CFA Institute v. Chris Lehman / Steven Mccown
Claim Number: FA1810001812640
Complainant is CFA Institute (“Complainant”), represented by Ryan Compton of DLA Piper LLP (US), Washington DC, USA. Respondent is Chris Lehman / Steven Mccown (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cfailnstitute.org> and <cfaiinstitute.org>, registered with Wild West Domains, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2018; the Forum received payment on October 19, 2018.
On October 22, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <cfailnstitute.org> and <cfaiinstitute.org> domain names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@cfailnstitute.org, postmaster@cfaiinstitute.org. Also on October 29, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, CFA Institute, is an internationally renowned global, not-for-profit association comprised of investment professionals. Complainant has rights in the CFA INSTITUTE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,389,314, registered Aug. 20, 2013). See Compl. Annex C. Respondent’s <cfailnstitute.org> and <cfaiinstitute.org> domain names are confusingly similar to Complainant’s mark because Respondent includes the CFA INSTITUTE mark in its entirety in the domain names, adds a single letter (“l” in the <cfailnstitute.org> domain name and “i” in the <cfaiinstitute.org> domain name), and adds a “.org” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <cfailnstitute.org> and <cfaiinstitute.org> domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent inactively holds the disputed domain names. Further, Respondent uses the disputed domains in connection with an email phishing scheme.
Respondent registered and uses the <cfailnstitute.org> and <cfaiinstitute.org> domain names in bad faith. Respondent attempts to confuse users for commercial gain through an email phishing scheme. Moreover, Respondent engages in typosquatting. Further, Respondent had actual knowledge of Complainant’s rights in the CFA INSTITUTE mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <cfailnstitute.org> and <cfaiinstitute.org> domain names.
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.
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.”).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the disputed domain names were registered within five days of one another, using the same registrar, through the same reseller, and that both domains use the same name servers.
The Panel finds that Complainant has presented sufficient evidence demonstrating that the listed entities are jointly controlled. The entities are collectively referred to as Respondent throughout this Decision.
Complainant has rights in the CFA INSTITUTE mark based upon its registration of the mark with the USPTO. Registration with the USPTO generally establishes a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of its USPTO registrations for the CFA INSTITUTE mark (e.g., Reg. No. 4,389,314, registered Aug. 20, 2013). The Panel finds that Complainant has rights in the CFA INSTITUTE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <cfailnstitute.org> and <cfaiinstitute.org> domain names are confusingly similar to Complainant’s mark because Respondent includes the CFA INSTITUTE mark in its entirety in the domain names and adds a single letter and a gTLD. The addition of single letters and gTLDs is generally insufficient to distinguish a domain name from a complainant’s mark under Policy ¶ 4(a)(i). See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. “). Here, Respondent incorporates the CFA INSTITUTE mark in its entirety in the domain name, adds a single letter (“l” in the <cfailnstitute.org> domain name and “i” in the <cfaiinstitute.org> domain name), and adds a “.org” gTLD. The Panel finds that Respondent’s <cfailnstitute.org> and <cfaiinstitute.org> domain names are confusingly similar to Complainant’s CFA INSTITUTE mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that 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 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) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <cfailnstitute.org> and <cfaiinstitute.org> domain names because Respondent is not authorized or permitted to use Complainant’s CFA INSTITUTE mark and is not commonly known by the disputed domain names. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS of record identifies Respondent as “Chris Lehman / Steven Mccown,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain names. The Panel finds that Respondent lacks rights and legitimate interests in the <cfailnstitute.org> and <cfaiinstitute.org> domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <cfailnstitute.org> and <cfaiinstitute.org> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent inactively holds the domain names. Inactive holding of a disputed domain name may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant claims that both disputed domain names resolve to webpages displaying error messages and provides screenshots to further its assertion. The Panel finds that Respondent fails to use the <cfailnstitute.org> and <cfaiinstitute.org> domain names in connection with 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).
Complainant argues Respondent uses the <cfailnstitute.org> and <cfaiinstitute.org> domain names to engage in a phishing scheme. Use of a disputed domain in connection with a phishing scheme is generally not considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Complainant provides screenshots of emails it claims were sent from email addresses associated with the disputed domain names, which appear to contain a link titled “Download Attachments” where users are prompted to click on the link. The Panel finds that Respondent uses the <cfailnstitute.org> and <cfaiinstitute.org> domain names in connection with a phishing scheme, and thus fails to use the disputed domains for 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).
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <cfailnstitute.org> and <cfaiinstitute.org> domain names in bad faith because Respondent attempts to confuse users, for commercial gain, into believing that the disputed domain names are associated with Complainant. Creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of a disputed domain name may evince bad faith under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”). Complainant claims that Respondent uses the disputed domain names as email addresses in which, according to Complainant, Respondent attempts to impersonate Complainant to commercially benefit through phishing for information. The Panel finds that Respondent uses the <cfailnstitute.org> and <cfaiinstitute.org> domain names to create a likelihood of confusion as to the source of the emails, thereby supporting a finding of bad faith under Policy ¶ 4(b)(iv).
Complainant claims that Respondent uses the <cfailnstitute.org> and <cfaiinstitute.org> domain names to operate a phishing scheme. Use of a disputed domain name in connection with a phishing scheme may evince bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant provides screenshots of emails it claims were sent from email addresses associated with the disputed domain names, which prompt users to select a link to download an attachment. The Panel finds that Respondent uses the <cfailnstitute.org> and <cfaiinstitute.org> domain names in connection with a phishing scheme, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent engages in typosquatting. Typosquatting may evince bad faith under Policy ¶ 4(a)(iii), and can be established when a disputed domain name constitutes a simple, common misspelling of a complainant’s mark. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Here, Respondent’s <cfailnstitute.org> and <cfaiinstitute.org> domain names differ from Complainant’s CFA INSTITUTE mark by addition of a single letter (“l” in the <cfailnstitute.org> domain name and “i” in the <cfaiinstitute.org> domain name) and a gTLD (“.org”). The Panel finds that Respondent engages in typosquatting, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CFA INSTITUTE mark prior to registering the <cfailnstitute.org> and <cfaiinstitute.org> domain names. Actual knowledge of a complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established through evidence of the fame of the mark and the respondent’s use of the domain name. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Here, Complainant claims that its CFA INSTITUTE mark is well known. Complainant also contends that Respondent impersonates Complainant in emails associated with the disputed domain names. The Panel finds from Complainant’s uncontested allegations and evidence that Respondent registered the <cfailnstitute.org> and <cfaiinstitute.org> domain names with actual knowledge of Complainant’s rights in the CFA INSTITUTE mark and registered and uses the domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cfailnstitute.org> and <cfaiinstitute.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: November 28, 2018
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