CFA Institute v. CTY CP TM&DV TU VAN DAU TU CFA
Claim Number: FA1708001746982
Complainant is CFA Institute (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP, Washington D.C., USA. Respondent is CTY CP TM&DV TU VAN DAU TU CFA (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cfabanking.com>, registered with Realtime Register B.V.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2017; the Forum received payment on August 30, 2017.
On September 1, 2017, Realtime Register B.V. confirmed by e-mail to the Forum that the <cfabanking.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 September 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@cfabanking.com. Also on September 8, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
CFA Institute is the exclusive administrator and grantor of the Chartered Financial Analyst designation and owner of the CHARTERED FINANCIAL ANALYST and CFA trademarks. CFA Institute owns numerous trademark registrations and applications for the CFA, CFA INSTITUTE, and CHARTERED FINANCIAL ANALYST marks (the “CFA Marks”) around the world. A worldwide list of trademark registrations for the CFA Marks was submitted with the Complaint, including the United States Patent and Trademark Office and the National Office of Intellectual Property of Vietnam (“CFA Institute’s Trademark Registrations”).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
a. Background Facts
i. About Complainant and Its Business
CFA Institute is an internationally renowned global, not-for-profit association comprised of investment professionals with over 142,000 members in 159 countries worldwide and 149 local member societies in seventy-three countries. CFA Institute is dedicated to developing and promoting the highest educational, ethical, and professional standards in the investment industry for the ultimate benefit of society. Although CFA Institute began operations primarily in the United States and Canada over 50 years ago, more than one-third of members are now located outside North America, in over 159 countries.
In connection therewith, CFA Institute uses in commerce and owns the famous and distinctive trademarks CFA, CFA INSTITUTE, and CHARTERED FINANCIAL ANALYST, and variations thereof. Since as early as 1962, CFA Institute and its predecessors-in-interest have continuously used the CFA Marks in commerce.
CFA Institute’s predecessor-in-interest coined the designation “Chartered Financial Analyst” or “CFA” and began using it to identify its certification program to its members and those belonging to its sister organization. CFA Institute has all the rights, benefits, and interests of its predecessors in connection with and arising out of the CFA Marks and associated certification program, including all intellectual property rights therein.
CFA Institute administers the internationally recognized Chartered Financial Analyst Program (the “CFA Program”). The CFA Program is a graduate level, self-study examination system for investment professionals. The CFA Program sets the global standard for investment knowledge, standards, and ethics, and is highly esteemed worldwide.
The CFA Program may be described as roughly equivalent to a post-graduate degree in investment management. Candidates who seek the CFA charter and membership in CFA Institute must:
(i) have at least four years of acceptable work experience as a financial analyst; that is, someone who spends a substantial portion of time collecting, evaluating, or applying financial, economic, and statistical data, as appropriate, in the investment decision- making process;
(ii) pass a series of three rigorous, six-hour examinations, covering, inter alia, the fields of accounting, economics, securities analysis, and asset portfolio management;
(iii) submit sponsorship forms from other members and a supervisor; and
(iv) comply at all times with the Code of Ethics and Standards of Professional Conduct of CFA Institute.
Upon successful completion of the CFA Program and examination, candidates are awarded the right to use the CFA Certification Mark, the professional designation “Chartered Financial Analyst” or “CFA” (collectively hereinafter, the “CFA Designation”), and become eligible for CFA Institute’s membership. Members must pay annual dues and sign a professional conduct statement each year.
CFA Institute offers a range of educational programs and services for members, program candidates, investors, employers, institutions, and the press. CFA Institute’s mission is to lead the investment profession globally by setting the highest standards of ethics, education, and professional excellence. To reflect this, CFA Institute has developed a code of ethics and standards of professional conduct for investment professionals. All members of CFA Institute and all CFA Program candidates must adhere to the CFA Institute Code of Ethics and Standards of Professional Conduct.
CFA Institute has used the CFA Marks for over fifty years, and has invested significant amounts of time, money, and effort in advertising and promoting the CFA Marks. CFA Institute’s advertisements are seen and heard around the world by potential candidates, investment professionals, high-net-worth investors, employers, regulators, and the public at large. CFA Institute regularly advertises in print and online versions of The Economist, Bloomberg Markets, Financial Times, Wall Street Journal, Reuters, Business Insider, Globe and Mail, and other high- profile publications read by investment professionals worldwide. CFA Institute also advertises on social media sites such as Facebook, Twitter, SinaWeibo, LinkedIn, and Google+.
The CFA Certification Mark and Professional Designation hold great value for CFA Institute’s Charterholders. The CFA Designation is known as the gold standard of professional credentials within the global investment community. Investors and financial professionals recognize the CFA Marks as the definitive standard for measuring competence and integrity in the fields of portfolio management and investment analysis. CFA Institute’s Charterholders heavily use and rely upon the CFA Designation to signify their mastery of the CFA Program and rigorous examinations, adherence to a code of ethics, and specific work and education requirements. CFA Charterholders are frequently employed as investment advisors, financial analysts, consultants, risk managers, and investment portfolio managers. Indeed, many CFA Charterholders are employed by leading banks, where they provide investment advisory and wealth management services.
The CFA Marks are well-known and famous among the general public as signifying CFA Institute’s services, including in particular certification services, and have been famous since long before Respondent began engaging in the complained of conduct in this Complaint. Further, Complainant operates its official Internet website for the above-noted services at the Domain Name <cfainstitute.org>.
ii. About Respondent
According to the WHOIS record for the Domain Name <CFABanking.com> (the “Domain Name”), the Domain Name is registered to “CTY CP TM&DV TU VAN DAU TU CFA,” which purportedly translates from Vietnamese to English as “CFA Commercial and investment consulting services Jsc.” Upon information and belief, the Domain Name is registered for the benefit of a company by the name of Cong ty Co phan TM-DV Tu van Dau tu CFA, which purportedly translates from Vietnamese to English as “CFA Commercial and investment consulting services Jsc.” (the “Company”).
Respondent purportedly provided banking services and related financial services. Complainant first became aware of Respondent in 2016, when Complainant learned that Respondent was operating a website at the Domain Name marketing its banking and financial services under the CFA Marks. Complainant has not permitted Respondent or any other third parties to use Complainant’s CFA Marks in the names, businesses, or in domain names used in association with banking and financial services, or any other services. Accordingly, in November 2016, CFA Institute contacted Respondent to demand that Respondent cease using the CFA Marks in the Domain Name <CFABanking.com> and in connection with the Respondent’s business. Respondent replied stating they would proceed to de-register the Domain Name.
When Respondent failed to cease operating under the CFA Marks, Complainant engaged local counsel in Viet Nam to assist Complainant in enforcing its rights in and to the CFA Marks. Based on the recommendations of Complainant’s local counsel in Viet Nam, Complainant commenced an administrative action through the Inspectorate of Ministry of Science and Technology (“MOST”) to address Respondent’s unauthorized uses of the CFA Marks in connection with Respondent’s business in Viet Nam. Under Viet Nam law, MOST has the authority to compel cessation of an infringing trademark in a business name, or other promotional materials. MOST is also capable of cancelling an infringing domain name registration for the ccTLD .vn. However, MOST does not have authority to terminate a domain name registration that is adjudicated to be infringing on the gTLD .com.
On February 28, 2017, CFA Institute filed an official request with MOST for administrative action to compel Respondent to cease using the CFA Marks in connection with its business without authorization. On March 20, 2017, a team of MOST inspectors was established to investigate the activities of Respondent. On March 22, 2017, MOST inspectors attempted to verify the physical addresses of Respondent (M floor, NEMO hotel, no. 1 Nguyen Van Linh, Phu My town, Tan Thanh, Ba Ria-Vung Tau province) and its branch office (502 st Thong Nhat Moi, 8 ward, Vung Tau city, Ba Ria-Vung Tau province). However, upon visiting these locations, the MOST inspectors observed that Respondent had apparently ceased commercial operations at these locations. Consequently, MOST suspended its investigation of this matter. Based on the findings by MOST inspectors, it has been determined that Respondent has ceased business operations.
In sum, although it appears that Respondent has ceased commercial operations at a physical location, the identical CFA Mark is prominently featured as the dominant element of the Domain Name. Use of the identical CFA Mark is highly likely to cause confusion among consumers.
b. The Policy Rule 4(a)
In order for Complainant to prevail under the Policy, Complainant must prove the following: (1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests with respect to the Domain Name; and (3) the Domain Name has been registered and is being used in bad faith. See Policy, Paragraph 4(a)(i-iii). Complainant addresses each of these elements in turn.
i. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant had rights
Compare:
The Domain Name: Complainant’s well-known mark:
CFABANKING.COM CFA
As detailed above, Complainant has established worldwide rights in the CFA Marks. The Domain Name <CFABanking.com> is confusingly similar to and wholly incorporates the CFA mark.
The addition of the .COM suffix to the Domain Name in no way distinguishes it from Complainant’s CFA Marks. It is well-established that the presence or absence of punctuation or spacing and the addition of a top level domain suffix are of no consequence when establishing the identity of marks. See Barney’s Inc. v. BNY Bulletin Board, D2000-0059 (WIPO April 2, 2000) (stating that the inclusion of “.com” in the Respondent’s domain name does not “serve to distinguish that name from Complainant’s mark in any way”).
A domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.” PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”). Here, the Domain Name incorporates Complainant’s CFA Mark in its entirety, and is therefore confusingly similar.
A domain name registrant may not avoid a confusing similarity claim by simply adding a competitor’s mark or non-distinctive term to another’s mark. See Microsoft Corporation v. Adam Jordan Associates FA1102001375214 (ForumApr. 11, 2011) (holding that the addition of a competitor’s mark or descriptive term to Complainant’s mark does not sufficiently distinguish the disputed domain names from Complainant’s mark) (re google-bing.com, microsoft-bing.com, and search-bing.com).
Here, the Domain Name merely adds the non-distinctive term “banking” to the CFA Mark. The mere addition of “banking” does not distinguish the Domain Name from the CFA Marks, and users seeing the prominence with which the CFA marks are used in the Domain Name and throughout the website hosted thereon are likely to believe that CFA Institute is associated with the Domain Name, or otherwise endorses the services provided by Respondent through the Domain Name. See Google Inc. v. power sky a/k/a wanglun FA1109001407268 (Forum Oct. 27, 2011) (finding that the addition of “Baidu” to Complainant’s GOOGLE mark in the googlebaidu.com domain name fails to distinguish the disputed domain name from the GOOGLE mark); and Scholastic Inc. v. Tonya Parker, D2001-0872 (WIPO September 27, 2001) (stating that previous panels have decided that the addition of minor or non-distinctive elements does not alter the determination that the disputed domain name is confusingly similar to the mark in which the Complainant has rights, and thus the Domain Name “schoolasticnetworks.com” was found confusingly similar to Complainant’s trademark for “SCHOLASTIC”). Moreover, banks commonly provide investment advisory and management services, which are the very services certified by CFA Institute under the CFA Mark, thereby further compounding the likelihood of confusion. Specifically, the descriptive term “banking” used in connection with the CFA Mark in the Domain Name may mislead consumers to believe that the services previously offered through the Domain Name were the same investment advisory and management services offered by CFA Institute.
As discussed above, the CFA Marks have come to be recognized by potential candidates, investment professionals, high-net-worth investors, employers, regulators, and the public at large as the “gold standard” of professional credentials within the global investment community. Indeed, investors and financial professionals recognize the CFA Marks as the definitive standard for measuring competence and integrity in the fields of portfolio management and investment analysis. As such, it is quite possible that consumers will be misled to believe that the services offered through the Domain Name are of the same quality and trustworthiness associated with CFA Institute. It is equally plausible that consumers, upon encountering the Domain Name, may mistakenly believe that the banking services previously offered by Respondent were performed by individuals that hold the CFA designation. Alternatively, consumers may be misled to believe that Respondent’s business was a credit union or similar financial institution that was affiliated with or sponsored by CFA Institute.
As noted above, the identical CFA Mark is prominently featured as the dominant element of the Domain Name <CFAbanking.com>. Use of the identical CFA Mark in which Complainant holds prior rights in connection with the generic term “banking” is highly likely to cause confusion among consumers. In view of the foregoing, Complainant respectfully submits that it has established that the Domain Name is confusingly similar to CFA Marks.
ii. Respondent has no rights or legitimate interests with respect to the Domain Name
CFA Institute has no business relationship whatsoever with Respondent. CFA Institute has not licensed or otherwise permitted Respondent to use the CFA Marks or to register any domain name incorporating the CFA Marks. Indeed, CFA Institute made Respondent aware that Respondent’s use of the CFA Mark in the Domain Name is not authorized on multiple occasions. Moreover, because Complainant owns exclusive rights in the CFA Marks, and has numerous United States federal and foreign registrations therefor, Respondent cannot establish legitimate rights or interests in the Domain Name. See, e.g., The Chase Manhattan Corporation et al v. John Whitely, D2000-0346 (WIPO June 12, 2000) (“An infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent.”).
Respondent had been using the Domain Name to misdirect consumers to a website purporting to offer banking services, financial services, and mortgage and credit loans, all under the CFA marks. Respondent’s use of the CFA Marks in the Domain Name and throughout the website will mislead consumers into believing that the services previously offered by Respondent were of the same quality of the services provided by individuals authorized by CFA Institute to use the CFA Designation. Because CFA Institute has never licensed or authorized Respondent to offer the services certified by CFA Institute, namely, financial services under the CFA Marks, Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial fair use. See G.D. Searle & Co. v. Mahony, FA0204000112559 (Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i)); see also Nokia Corp. v. Eagle, FA0801001125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii)). Moreover, given that Complainant believes Respondent has ceased business operations altogether, Respondent does not use the Domain Name in connection with a bona fide offering of goods or services.
Thus, Respondent has no rights or legitimate interest in the Domain Name.
iii. Respondent registered and is using the Domain Name in bad faith.
The ICANN Policy establishes that, for the purposes of ¶4(b)(iii), the “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the Respondent is using the Domain Name intentionally to disrupt the business of a competitor. See ICANN Policy, ¶4(b)(iii).
As noted above, Complainant, is the exclusive administrator and grantor of the CFA Designation, which, as a result of Complainant’s advertising and promotion of the same has come to be recognized as the “gold standard” of professional credentials within the global investment community for which the CFA Marks, and therefore the Domain Name, serves as a source identifier. By creating confusion through its registration and use of a Domain Name incorporating the CFA Marks in connection with services that are related to the services certified by CFA Institute under the CFA Marks, Respondent “is attempting to disrupt the business of a competitor . . . [which] is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).” TM Acquisition Corp. v. Gary Lam (NAF Case No. FA0405000280499).
The evidence detailed above establishes that Respondent registered and uses the Domain Name, which is confusingly similar to and wholly incorporates Complainant’s well-known CFA Mark, for the sole purpose of misdirecting consumers who are attempting to locate investment advisory and management services provided by authorized holders of the CFA Designation, or CFA Institute “to 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 pursuant to Policy ¶4(b)(iv).” TM Acquisition Corp. v. Gary Lam, FA0405000280499 (Forum July 9, 2004).
Specifically, as noted above, the Domain Name, <CFABanking.com>, is confusingly similar to and wholly incorporates, Complainant’s CFA Mark. As a result, the Domain Name attracts Internet users who are looking for a website associated with the services provided by Complainant, or individuals certified by Complainant under the CFA Marks.
Further, the facts show that Respondent continues to use the Domain Name even after being made aware of Complainant’s CFA Marks, and the value associated therewith, proven by the fact Respondent has not de-registered the Domain Name as initially agreed to. Therefore, Respondent knowingly and intentionally is using the <CFABanking.com> domain in violation of CFA Institute’s rights in its CFA Marks.
The Policy establishes that, for the purposes of ¶4(b)(iv), the “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s CFA Marks 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. See Policy, ¶4(b)(iv).
In light of the foregoing, the facts show that Respondent currently knows of Complainant and its well-known CFA Marks and Respondent is not taking adequate measures to prevent consumers from being misled as to CFA Institute’s affiliation with the Domain Name. First, the Domain Name wholly incorporates Complainant’s CFA Mark and is confusingly similar to Complainant’s CFA Marks. Second, the Domain Name links to a website offering financial services—highly similar to the services certified by CFA Institute, demonstrating that Respondent is aware of and intends to trade off Complainant’s goodwill. Third, Respondent now knows of Complainant and its CFA Marks and has not de-registered the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 response, the Panel shall decide 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 C.F.A. (e.g. Reg. No. 935,504, registered June 6, 1972) and CFA (e.g. Reg. No. 2,495,459, registered Oct. 9, 2001) marks with the United States Patent and Trademark Office (“USPTO”). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has established its rights in the C.F.A. and CFA marks.
Complainant claims Respondent’s <cfabanking.com> domain name is confusingly similar to Complainant’s mark because it contains the CFA mark in its entirety and adds the non-distinctive term “banking” along with the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Adding generic terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. The <cfabanking.com> domain name is confusingly similar to the CFA mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <cfabanking.com> domain name. The absence of contradicting evidence in the record showing a respondent was authorized to use a complainant’s mark in a domain name can be sufficient evidence of a lack of rights and legitimate interests. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “CTY CP TM&DV TU VAN DAU TU CFA / CTY CP TM&DV TU VAN DAU TU CFA” as the registrant (which this Panel believes is a factitious name). No evidence exists to show Respondent has ever been legitimately known by the CFA mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. This Panel must conclude Respondent is not commonly known by the <cfabanking.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the <cfabanking.com> domain name to offer services directly competing with Complainant. Using a confusingly similar domain name that resolves in a directly competing webpage does not constitute a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provided a screenshot of the resolving webpage, which displays content in Vietnamese. Complainant also provided a screenshot of the translation of the registrant’s name, which is also displayed as the apparent title of the disputed domain name. The translation of the heading is “CFA INVESTMENT ADMINISTRATION AND SERVICE JS CO.” Respondent uses the disputed domain name to compete with Complainant, which does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
While not directly claimed by Complainant, this Panel believes Respondent did not use its true name and contract information when Respondent acquired and used the disputed domain name. This means Respondent acquired no rights to the domain name simply by registering it.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <cfabanking.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services, all while disrupting Complainant’s business. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain and disrupt the complainant’s business constitutes bad faith registration and use under Policy ¶4(b)(iii) & (iv). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Respondent attempted to commercially benefit off Complainant’s mark, and disrupted Complainant’s business, all in bad faith under Policy ¶4(b)(iii) & (iv).
Complainant claims Respondent had actual knowledge of Complainant’s CFA mark. Actual knowledge of another’s rights can adequately prove bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant claims Respondent knew of Complainant’s rights in the famous CFA mark because the mark is so well-known. This Panel agrees and finds Respondent had actual knowledge of Complainant’s mark, adequately demonstrating bad faith under Policy ¶4(a)(iii).
Furthermore, this Panel found Respondent registered the disputed domain name using fictitious WHOIS information. This raises the rebuttable presumption Respondent has acted in bad faith in the commercial context. Respondent has done nothing to rebut this presumption, leaving the Panel to find bad faith on these grounds.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <cfabanking.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, October 3, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page