Institute of Management Accountants v.
Imaa Association and Michael Zou
Claim Number: FA0508000530324
PARTIES
Complainant
is Institute of Management Accountants
(“Complainant”), represented by David M.
Abrahams, of
Law Offices of Webster, Chamberlain & Bean, 1747 Pennsylvannia Ave., N.W., Washington, D.C. 20006. Respondent is IMAA Association and Michael Zou (“Respondent”), 6570 Booth Street, Apt. 6E, Rego Park,
NY 11374.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <imaaweb.us>,
registered with Enom, Inc.
PANEL
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 3, 2005; the Forum received a hard copy of the
Complaint on August 3, 2005.
On
August 3, 2005, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <imaaweb.us> is
registered with Enom, Inc. and that Respondent is the current registrant of the
name. Enom, Inc. has verified that
Respondent is bound by the Enom, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the
“Policy”).
On
August 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 5,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On
September 1, 2005, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody,
Esq., 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. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the 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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
1. The <imaaweb.us> domain name
registered by Respondent is confusingly similar to Complainant’s IMA mark.
2.
Respondent
has no rights to or legitimate interests in the <imaaweb.us> domain
name.
3.
Respondent registered and used the <imaaweb.us> domain name in
bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Institute of Management
Accountants, is a non-profit association of over 70,000 members worldwide
dedicated to promoting the interests of management accountants and financial
management professionals as well as providing educational, testing, certification
and professional development programs.
Complainant conducts business throughout
the world utilizing the IMA mark.
Complainant owns numerous trademark registrations for the IMA mark with
the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No.
2,285,425 issued October 12, 1999).
Respondent registered the <imaaweb.us> domain name on July 11, 2003. Respondent’s domain name resolves to a
website that offers products and services that directly compete with those
offered by Complainant’s business.
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 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. 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 (Nat. Arb. 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.").
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 or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant
established with extrinsic proof in this proceeding that it has rights to the
IMA mark as evidenced by its registration with the USPTO. See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's
federal trademark registrations establish Complainant's rights in the BLIZZARD
mark.”); see
also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Moreover,
Respondent’s <imaaweb.us> domain name is confusingly similar to Complainant’s
IMA mark because the domain name incorporates Complainant’s mark in its
entirety and merely adds the letter “a” and the common word “web.” Such changes are not enough to overcome the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). 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 Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000)
(finding the <westfieldshopping.com> domain name confusingly similar
because the WESTFIELD mark was the dominant element); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a the respondent does
not create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks).
Furthermore,
Respondent’s <imaaweb.us> domain
name is confusingly similar to Complainant’s IMA mark because the domain name
incorporates Complainant’s mark in its entirety and deviates with the addition
of the country-code “.us.” See
Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding
that since the addition of the country-code “.us” fails to add any
distinguishing characteristic to the domain name, the <tropar.us> domain
name is identical to the complainant’s TROPAR mark); see also Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
does not have rights or legitimate interests in the <imaaweb.us> domain name.
When a complainant establishes a prima
facie case, the burden shifts to the respondent to prove that it has rights
or legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Moreover,
Respondent is not the owner or beneficiary of a trade or service mark that is
identical to the <imaaweb.us> domain
name and is not commonly known by the domain name. Thus, the Panel concludes that Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(i) or Policy ¶ 4(c)(iii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where respondent was not commonly known by the mark and never applied
for a license or permission from complainant to use the trademarked name); 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); see also Hartford Fire Ins.
Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding
that the respondent has no rights or legitimate interests in the domain names
because it is not commonly known by the complainant’s marks and the respondent
has not used the domain names in connection with a bona fide offering of
goods and services or for a legitimate noncommercial or fair use).
Furthermore,
Respondent is using a confusingly similar domain name to operate a website that
markets competing products and services. Such competitive use is not a use in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
complainant, was not a bona fide
offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of UDRP ¶¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent
has registered and used the <imaaweb.us>
domain name in bad faith by using the domain name, which contains a confusingly
similar version of Complainant’s IMA mark, to market products and services that
directly compete those of Complainant’s business. Such use constitutes disruption and is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding respondent acted in bad faith
by attracting Internet users to a website that competes with complainant’s
business); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from complainant's marks
suggests that respondent, complainant’s competitor, registered the names
primarily for the purpose of disrupting complainant's business).
Moreover,
Respondent registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(iv), as Respondent is using the <imaaweb.us> domain name to intentionally attract, for
commercial gain, Internet users to its website, by creating a likelihood of
confusion with Complainant as to the source, sponsorship, affiliation or
endorsement of its website. See Fanuc Ltd v. Mach. Control Servs.,
FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated
UDRP ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's
mark by using a domain name identical to the complainant’s mark to sell the
complainant’s products); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
Furthermore,
Respondent has used the <imaaweb.us>
domain name, which contains Complainant’s IMA mark, to redirect Internet
users to Respondent’s website featuring goods and services that compete with
Complainant’s business. This suggests
that Respondent had actual knowledge of Complainant’s rights in the mark when
it registered the domain name and chose the disputed domain name based on the
goodwill Complainant has acquired in its IMA mark. Furthermore, Complainant’s registration of the IMA mark with the
USPTO bestows upon Respondent constructive notice of Complainant’s rights in
the mark. Respondent’s registration of
a domain name containing Complainant’s mark in spite of Respondent’s actual or
constructive knowledge of Complainant’s rights in the mark is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). 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); see
also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
DECISION
Having
established all three elements required under the usTLD Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <imaaweb.us>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 15, 2005
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