CFA Institute v. Loai Almuhanna
Claim Number: FA1810001810952
The domain name at issue is <thecfa.biz>, registered with Key-Systems GmbH.
Complainant submitted a Complaint to the Forum electronically on October 9, 2018; the Forum received payment on October 9, 2018.
On October 10, 2018, Key-Systems GmbH confirmed by e-mail to the Forum that the <thecfa.biz> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 October 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2018 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@thecfa.biz. Also on October 12, 2018, 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.
A timely Response was received and determined to be complete on October 22, 2018.
On October 26, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi as Panelist.
On October 30, 2018, Respondent sent an email to the Forum, which was considered by the Forum as non-compliant with Supplemental Rule 7.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized or licensed to use Complainant’s CFA mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website that purports to offer a competing, financial advisory service.
Lastly, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it pass off as Complainant and offers competing, financial advisory services. Furthermore, Respondent had actual knowledge of Complainant’s rights in the CFA mark prior to registering and subsequent use of the disputed domain name.
In his Response, Respondent says he conducted a trademark check on the WIPO Madrid International Mark System for the disputed domain name and found zero results. “Thecfa”, says Respondent, stands for “the Certified Financial Adviser” and nothing else. Respondent adds he even mentioned this on the website, stating that they are ““the Certified Financial Adviser”. Respondent uses the English term to translate the Arabic term, so that non-Arabic people can understand the meaning. Furthermore, the term “thecfa” is an abbreviation for their name only and nothing else. Respondent has no business relation with other parties and it was not Respondent`s intention to link their name to any party or any names. Respondent only represents himself, as clearly stated on his website.
On October 21, 2018, Respondent in an email to the Forum stated that on August 16, 2018, he acquired the <mutamad.com> domain name, and that he started to redirect all emails to this new domain name accordingly. Respondent added that he has no problem in transferring the domain - presumably meaning the disputed domain name - to them - presumably meaning, “to the Complainant” - if they - presumably meaning “the Complainant” - agree to pay to Respondent the expenses that were incurred.
Respondent contends that it ran a search on the WIPO database for the “TheCFA” mark, for which he did not find any results. Respondent’s says that the disputed domain name refers to “The Certified Financial Advisor”. Respondent contends that it bought the disputed domain name legally.
Respondent makes no arguments as to Policy ¶¶ 4(a)(ii) or (iii).
In its Additional Submission of October 30, 2018, Respondent says that he offered the disputed domain name to Complainant per their request, but Respondent has not heard from them. Respondent has stopped using that domain name and created another domain name when he got an email from Complaint. Respondent never intended to associate himself to them, since he is very different from them. Nonetheless, the domain even was verified by the domain host that Respondent bought legally by google "g suite" for the name I requested "the certificated financial adviser", Respondent says he also checked the database of the WIPO International Trademark system to make sure that everything was right and the name <thecfa.biz> that he bought was cleared: no one owned it. Moreover, various third parties have the same name only in the US alone. For example, " (Applicant) Components for Automation, Inc. (Also known as AKA CFA) Corporation CALIFORNIA, 4525 E. Industrial St., Unit 4C, Simi Valley CA 93063". They have the same name but they offer different services. “
Complainant is a global, not-for-profit association of investment professionals with over 150,000 members in 140 countries. Complainant has national branches in various countries, including in Saudi Arabia.
Complainant owns numerous registrations for the CFA mark, inter alia, US trademark CFA, Registration No. 2,495,459, registered on October 2, 2001, and Saudi Arabia trademark CFA, Registration No. 734/59, registered on June 27, 2004.
The disputed domain name was registered on June 10, 2018.
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 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 claims rights in the CFA mark. In support of this claim, Complainant submits printouts taken from the official databases of the United States, Reg. No. 2,495,459, registered October 2, 2001 and Saudi Arabia Reg. No. 734/59, registered June 27, 2004. Based on this evidence, the Panel is satisfied that Complainant has rights in the CFA mark for purposes of Policy ¶ 4(a)(i). The Panel coincides with Respondent that there may exist other trademark registrations for “cfa” that belong to registrants other than Complainant. However, this fact does not diminish in the least Complainant`s rights in the mark for purposes of Policy ¶4(a)(i), which does not require that such rights be exclusive.
The Panel also notes that the disputed domain name fully incorporates the CFA mark while adding the “.biz” gTLD; the term “the” is added as a prefix to the CFA mark. In this regard, Respondent says that he (presumably before registering the disputed domain name) had checked the WIPO International Trademark database for the term “thecfa”, and that the database returned no result for this search, so he concluded that the term was clear for registration. However, in the view of the Panel, the fact that a term cannot be found on a database does not mean that this term cannot be found on another database. In addition, the test for identically or confusing similarity under Policy ¶ 4(a)(i) requires establishing whether the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. Moreover, it is well established that adding in a domain name a generic term - such as the common article “the” - and the TLD to a complainant’s fully incorporated mark does not suffice to distinguish such domain name from the mark. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant`s CFA mark for purposes of Policy ¶ 4(a)(i).
A complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to the respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CFA mark in any way.
The Panel notes that according to the relevant WhoIs data, the registrant of the disputed domain name and the person who signs the emails sent to the Forum in this proceeding is “Loai Almuhanna”. Absent any evidence that Respondent is known – commonly or otherwise - by the disputed domain name, or that Respondent was authorized to register a domain name incorporating Complainant’s mark, Policy ¶ 4(c)(ii) clearly does not apply. In the opinion of the Panel, the fact that there may exist third parties using the term “cfa” as their names or parts thereof, as stated by Respondent, does not create a right or a legitimate interest for Respondent. In other words, for a respondent to counter a complainant`s allegation under Policy ¶4(a)(ii), a respondent should refer to its own rights in the domain name, and not to the rights of any third party.
Complainant further argues that Respondent’s lack of rights or legitimate interests is demonstrated by his failure to use the disputed domain name in connection to a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website offering financial advisory services that compete with Complainant’s CFA programs and services, thus giving the false impression that it is affiliated with, and authorized by, Complainant. This conduct, says Complainant, is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
The Panel also agrees with Complainant that the financial advisory services offered on the website at the disputed domain name compete, or at least are closely connected with those offered by Complainant under its CFA trademark, thus causing confusion among Internet users presumably looking for Complainant and its services provided under the CFA mark. Such an offering is neither in connection with a bona fide offering of services under Policy ¶ 4(c)(I, nor is a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers under Policy ¶ 4(c)(iii).
The Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant contends that in light of the fame and notoriety of Complainant’s CFA mark, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant’s rights in the mark. The Panel again agrees with Complainant, in the first place, because Complainant`s Reg. No. 734/59 for the CFA mark in Saudi Arabia, Respondent`s country of residence, predates the registration of the disputed domain name by 14 years, while US registration for the same mark (Reg. No. 2,495,459) was made 17 years before the disputed domain name was registered. In the second place, a most basic search on the Internet by using a common browser would have revealed to Respondent the previous existence of the CFA Institute, its website, and the CFA mark (an abbreviation for “Chartered Financial Analyst”). In the third place, it is hard to believe that those operating a website in Saudi Arabia under the <thecfa.biz> domain name, where the expression “Certified Financial Analyst” is profusely employed, and where the text refers to a team of certified financial advisors, ignore the previous existence of the CFA Institute and its mark, which is well known precisely in the context of financial analysts and advisors. Accordingly, the Panel finds that Respondent, more likely than not, knew of, and targeted, Complainant and its CFA mark at the time of registering the disputed domain name. In other words, Respondent registered the disputed domain name in bad faith.
Complainant claims Respondent’s use of the disputed domain name to pass off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. The Panel considers that the use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). see Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 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.”). In addition, the fact that the website at the disputed domain name presently is inactive suggests that Respondent, who was aware of Complainant`s rights in the CFA mark, could not think of any use of the disputed domain name that would not be an attempt to profit from the confusion he created among Internet users, presumably looking for Complainant and its services. Lastly, Respondent states in this proceeding that he was ready to transfer the disputed domain name to Complainant, provided that his expenses would be reimbursed, but he presents no evidence that he requested from Complainant a reimbursement of expenses that would not exceed the costs directly related to the registration of the disputed domain name. For all these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thecfa.biz> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: November 7, 2018
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