The Chartered Institute of Management Accountants v. Rajiv Gupta / TEXAS PACIFIC HOLDINGS, INC.
Claim Number: FA2308002055988
Complainant is The Chartered Institute of Management Accountants (“Complainant”), represented by Christopher M. Thomas of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Rajiv Gupta / TEXAS PACIFIC HOLDINGS, INC. (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cima.institute>, registered with 101domain GRS Limited.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to Forum electronically on August 3, 2023; Forum received payment on August 3, 2023.
On August 4, 2023, 101domain GRS Limited confirmed by e-mail to Forum that the <cima.institute> domain name is registered with 101domain GRS Limited, and that Respondent is the current registrant of the name. 101domain GRS Limited has verified that Respondent is bound by the 101domain GRS Limited 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 August 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 2023, 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@cima.institute. Also on August 7, 2023, 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.
On August 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: DEFICIENT RESPONSE
Respondent filed a response with Forum beyond the response deadline date. Thus the response when received was determined to be untimely and not in compliance with the applicable ICANN rules. Therefore the response was not taken into consideration in determining the outcome of this proceeding.
A. Complainant
Complainant contends that Respondent’s domain name is identical and/or confusingly similar to its registered CIMA mark, and that Respondent has no rights or legitimate interests in the domain name. Complainant also contends that Respondent registered and is using the domain name in bad faith. Further that Respondent’s domain name resolves to a webpage that seeks to pass itself off as belonging to or being affiliated with Complainant, or that otherwise competes with Complainant. Specifically the webpage uses Complainant’s registered trademark CIMA and purports to offer counterfeit or competing membership and designation services for finance and accounting professionals.
B. Respondent
Respondent’s contentions are not considered here. Respondent filed a response after the response deadline which was therefore not in compliance with ICANN Rule #5 or the Annex Supplemental Rules.
Complainant is The Chartered Institute of Management Accountants (“Complainant”), of London, United Kingdom which was initially founded in 1919. Complainant is the owner of international registrations for the mark CIMA that it has used continuously since at least as early as 1999. Complainant has consistently used its mark in connection with its provision of printed and electronic professional and educational products related to the fields of financial services and accounting. Complainant has not presently nor in the past ever authorized Respondent to use its CIMA mark. Complainant also owns the domain name <cimaglobal.com> which has been registered since October 1, 1999.
Respondent is Rajiv Gupta / TEXAS PACIFIC HOLDINGS, INC. (“Respondent”), of Carrollton, TX, USA. Respondent’s registrar’s address is indicated as California, USA. Respondent registered the domain name on or about February 5, 2021.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 timely 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the CIMA mark as the owner of global registrations for its mark including USPTO registration number 4196418. See Ulta Beauty, Inc. v. Eve ly, FA 2029131 (Forum Feb. 27, 2023) (“Registration of a mark with the USPTO is generally sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). The Panel here finds that Complainant has established rights in the CIMA mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <cima.institute> domain name is identical and confusingly similar to Complainant’s CIMA mark because it incorporates the whole of Complainant’s CIMA mark and merely adds the generic top level domain (“gTLD”) “.institute”. When a disputed domain name incorporates an entire mark, additional terms, including generic and geographic terms, are insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). The Panel here finds that the disputed domain name is identical or confusingly similar to Complainant’s Mark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes 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 a prima facie case here.
Complainant argues that Complainant has not authorized Respondent to use any of its trademarks, including CIMA, in any manner whatsoever. Moreover, Respondent is not in any way affiliated with, connected to, or sponsored by Complainant. Complainant therefore argues Respondent has no rights or legitimate interests in the domain name and further Respondent is not commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant.”). Here the WHOIS information indicates “Redacted For Privacy” therefore there is no evidence to contradict Complainant’s assertion that Respondent is not commonly known by the disputed domain name. Also, Respondent’s name of record “Rajiv Gupta / TEXAS PACIFIC HOLDINGS, INC.” does not resemble the domain name <cima.institute>, which further supports the conclusion that Respondent has not been commonly known by the domain name and thus does not have any rights or legitimate interests in the domain name. See Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (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 domain name pursuant to Policy ¶ 4(c)(ii)).
Additionally Complainant argues that Respondent has not used the domain name in connection with a bona fide offering of goods or services, and has not made a legitimate noncommercial or fair use of the domain name. Instead Respondent is knowingly passing off as Complainant through a site that mimics Complainant and its services. Complainant provided evidence of Respondent’s website indicating financial and accounting products and services nearly identical to those of Complainant. Previous Panels have found that use of a domain name to divert customers away from a complainant to a site that passes itself off as a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel here finds Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent uses the domain name to mimic Complainant’s webpage, use Complainant’s marks, and offer counterfeit or competing products or services for commercial gain. As noted above Respondent’s domain name resolves to a website that uses Complainant’s CIMA mark and purports to offer counterfeit or competing membership services for financing and accounting professionals. Such use is designed to confuse and deceive consumers into believing that Respondent’s website is Complainant’s or is affiliated with Complainant’s website and is evidence of bad faith use and registration per Policy ¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating [c]omplainant’s mark to divert [c]omplainant’s customers to [r]espondent’s competing business.).
Passing off has been deemed evidence of bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant”). As noted above, Respondent’s webpage features Complainant’s CIMA mark and purports to offer Complainant’s accounting products and financial services. The Panel here finds that Respondent is passing off as Complainant, in violation of Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent had actual knowledge of Complainant’s CIMA mark when Respondent registered the domain name on or about February 5, 2021. Prior Panels have found actual registration with actual knowledge of a Complainant’s mark equates to bad faith. See DD IP Holder LLC v. Domain Administrator / Fundacion Privacy Services LTD, FA 1835047 (Forum Apr. 14, 2019) (“Actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii).”); see also Google LLC v. Alexey Morozov, FA 1841724 (Forum May 31, 2019) (actual knowledge of complainant’s marks when registering a disputed domain name “supports a finding of bad faith registration under Policy ¶ 4(a)(iii)”). Here Complainant provided evidence that Respondent filed a U.S. trademark application for CIMA in August 2020 which was later refused by the USPTO due to a likelihood of confusion with Complainant’s USPTO trademark registration number 4196418. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith according to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <cima.institute> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 11, 2023
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