CFA Institute v. Hao Ming et al.
Claim Number: FA1909001862966
Complainant: CFA Institute of Charlottesville, Virginia, United States of America.
Complainant Representative: DLA Piper LLP (US) of Washington, District of Columbia, United States of America.
Respondent: Hao Ming of Beijing, International, CN.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registries: .CLUB DOMAINS, LLC
Registrars: EJEE Group Holdings Limited
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Flip Jan Claude Petillion, as Examiner.
Complainant submitted: September 19, 2019
Commencement: October 7, 2019
Default Date: October 22, 2019
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant, CFA Institute, is a global, not-for-profit association comprised of investment professionals with over 150,000 members in 140 countries worldwide and 148 local member societies in 73 countries. Complainant is the exclusive administrator and grantor of the Chartered Financial Analyst designation. In connection therewith, Complainant owns numerous trademark registrations for the CFA mark around the world, including the United States word mark "CFA" registered under No. 2493899.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed; and
2. that the Registrant has no legitimate right or interest to the domain name; and
3. that the domain was registered and is being used in bad faith.
URS, paras. 1.2.6 and 8.1.
184.108.40.206] The registered domain name(s) is/are identical or confusingly similar
to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
The record makes clear that the Complainant "holds a valid national or regional registration and that [it] is in current use". The Examiner finds that the second-level portion of the disputed domain name is identical to the Complainant’s CFA registered trademark. As the top level domain is irrelevant in assessing identity or confusing similarity, the new gTLD “.CLUB” is of no consequence here (Facebook Inc. v. Radoslav, Claim Number: FA1308001515825). As the registered domain name is identical to a word mark for which the Complainant holds a valid national or regional registration that is in current use, the Examiner considers that Complainant has satisfied the first element of the URS in accordance with paragraph 220.127.116.11 of the URS.
[URS 18.104.22.168] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
Complainant has not authorized Respondent to use its registered CFA trademark. Respondent has not submitted any evidence to prove that he or she is commonly known under the disputed domain name. There is no evidence about rights or legitimate interest in CFA and the disputed domain name, or evidence about a fair use either. Respondent does not contest the arguments of Complainant. Therefore, Examiner finds that the second element for Complainant to obtain the suspension of a domain name under URS 22.214.171.124 has also been proven.
126.96.36.199] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
The Complainant holds that the Respondent is attempting to disrupt the business of a competitor but provides no proof that the Respondent is one of its competitors. However, the passive holding of a domain name can constitute bad faith registration and use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. (See e.g., Telstra Corporation Limited, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Liu.Jo S.p.A. v. Martina Hamsikova, WIPO Case No. D2013-1261). In the present case, Respondent is passively holding the disputed domain name as it does not resolve to any active website.
It is inconceivable to the Examiner that Respondent was unaware of Complainant and its trademark rights when it registered the disputed domain name which is identical to Complainant’s CFA registered trademark. Given the well-known character of Complainant's CFA trademark, Respondent must have had Complainant's trademark in mind when registering the disputed domain name. This is further supported by the fact that the Respondent registered the disputed domain name under the new gTLD “.CLUB”, which increases confusion as the Complainant’s members can be considered as being part of a club. Moreover, Examiner finds that, given the well-known character of the Complainant’s CFA trademark, it is difficult to imagine any future good faith use of the disputed domain name by Respondent.
Respondent did not file any response to contest the above. Therefore, Examiner finds that the third element for Complainant to obtain the suspension of a domain name under URS 188.8.131.52 has been proven.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
Flip Jan Claude Petillion, Examiner
Dated: October 25, 2019
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