CFA Institute v. Domains By Proxy, LLC et al.
Claim Number: FA1912001875685
Complainant: CFA Institute of Charlottesville, Virginia, United States of America.
Complainant Representative:
Complainant Representative: DLA Piper LLP (US) of Washington, District of Columbia, United States of America.
Respondent: Registration Private / Domains By Proxy, LLC of Scottsdale, Arizona, US.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: Binky Moon, LLC
Registrars: GoDaddy.com, 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 Examiner in this proceeding.
Petter Rindforth, as Examiner.
Complainant submitted: December 17, 2019
Commencement: December 19, 2019
Default Date: January 3, 2020
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:
The Complainant is the owner of the following U.S. trademark registration:
No. 2,493,899 CFA (word), registered October 2, 2001, and renewed September 30, 2011 for services in class 41.
The Complainant has provided evidence of use by a screenshot from the Complainant’s website www.cfainstitute.org.
There is no information on the Respondent, other than provided by the Complainant, as the Respondent has not responded.
Legal Findings and Conclusion:
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.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid U.S. national trademark registration No. 2,493,899 CFA (word). Further, the Complainant has proved that the said trademark is in current use by presenting screenshot from the Complainant’s website.
The relevant part of the disputed domain name is <cfa>, as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a trademark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark. If considered, the added top-level domain .business rather increases the similarity, as it indicates services related to the Complainant’s trademark.
The Examiner concludes that the disputed domain name is identical to the Complainant's trademark CFA.
NO RIGHTS OR LEGITIMATE INTERESTS
As CFA is a distinctive and well known trademark, the Examiner also draw the conclusion that the Complainant has shown that the Respondent cannot have any legitimate interests in registering and using <cfa.business>.
To summarize, the Examiner find that the Complainant has established that the Respondent has no rights or legitimate interests in <cfa.business>.
BAD FAITH REGISTRATION AND USE
According to the URS Procedure 1.2.6.3, examples of circumstances that demonstrate bad faith registration and use by the Registrant include:
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.
In this case, the Complainant has shown that the Respondent has linked the disputed domain name to a commercial parking page, owned by a third party, namely GoDaddy. Although the site say the <cfa.business> “web page is parked FREE, the courtesy of GoDaddy”, there is also a link “Get This Domain”, as well as separate links on the same site, offering domain names for sale. Such “inactive use” is still a result of an active decision by the Respondent to link the disputed domain name to a commercial web page. Also, the link “Get This Domain” further indicates that the Respondent has in fact registered and is using <cfa.business> 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 to a competitor of the Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name.
Thus, the Examiner concludes that the Complainant has established that the Respondent has registered and used <cfa.business> in bad faith.
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.
<cfa.business>
Petter Rindforth, Examiner
Dated: January 06, 2020
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