Carnegie Mellon University v. Qatar Cert
Claim Number: FA0512000616810
PARTIES
Complainant is Carnegie Mellon
University (“Complainant”), represented by Charles H. Dougherty, Jr., Esq. of Reed Smith LLP, 435 Sixth Avenue, Pittsburgh, PA
15219. Respondent is Qatar Cert (“Respondent”), 540
Technology Square, Boston, MA 02139, represented by Swaraj.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qcert.org>,
registered with Gandi SARL.
PANEL
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.
Calvin A. Hamilton as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 29, 2005; the National Arbitration Forum received a
hard copy of the Complaint on January 3, 2006.
On January 3, 2006, Gandi SARL confirmed by e-mail to the National
Arbitration Forum that the <qcert.org>
domain name is registered with Gandi SARL and that the Respondent is the
current registrant of the name. Gandi
SARL has verified that Respondent is bound by the Gandi SARL registration
agreement and has thereby agreed to resolve domain name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On January 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 26, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@qcert.org by e-mail.
A timely electronic copy of the Response was received on January 7,
2006. However, since the hardcopy form
of the Response was not received until after the deadline for response, the
National Arbitration Forum considers the Response to be deficient and not in
compliance with ICANN Rule #5. Furthermore, the electronic copy of the Response
is incomplete and does not comply with ICANN Rule #5 (b).
No Additional Submissions were received.
On February 1, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Calvin A. Hamilton as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
makes the following assertions:
1.
The domain name registered by Respondent, <qcert.org>, is confusingly
similar to Complainant’s CERT registered trademark.
2.
Respondent has no rights or legitimate interests in respect of the <qcert.org> domain name;
neither is Respondent using the domain name to offer goods or services.
3.
Respondent has registered and is using the <qcert.org> domain name in
bad faith.
B. Respondent
Respondent makes the following assertions:
1.
The <qcert.org> domain name was
registered because Respondent had decided to start a “cert” in Qatar (Response
#5).
2.
Originally, another company called “X” belonging to Respondent
contacted a “Qatar foundation” with a proposal to collaborate in forming a
Middle East “cert” in which contacts with Complainant were foreseen (Response
#1-3).
3.
Two months later Respondent saw a newspaper release concerning a
“Qatar foundation” starting “cert” with Complainant (Response #4).
4.
Regardless of the press release, Respondent decided to go ahead with a
“cert” in Qatar (Response #4).
5.
Respondent is willing to transfer the <qcert.org> domain name if justification is given (Response final
paragraph).
Respondent provided no supporting evidence.
This Response, although deficient and incomplete, has been considered
to the extent that Respondent was aware of Complainant’s activities in Qatar
and Respondent’s willingness to transfer the domain name.
Complainant has operated the Software
Engineering Institute CERT Coordination Center (CERT/CC) since 1988. This is a
center of Internet security expertise. Complainant has trademark registrations
in the United States and European Community for CERT (Annexes B and C of
Complaint).
Respondent registered the disputed domain
name, <qcert.org>, on June 28, 2005 with Registrar Gandi
SARL. According to that registrar, a web site associated with that domain name
does not exist. The domain name has been reserved by a GANDI customer and
parked as unused (Annex E of Complaint).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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;
(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.
Complainant’s registrations for its CERT mark
in the United States and the European Union are sufficient to establish Complainant’s rights in the CERT
mark under the Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see
also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June
18, 2001) (finding that successful trademark registration with the USPTO
creates a presumption of rights in a mark).
Respondent has failed to challenge Complainant's
assertions over its rights in the CERT mark.
The <qcert.org> domain name
fully incorporates Complainant's mark, merely adding the letter “q” to the
domain name and the generic top-level domain name ".org." These minor
alterations to Complainant's registered mark are insufficient to differentiate
Respondent's domain names pursuant to Policy ¶ 4(a)(i). Furthermore,
Complainant is an organization, whereas Respondent has provided no evidence of
its standing or business. See
Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 6, 2000) (finding
that adding the letter "s" to the complainant’s UNIVERSAL STUDIOS STORE
mark does not change the overall impression of the mark and thus is confusingly
similar to the complainant’s mark). see also
State Farm Mut. Auto. Ins. Co. v. Digi Real Estate Found., FA 366186 (Nat. Arb. Forum Jan.
20, 2005) (finding that, by simply adding a letter to the complainant’s
registered mark, the respondent has not rendered the domain names distinctive
or negated the confusing similarity of the respondent’s domain names pursuant
to Policy ¶ 4(a)(i)); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks).
The domain name registered by Respondent, <qcert.org>,
is confusingly similar to Complainant’s CERT mark and the Panel finds that Complainant has
satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(c) sets forth the manner in which a respondent may establish
rights to and legitimate interests in a domain name. It provides that any of
the following circumstances, in particular but without limitation, if found by
the Panel to be proved based on its evaluation of all evidence presented, shall
demonstrate Respondent's rights or legitimate interests to the domain name for
purposes of Policy ¶ 4(a)(ii):
(i) that before any notice to the Respondent of the dispute, the
Respondent's use of, or demonstrable preparations to use, the domain name or a
name corresponding to the domain name in connection with a bona fide offering
of goods or services; or
(ii) that the Respondent (as an individual, business, or other
organization) has been commonly known by the domain name, even if the
Respondent has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate non-commercial or fair
use of the domain name, without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark or service mark at issue.
Where Complainant rebuts each of the aforementioned elements by
providing prima facie evidence against any of the particular claims
Respondent could make under Policy ¶ 4(c)(i)-(iii), thereby satisfying its
burden, the burden of proof thereafter passes to Respondent. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a complainant has asserted
that the respondent has no rights or legitimate interests in respect of the
domain name it is incumbent on the respondent to come forward with concrete
evidence rebutting this assertion because this information is "uniquely
within the knowledge and control of the respondent"); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once the complainant asserts that the respondent has no rights or legitimate
interests in respect of the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name).
Furthermore Respondent has failed to challenge the contentions of the
Complaint and has offered no evidence at all. The Panel is compelled to accept
all reasonable allegations set forth by Complainant as true and accurate. See 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence).
Complainant contends
that Respondent has no rights or legitimate interest in respect of the <qcert.org>
domain
name because the domain name is not being used by
Respondent to offer goods or services: it is “parked as unused” (Complaint ¶ 5[a.] and Annex E).
Respondent has not provided evidence to challenge this contention.
Neither has Respondent shown that it is making demonstrable preparations to use
the disputed domain name or that it is using a name corresponding to the domain
name in connection with a bona fide offering of goods or services. See
Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or
service or develop the site demonstrates that the respondents have not
established any rights or legitimate interests in the domain name); see also
AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002) (finding
that prior to having received notice of the dispute, the respondent had made
demonstrable preparations to use the disputed domain name by submitted
“substantial, overwhelming and undisputed evidence” of those preparations); see
also Jolt Co. v. Digital Milk, Inc., D2001-0493 (WIPO Aug. 1, 2001)
(holding that the respondent’s submission of an extensive and elaborate
business plan demonstrating the respondent's preparation to use the domain name
in connection with a bona fide offering of goods or services was
sufficient to establish a legitimate interest in the disputed domain
name).
Complainant contends that Respondent has not been commonly known by the
domain name and that there is doubt about Respondent’s existence (Complaint ¶ 5[b.] and
Annex F).
Respondent has failed to provide any evidence challenging this
contention, creating doubt over the existence of the organization “Qatar Cert”
which is the owner of the disputed domain according to the WHOIS information.
Furthermore, it is necessary for Respondent to have been commonly known
by <qcert.org> before the domain name was registered on June 28, 2005.
It was stated in RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) that "[i]t is clear from the evidence that Respondent was never
known by the domain name prior to his registration of it but only thereafter.
This Panel interprets Paragraph (ii) to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail." See also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where respondent was not commonly known by the mark and never applied for a
license or permission from complainant to use the trademarked name); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) respondent is not a
licensee of complainant; (2) complainant's rights in the mark precede
respondent's registration; (3) respondent is not commonly known by the domain
name in question).
Complainant contends that Respondent’s use of the domain name will
inevitably cause confusion and that that confusion will cause potential
customers and users of Complainant’s services to mistakenly believe
Respondent’s website is associated with Complainant’s partnership with the
Qatar Supreme Council for Information and Communications Technology (the joint
venture “Q-CERT”) (Complaint ¶ 5[a.] and Annex D). Complainant has failed to
offer evidence that there is intent for commercial gain in Respondent’s
actions. The Panel understands that this is not necessary where there is no use
of the domain name at the present time.
Respondent has not provided any evidence to prove that it is making a
legitimate non-commercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark at
issue.
In light of Respondent’s failure to meet its
burden of proof, the Panel finds that Respondent lacks rights and legitimate
interests in respect of the <qcert.org> domain name, satisfying Policy ¶ 4(a)(ii).
Policy ¶ 4(b) provides a non-exhaustive list of circumstances which, if
found by the Panel to be present, shall be evidence of the registration and use
of a domain name in bad faith for purposes of Policy ¶ 4(a)(iii). These
include:
(ii) the Respondent has registered the domain name in order to prevent
the owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, provided that you have engaged in a pattern of such
conduct; or
(iii) the Respondent has registered the domain name primarily for the
purpose of disrupting the business of a competitor;
This list is not an exhaustive representation of bad faith conduct and
numerous other examples of bad faith behavior have been articulated by previous
panel decisions. The Panel may look at the "totality of
circumstances" in determining if Respondent's conduct reaches the
threshold of bad faith. See Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy
is not an exhaustive list of bad faith evidence); see also Twentieth Century
Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding
that in determining if a domain name has been registered in bad faith, the
Panel must look at the "totality of circumstances").
The CERT mark, as established above, is a widely registered trademark.
This trademark registration generally constitutes constructive knowledge of the
mark. Registration of the disputed domain names took place on June 28, 2005,
when CERT was a long-standing trademark and service name around the world.
Indeed at the time of the registration Respondent had knowledge of the
collaboration between the Supreme Council of Communication and Information
Technology (ictQATAR) and Complainant (Response #4) which is called Q-CERT
(Complaint Annex D). See Samsonite Corp. v. Colony Holding, FA 94313
(Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
actual or constructive knowledge of a commonly known mark at the time of
registration).
Complainant contends that Respondent has registered the domain name in order to prevent Complainant, the owner of the trademark, from reflecting the mark in a corresponding domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Respondent acknowledges registering the domain name even after having
knowledge of Complainant’s activities in Qatar, in breach of its
representations pursuant to Policy ¶ 2 (b) (“to [the registrant’s] knowledge,
the registration of the domain name will not infringe upon or otherwise violate
the rights of any third party;”). The final sentence of Policy ¶ 2 states “it
is [the registrant’s] responsibility to determine whether [the] domain name
registration infringes or violates someone else’s rights.”
However, Complainant has failed to show that Respondent has engaged in
a pattern of such conduct or that Respondent has done so for economic gain.
On the other hand, it is clear that the registration and use of the
disputed domain name does block Complainant from acquiring and using it and to
date, despite Respondent indicating its willingness to transfer the domain
name, no transfer has taken place. Furthermore Respondent, by its own
admission, is engaged in a business related to that of Complainant or would
like to enter into that market. Finally, Respondent has provided no evidence of
any action taken in preparation to initiate the website and the planned
business and there is currently no website associated with the disputed domain
name. It would appear therefore that Respondent has registered the domain name
primarily for the purpose of disrupting the business of a competitor by
misleadingly diverting consumers or even tarnishing the trademark at issue.
The Panel finds that Respondent registered the domain names primarily
for the purpose of disrupting the business of a competitor, which evidences bad
faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competed with the complainant's business); see
also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent diverted business from the complainant to a competitor's website in
violation of Policy 4(b)(iii)).
On a final note, Respondent provided incomplete contact information to
the registrar, in breach of its representations pursuant to Policy ¶ 2 (a).
Consequently, Respondent's conduct constitutes bad faith registration
and use under Policy ¶ 4(a)(iii).
That said, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qcert.org>
domain name be TRANSFERRED.
Calvin A. Hamilton, Panelist
Dated: February 15, 2006
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