CFA Institute v. Domains By Proxy, LLC et al.
Claim Number: FA1910001866971




   Complainant: CFA Institute of Charlottesville, VA, United States of America
Complainant Representative: DLA Piper LLP (US) Ryan C. Compton of Washington, DC, United States of America

   Respondent: Domains By Proxy, LLC / DomainsByProxy.com of Scottsdale, AZ, US


   Registries: Binky Moon, LLC
   Registrars: GoDaddy.com, LLC


   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.
   Richard W. Hill, as Examiner


   Complainant Submitted: October 16, 2019
   Commencement: October 17, 2019
   Default Date: November 1, 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.


   Findings of Fact: [OptionalComment]


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.

[URS] 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 disputed domain name is identical to Complainant�s registered CFA mark.

[URS] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Respondent 

Complainant states: "because Complainant owns exclusive rights in the CFA Marks, and has numerous United States and international registrations therefor, Respondent cannot establish legitimate rights in the Domain Name." The Panel does not agree. It is possible that Respondent could have a legitimate right or interest in the disputed domain name despite Complainant's trademark. Since the standard of review in URS proceedings is "clear and convincing", and Complainant has not elaborated on its allegation, the Panel finds that Complainant has not satisfied its burden of proof for this element.

[URS] 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 Respondent 

Complainant states: "By creating confusion through its registration of a domain name wholly comprised of CFA Marks, Respondent is attempting to disrupt the business of a competitor, which is evidence of bad faith registration." Complainant provides evidence showing that the disputed domain name is not being used. Since the standard of review in URS proceedings is "clear and convincing", and Complainant does not explain why failure to use the disputed domain name could constitute bad faith use, the Panel finds that Complainant has not satisfied its burden of proof for this element.


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

  1. The Complaint was neither abusive nor contained material falsehoods. 


After reviewing the parties submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be returned to the control of Respondent:

  1. cfa.business


Richard W. Hill
Dated: November 1, 2019



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