmbH.
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.
Darryl C. Wilson, as Panelist
Complainant submitted a Complaint to the Forum electronically on January 9, 2017; the Forum received payment on January 9, 2017.
On January 11, 2017, 1API GmbH confirmed by e-mail to the Forum that the <cfassistant.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 January 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2017 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@cfassistant.com. Also on January 16, 2017, 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 timely response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant registered the CFA mark (Reg. No. 935,504, registered June 6, 1972) mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <cfassistant.com> is nearly identical or confusingly similar as it fully incorporates the CFA Mark while adding the letters “ssistant” to add to the letter “a” in the CFA mark to form the word “assistant” and the generic top-level domain suffix “.com” (“gTLD”).
Complainant has no business relationship whatsoever with Respondent and has not been commonly known by the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use the CFA Marks or to register any domain name incorporating the CFA Marks. Further, Respondent uses the CFA Marks in the disputed domain name to mislead consumers into believing that the services offered by Respondent are of the same quality of the services provided by Complainant. Because Complainant has never authorized Respondent to offer the certified services offered by Complainant under their Marks, Respondent does not use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and used <cfassistant.com> in bad faith. Respondent is attempting to disrupt the business of Complainant by using the CFA mark in the disputed domain name, while offering services similar to that of Complainant. Furthermore, Respondent also used the CFA mark to commercially benefit by creating a likelihood of confusion with the CFA mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location, or of a product or service on Respondent’s website or location. Finally, at the time of registering the disputed domain name, Respondent clearly knew of Complainant and the CFA mark and its value, and intended to benefit from Complainant’s reputation and associated goodwill.
B. Respondent
Respondent failed to submit a timely Response in this proceeding.
Complainant is CFA Institute of Charlottesville, VA, USA. Complainant is the owner of domestic and international registrations for the mark CFA, and numerous related marks comprising the CFA family of marks, which it has used continuously since at least as early as 1962, in connection with educational services in the investment industry.
Respondent is WMD Web Hosting / private registration private registration, Croatia. Respondent’s registrar’s address is listed as Saarland, Germany. The Panel notes that Respondent registered <cfassistant.com> on or about April 8, 2012.
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 timely response, the Panel decides 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Complainant registered the CFA (Reg. No. 935,504, registered June 6, 1972) mark with the USPTO. Past panels have held that registration of a mark with the USPTO is sufficient to establish a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). The Panel here finds that Complainant has established rights in the CFA mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that the <cfassistant.com> domain name is confusingly similar to its CFA mark because the domain name incorporates the trademark in its entirety and adds the letters “ssistant” (short for the generic term “assistant”) and the gTLD “.com” does not distinguish the domain name from Complainant’s trademark. The use of a full mark and the addition of a generic term with a gTLD is evidence of the domain name being confusingly similar to the mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel here finds that Respondent has not distinguished its domain name from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (FORUM Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant claims that Respondent has not been commonly known by the disputed domain name, been authorized to use the CFA mark, or been affiliated with Complainant in any manner. WHOIS information identifies Respondent as, “private registration private registration,” of the organization, “WMD Web Hosting,” indicating that Respondent used a privacy service to shield its identity. Prior panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and apparent use of a service to shield a respondent’s identity. See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). The Panel here finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next claims that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent is using the disputed domain name to resolve to a website that offers services that compete with Complainant and offers preparatory services for Complainant’s CFA exam. Previous panels have held that using a confusingly similar disputed domain name to resolve to a website offering services in competition with a complainant’s services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”). The Panel here finds that Respondent has not used the disputed domain name within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a timely response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent’s use of the disputed domain name demonstrates bad faith registration and use by disruption of Complainant’s business. Again, Respondent’s domain name resolves to a website that offers services related to Complainant’s business and purportedly in competition with Complainant. Past panels have held that a respondent disrupted and competed with a complainant’s business based on evidence of use that is within the same sphere of business as a complainant. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); SR Motorsports v. Rotary Performance, FA 95859 (Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field). The Panel here finds that Respondent’s domain name has been registered and used in bad faith under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s use of the disputed domain name confuses and attracts internet users for commercial gain. Again the Panel notes the evidence provided by the Complainant indicating Respondent’s domain name resolves to a website that appears to advertise or sell products or services related to Complainant’s CFA mark and in the same sphere of business. Prior panels have found bad faith where a respondent used a disputed domain name to profit from the similarity between a domain name and a complainant’s mark. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); Bank of America, National Association v. Marcos Alexis Nelson, FA1505001621654 (Forum July 2, 2015) (findings that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where it used the disputed domain name to promote its business in real estate and financial services, which were services that competed with the services the complainant offered). The Panel here finds bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <cfassistant.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 28, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page