Certified Financial Planner Board of Standards Inc. v. Solutions Planning Group c/o Mark Avallone
Claim Number: FA0609000794667
Complainant is Certified Financial Planner Board of Standards Inc. (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP, 1700 Lincoln St., Suite 3200, Denver, CO 80203-4532. Respondent is Solutions Planning Group c/o Mark Avallone (“Respondent”), 6903 Rockledge Dr. #800, Bethesda, MD 20817.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <yourcfp.com>, registered with Register.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 14, 2006.
On September 13, 2006, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <yourcfp.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 September 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 5, 2006 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@yourcfp.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <yourcfp.com> domain name is confusingly similar to Complainant’s CFP mark.
2. Respondent does not have any rights or legitimate interests in the <yourcfp.com> domain name.
3. Respondent registered and used the <yourcfp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Certified Financial Planner Board of Standards, Inc., runs a national certification program for financial planning practitioners. Complainant holds registrations with the United States Patent and Trademark Office for its primary mark, the CFP mark (Reg. No. 1,053,754 issued November 30, 1976; Reg. No. 1,411,779 issued September 30, 1986). Complainant requires that applicants meet certain prerequisites, and if those prerequisites are met, then Complainant grants permission to certificants to use and display Complainant’s marks to the public as evidence of certification. Complainant uses its Marks Use Guide to ensure that those certified by Complainant and allowed to use Complainant’s marks, are aware of the limitations on the use of those marks. The “Marks Use Guide” prohibits the use of any of Complainant’s marks in a domain name. Complainant holds registrations of the <cfp.com> and <cfp.net> domain names, which it uses in connection with operation of a website presenting Internet users with information about Complainant’s certification process.
Respondent registered the <yourcfp.com> domain name on July 29, 2004. Respondent was certified by Complainant and was thus granted permission to use Complainant’s marks within the guidelines outlined by Complainant’s “Marks Use Guide.” Respondent is using the disputed domain name to redirect Internet users to its website which features links to third-party websites purporting to compete with 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 its rights in the CFP mark
through registration of the mark with the USPTO. Further, in Ibanez v. Florida Bd. Of Accountancy, 512 U.S.
136, 147 (1994), the United States Supreme Court addressed Complainant’s
CERTIFIED FINANCIAL PLANNER and CFP marks, saying that the marks were
“well-established, protected federal trademarks that have been described as
‘the most recognized designations[s] in the planning field.” The Panel finds that Complainant’s registration
of the CFP mark with the USPTO, endorsed by the Supreme Court, is evidence that
Complainant has established rights in the CFP mark. See 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."); 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.”).
Respondent’s <yourcfp.com> domain name is confusingly similar to Complainant’s CFP mark. Respondent’s domain name incorporates Complainant’s mark in its entirety and adds the term “your” as well as the top-level domain “.com.” The addition of the top-level domain “.com” does not differentiate the disputed domain name from Complainant’s mark since a top-level domain is required for all domain names. The addition of the term “your” does not distinguish the disputed domain name from Complainant’s mark because the term “your” could be descriptive of Complainant’s business, suggesting a website for users of Complainant’s certification services. The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or the
legitimate interests in the <yourcfp.com> domain name. Complainant’s assertion constitutes a prima
facie case for purposes of the Policy and shifts the burden to Respondent
to demonstrate that it does have rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
Respondent had the opportunity to present the Panel with evidence and
argument in support of its rights and legitimate interests in the form of a
Response. Respondent’s failure to avail
itself of the opportunity to submit a Response suggests to the Panel that
Respondent lacks rights or legitimate interests. Nonetheless, the Panel will examine the available evidence to
determine whether Respondent has rights or legitimate interests in the disputed
domain name as contemplated by Policy ¶ 4(c).
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (“Because Complainant’s Submission constitutes a prima facie case
under the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); 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 is using the disputed domain name to redirect Internet users to Respondent’s website featuring links to third-party websites. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as allowed by Policy ¶ 4(c)(i), because Respondent’s website does not include any goods or services whatsoever. The entire website is composed of links to third-party websites, some of which offer services in competition with Complainant. Respondent is also not using the disputed domain name in connection with a legitimate noncommercial or fair use as outlined by Policy ¶ 4(c)(iii), because Respondent is presumably receiving pay-per-click referral fees from the links posted on its website. The Panel finds that Respondent lacks rights or legitimate interests as contemplated by Policy ¶¶ 4(c)(i) and (iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
There is no available evidence that Respondent is
commonly known by the <yourcfp.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Solutions Planning Group,” a name with no clear relationship to
the disputed domain name. Further,
Complainant asserts without contradiction that while Respondent did have the
right to use the CFP mark in the manner outlined in the “Marks User Guide”
because Respondent was certified by Complainant, Respondent did not have
permission to use the CFP mark in a domain name. Further, while Complainant did provide Respondent with its
certification, there is no additional relationship or affiliation between
Complainant and Respondent that could justify Respondent’s use of Complainant’s
mark in a domain name. 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 Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <yourcfp.com> domain name to redirect Internet users to its website featuring links to other third-party websites. Many of the third-party websites linked on Respondent’s website are for services in competition with Complainant. Internet users finding themselves redirected to Respondent’s website may follow the links to Complainant’s purported competitors instead of seeking Complainant’s genuine websites at <cfp.com> and <cfp.net>. By using its website to redirect Internet users, Respondent is disrupting Complainant’s business. The panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <yourcfp.com> domain name is
confusingly similar to Complainant’s CFP mark.
Internet users seeking Complainant’s genuine websites may mistakenly
find themselves instead redirected to Respondent’s website. Because of the confusing similarity between
the disputed domain name and Complainant’s mark, combined with the content of
Respondent’s website, it is possible that Internet users may mistakenly believe
that Respondent is affiliated with or sponsored by Complainant. Respondent is profiting from Internet users
confusion, presumably collecting pay-per-click referral fees from the links
posted on its website. The Panel finds
that such use is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also AltaVista
Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that
offered links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes).
The Panel is not limited to the circumstances of Policy ¶¶
4(b)(i)-(iv) in finding evidence of bad faith registration and use. See Digi Int’l Inc. v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets
forth certain circumstances, without limitation, that shall be evidence of
registration and use of a domain name in bad faith); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples
[of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”). In this case, additional
evidence of bad faith registration and use is Respondent’s registration and use
of the disputed domain name despite actual knowledge of Complainant’s CFP
mark. Respondent was certified by
Complainant and received a significant amount of information from Complainant
containing Complainant’s CFP mark, including Complainant’s “Marks Use Guide,”
which explicitly prohibits the use of Complainant’s mark in a domain name. The Panel finds that Respondent’s use of
Complainant’s mark in a domain name despite actual knowledge of Complainant’s
rights in the CFP mark is evidence of bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.”); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yourcfp.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 25, 2006
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