CFA Institute v. CFAF ISLAMIC / CFWA Capital Business / Iron Media Technology (imtech)
Claim Number: FA1902001828994
Complainant is CFA Institute (“Complainant”), represented by Ryan C. Compton of DLA Piper LLP (US), Washington DC, USA. Respondent is CFAF ISLAMIC / CFWA Capital Business / Iron Media Technology (imtech) (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cfaf-islamic.com> and <cfa-islamic.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2019; the Forum received payment on February 7, 2019.
On February 11, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <cfaf-islamic.com> and <cfa-islamic.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2019 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@cfaf-islamic.com and postmaster@cfa-islamic.com. Also on February 19, 2019, 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 March 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is an internationally renowned global, not-for-profit association comprised of investment professionals with over 150,000 members in 140 countries worldwide and 148 local member societies in seventy-three countries. Complainant is dedicated to developing and promoting the highest educational, ethical, and professional standards in the investment industry for the ultimate benefit of society. Complainant has rights in the CFA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,495,459, registered Oct. 9, 2001). See Compl. Annex C. Respondent’s <cfaf-islamic.com> and <cfa-islamic.com> domain names are confusingly similar to Complainant’s mark as they each add a hyphen, the non-distinctive term “Islamic,” and the “.com” generic top-level domain (“gTLD”) to Complainant’s fully incorporated mark, while the <cfaf-islamic.com> domain name also adds the letter “f”.
Respondent has no rights or legitimate interests in the <cfaf-islamic.com> and <cfa-islamic.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent had been using the domain names to misdirect consumers to a website purporting to offer financial services under the CFA mark. See Compl. Annex J. Further, Respondent has ceased using the <cfa-islamic.com> domain name because the resolving website is now inactive. See Compl. Annex I.
Respondent registered and uses the <cfaf-islamic.com> and <cfa-islamic.com> domain names in bad faith. Respondent disrupts Complainant’s business by intentionally attempting 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 Respondent’s competing website. See Compl. Annex J. Further, the resolving webpage for the <cfa-islamic.com> domain name is currently inactive. See Compl. Annex I. Additionally, Respondent clearly knew of Complainant’s rights in the CFA mark given the fact that Complainant had used the mark for many years prior to Respondent registering the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is an internationally renowned global, not-for-profit association comprised of investment professionals with over 150,000 members in 140 countries worldwide and 148 local member societies in seventy-three countries.
2. Complainant has established its trademark rights in the CFA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,495,459, registered Oct. 9, 2001).
3. Respondent registered the <cfa-islamic.com> and <cfaf-islamic.com> domain names on May 29, 2018 and September 7, 2018, respectively.
4. Respondent has used the disputed domain names to misdirect consumers to a website purporting to offer financial services under the CFA mark.
5. Respondent has also ceased using the <cfa-islamic.com> domain name because the resolving website is now inactive.
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 Respondent hosts the same webpage located at the <cfaf-islamic.com> domain name as it once hosted at the <cfa-islamic.com> domain name. Further, Complainant claims that Respondent’s registration of the <cfaf-islamic.com> domain name coincides with the cease and desist letter Complainant sent to Respondent. Complainant believes that Respondent registered the domain names for the benefit of the same company, namely CFA Islamic or CFAF Islamic.
The Panel therefore finds that the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and that the matter may therefore proceed in its present form.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CFA mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,495,459, registered Oct. 9, 2001). See Compl. Annex C. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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).”). Accordingly, the Panel finds that Complainant has established rights in the CFA mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CFA mark. Complainant argues that Respondent’s <cfaf-islamic.com> and <cfa-islamic.com> domain names are confusingly similar to Complainant’s mark as they each add a hyphen, the non-distinctive term “Islamic,” and the “.com” gTLD to Complainant’s fully incorporated mark, while the <cfaf-islamic.com> domain name also adds the letter “f”. The addition of a letter, a term, a hyphen, and/or a gTLD generally does not sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”); see also MTD Products Inc. v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The Panel therefore finds that the at-issue domain names are confusingly similar to the CFA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CFA trademark and to use it in its domain names, adding the word “Islamic” and in one case the letter “f” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <cfa-islamic.com> and <cfaf-islamic.com> domain names on May 29, 2018 and September 7, 2018, respectively;
(c) Respondent has used the disputed domain names to misdirect consumers to a website purporting to offer financial services under the CFA mark and because the resolving website from the <cfa-islamic.com> domain name is now inactive;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <cfaf-islamic.com> and <cfa-islamic.com> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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 “Iron Media Technology (imtech)” as the registrant for the <cfa-islamic.com> domain name, and “CFAF ISLAMIC / CFWA Capital Business” as the registrant for the <cfa-islamic.com> domain name. See Amend. Compl. Annexes II and JJ. Complainant further alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the CFA mark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the at-issue domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent had been using the <cfa-islamic.com> domain name, and currently uses the <cfaf-islamic.com> domain name, to misdirect consumers to a website purporting to offer financial services under the CFA mark. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 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 provides screenshots to support both allegations. The webpages displayed contain content in a foreign language, and Complainant provides a Google translation to English. The purported English translation shows that the domain names contain (or contained) information relating to the financial industry. See Compl. Annex J. As such, the Panel holds that Respondent’s current and prior competing use of the at-issue domain names provide evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii);
(g) Complainant submits that Respondent has ceased using the <cfa-islamic.com> domain name because the resolving website is now inactive. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage currently associated with the <cfa-islamic.com> domain name, which displays the error message “This site can’t be reached.” See Compl. Annex I. Accordingly, the Panel finds that Respondent fails to make any use of the domain name, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent disrupts Complainant’s business by intentionally attempting 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 Respondent’s competing website. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides screenshots of the current resolving webpage for the <cfaf-islamic.com> domain name, and the former webpage for the <cfa-islamic.com> domain name. The webpages displayed contain content in a foreign language, and Complainant provides a Google translation to English. The purported English translation shows that the domain names contain (or contained, in the case of the <cfa-islamic.com> domain name) information relating to the financial industry. See Compl. Annex J. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to benefit commercially off Complainant’s CFA mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Secondly, Complainant argues that the resolving webpage for the <cfa-islamic.com> domain name is currently inactive. Inactively holding a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(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).”). As noted above, Complainant provides a screenshot of the resolving webpage currently associated with the <cfa-islamic.com> domain name, which displays the error message “This site can’t be reached.” See Compl. Annex I. As such, the Panel agrees that Respondent’s failure to use the mentioned domain name demonstrates Respondent’s bad faith under the Policy.
Thirdly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CFA mark at the time of registering the two domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince 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 contends that Respondent’s knowledge can be inferred given the fact that Complainant had used the mark for many years prior to Respondent registering the domain names. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the CFA mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cfaf-islamic.com> and <cfa-islamic.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 15, 2019
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