Certified Financial Planner Board of Standards Inc. v. Financial Planners Index c/o Alex Zamboni
Claim Number: FA0702000910784
Complainant is Certified Financial Planner Board of Standards Inc. (“Complainant”), represented by Jennifer
Collins, of Faegre & Benson, LLP, 1700 Lincoln
St., Suite 3200, Denver, CO 80203-4532.
Respondent is Financial Planners Index c/o Alex
Zamboni (“Respondent”), 14610A
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <certified-financial-planners.net>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 7, 2007.
On February 7, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <certified-financial-planners.net> domain name 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 2007, 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@certified-financial-planners.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a non-profit corporation that requires financial planning professionals to complete a required course in financial planning in order for them to use the CERTIFIED FINANCIAL PLANNER mark in association with their services.
In connection with the provision of these services, Complainant has registered the CERTIFIED FINANCIAL PLANNER service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,424,318, issued January 6, 1987).
Respondent registered the <certified-financial-planners.net> domain name on August 31, 2005.
Respondent is not commonly known by the disputed domain name.
The disputed domain name resolves to a website featuring click-through advertising from which Respondent benefits financially.
Respondent’s <certified-financial-planners.net> domain name is confusingly similar to Complainant’s CERTIFIED FINANCIAL PLANNER mark.
Respondent uses the contested domain name to attract Internet users to its website and to create confusion among such users as to Complainant’s identity as the possible source of Respondent’s website.
Respondent does not have any rights or legitimate interests in the <certified-financial-planners.net> domain name.
Respondent has registered and uses the <certified-financial-planners.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the CERTIFIED FINANCIAL
PLANNER service mark through its registration of the mark with the USPTO. Such registration and subsequent use
sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See
Complainant contends that
Respondent’s disputed domain name is confusingly similar to Complainant’s CERTIFIED
FINANCIAL PLANNER mark. The domain name
contains Complainant’s mark in its entirety and merely adds two hyphens, the
letter “s,” and the generic top-level domain (“gTLD”) “.net.” The addition of hyphens, the letter “s,” and
the gTLD “.net” does not sufficiently distinguish the domain name from the mark
within the compass of Policy ¶ 4(a)(i). See Health Devices Corp. v.
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made out a prima facie case in support of its allegations, the burden shifts to Respondent to show that has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with a respondent to demonstrate that it has rights or legitimate interests under the Policy).
It is undisputed on the record before us that the disputed domain name resolves to a website offering click-through advertising, presumably with the intent of receiving financial gain. Respondent’s use of the disputed domain name to misdirect unsuspecting Internet users to a website featuring click-through advertising is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use in accordance with Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that a respondent’s use of a disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. A review of Respondent’s WHOIS information reveals that the registrant of the disputed domain name is “Financial Planners Index c/o Alex Zamboni.” No other pertinent evidence appearing in the record, we conclude that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that a respondent was commonly known by the “Krylon” nickname because there was no evidence indicating when the alleged nickname was adopted and how it was used); see also Gambro AB v. Family Health & Wellness Ctr., D2001-0447 (WIPO May 25, 2001) (finding that a respondent did not submit any evidence to support its suggestion that its employee was known by the nickname “Gambro”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant further contends that Respondent, by using the disputed domain name to provide pay-per-click advertising, has created among Internet users a likelihood of confusion with Complainant’s mark for Respondent’s financial gain. Such use of the disputed domain name to misdirect unsuspecting Internet users to its own website, presumably with the intent of securing financial benefit, suggests registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that a respondent violated Policy ¶ 4(b)(iv) because where it admittedly used a complainant’s well-known mark to attract users to that respondent's website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there in question was obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for a respondent’s commercial gain).
In addition, it appears that Respondent registered the <certified-financial-planners.net> domain name with at least constructive knowledge of
Complainant’s rights in the CERTIFIED FINANCIAL PLANNER trademark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <certified-financial-planners.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 9, 2007
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