Institute of Management Accountants v. Ronald Liu and International Management Accountants Association
Claim Number: FA0511000591282
Complainant is Institute of Management Accountants (“Complainant”), represented by David M. Abrahams, of Law Offices of Webster, Chamberlain & Bean, 1747 Pennsylvania Avenue, N.W., Washington, DC 20006. Respondent is Ronald Liu and International Management Accountants Association (“Respondent”), Suite 1505-07, 15/, Shui On Centre, 6-8 Harbour Road, Wanchai, Hong Kong.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <imaaweb.org>, registered with Web Commerce Communications Limited.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 4, 2005.
On November 7, 2005, Web Commerce Communications Limited confirmed by e-mail to the National Arbitration Forum that the <imaaweb.org> domain name is registered with Web Commerce Communications Limited and that Respondent is the current registrant of the name. Web Commerce Communications Limited has verified that Respondent is bound by the Web Commerce Communications Limited 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 November 8, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 2005 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@imaaweb.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <imaaweb.org> domain name is confusingly similar to Complainant’s IMA mark.
2. Respondent does not have any rights or legitimate interests in the <imaaweb.org> domain name.
3. Respondent registered and used the <imaaweb.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Institute of Management Accountants, is a nonprofit 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 for management accountants and financial management professionals. Complainant conducts business throughout the United States and worldwide utilizing the IMA mark and has been doing so since 1991. Complainant holds registration rights in the IMA mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,811,163 issued December 14, 1993).
Respondent registered the <imaaweb.org> domain name on January 27, 2005. Respondent is using the disputed domain name in connection with the International Management Accountants Association website. Respondent is operating a website for a business that offers similar commercial services as Complainant.
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 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 that it has rights in the IMA mark through registration with the United States Patent and Trademark Office (“USPTO”) and through continuous use of the mark since 1991. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The <imaaweb.org> domain name registered by Respondent is confusingly similar to Complainant’s IMA mark because the addition of the extra letter “a” and the generic or descriptive word “web” is insufficient to distinguish Complainant’s IMA mark from Respondent’s <imaaweb.org> domain name. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); 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 respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Furthermore, the addition of the generic top-level domain “.org” does not distinguish Complainant’s mark from Respondent’s domain name. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); 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.”); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark)
The Panel finds that Policy ¶ 4(a)(i) has been fulfilled.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <imaaweb.org> domain name. When a complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), 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 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); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent appears to be commonly
known by the <imaaweb.org> domain name through its listing in the
relevant WHOIS information. However, no
affirmative evidence has been set forth showing that Respondent was commonly known by this name prior
to registration of the disputed domain name.
The Panel finds that, in the absence of such evidence, there is no choice but to infer that
Respondent is not commonly
known by <imaaweb.org> domain name pursuant to Policy ¶
4(c)(ii). See Starwood Hotels &
Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum
Jan. 12, 2004) ("Though Respondent's WHOIS information lists Respondent as
'SRW Hotels Worldwide,' part of which constitutes the disputed domain name,
there is no evidence before the Panel that Respondent was actually commonly
known by that name."); see also Nature's Path Foods Inc. v. Natures
Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) ("In its WHOIS
contact information, Respondent lists its name and its administrative contact
as 'Natures Path, Inc.' However, since
Respondent failed to respond to the Complaint, there has not been any
affirmative evidence provided to the Panel showing that Respondent was commonly
known by the disputed domain name prior to its registration of the domain
name.").
Moreover, Respondent is using the <imaaweb.org>
domain name to host a competing website.
The Panel finds that Respondent’s use of a domain name that is
confusingly similar to Complainant’s mark to offer competing services is not a
use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that “it would be unconscionable to find a bona fide
offering of services in a respondent’s operation of a website using a domain
name which is confusingly similar to the complainant’s mark and for the same
business”); see also MSNBC Cable,
LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or
legitimate interests in the famous MSNBC mark where the respondent attempted to
profit using the complainant’s mark by redirecting Internet traffic to its own
website).
The Panel finds that Policy ¶ 4(a)(ii) has been fulfilled.
Respondent intentionally registered a domain name that contains in its entirety Complainant’s mark and did so for Respondent’s commercial gain. Respondent’s domain name diverts Internet users who seek Complainant’s IMA mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark. Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainants IMA mark. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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 Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Furthermore, Respondent registered the domain name for the
primary purpose of disrupting Complainant’s business by redirecting Internet
traffic intended for Complainant to Respondent’s website that directly competes
with Complainant. Registration of a
domain name for the primary purpose of disrupting the business of a competitor
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where the respondent and the
complainant were in the same line of business in the same market area); see
also SR Motorsports v. Rotary
Performance, FA 95859 (Nat. Arb. 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 finds that Policy ¶ 4(a)(iii) has been fulfilled.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <imaaweb.org> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 21, 2005
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