national arbitration forum

 

DECISION

 

National Association of Credential Evaluation Services, Inc. v. Shanker Munshani

Claim Number: FA1103001375372

 

PARTIES

Complainant is National Association of Credential Evaluation Services, Inc. (“Complainant”), represented by C. Dennis Loomis of Baker & Hostetler LLP, California, USA.  Respondent is Shanker Munshani (“Respondent”), represented by Mark I. Reichenthal of Branfman Law Group, P.C., California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <naces.com>, registered with GoDaddy.com, Inc.

 

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.

 

Jeffrey M. Samuels as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2011; the National Arbitration Forum received payment on March 1, 2011.

 

On March 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <naces.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 March 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2011 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@naces.com.  Also on March 1, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

A timely Response was received and determined to be complete on March 22, 2011.

 

Complainant filed a timely Additional Submission on March 28, 2011.

 

Respondent filed a timely Additional Submission on April 4, 2011.

 

On March 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant National Association of Credential Evaluation Services, Inc. (NACES) is an association of private organizations that offer foreign educational credential evaluation services.  NACES members serve foreign-educated persons who have completed part or all of their education outside of the U.S. and who are seeking further education, professional licensure, or employment in the U.S.   There are about 20 NACES members throughout the U.S.  See Complaint, Exhibit 2.

 

Complainant has used the mark NACES since December 1983 and owns U.S. Trademark Registration No. 1,927,541 for the NACES mark as “indicating membership in an association of organizations engaged in the evaluation of foreign academic credentials.”  The mark was registered on October 17, 1995.  See Complaint, Exhibit 3.  Complainant also owns the domain name <naces.org>.  See Complaint, Exhibit 2.

 

Complainant asserts that the disputed domain name, <naces.com>, is identical to the NACES mark.

 

It further contends that Respondent lacks all rights and legitimate interests in the domain name.  Complainant indicates that Respondent is not affiliated with NACES and has not been authorized in any manner by NACES to use the NACES mark.  Nor, according to Complainant, has Respondent used, or made demonstrable preparations to use, the domain name as part of a bona fide offering of goods or services.  There also is no evidence that Respondent has been commonly known by the domain name or is making a legitimate noncommercial or fair use of the domain name, Complainant asserts.   “Rather, Respondent’s only use for the Domain Name is to exploit the NACES mark by misleadingly diverting Internet users seeking the NACES website to the website of a non-member educational credential evaluation service organization, with intent for commercial gain.”  According to NACES, the <naces.com> site resolves to the site <acrevs.com>, the home page for Academic & Credential Records Evaluation & Verification Service” (ACREVS).  Upon information and belief, Complainant explains that Respondent is the Chairman of ACREVS.  ACREVS, Complainant indicates, sells educational evaluation services on its website.  See Complaint, Exhibit 4.

 

Complainant contends that Respondent’s use of the domain name <naces.com> falsely suggests that ACREVS is associated with NACES.  Noting that Respondent has twice been rejected for membership in NACES for failure to satisfy the required qualifications, Complainant asserts that Respondent’s use of the subject domain name could tarnish Complainant’s mark and reputation.

 

With respect to the issue of “bad faith” registration and use, Complainant asserts as follows:

 

“Respondent had both constructive and actual notice of the NACES Mark. It had constructive notice by virtue of NACES’s trademark registration, as set forth above. *** Respondent’s constructive notice is by itself sufficient for a determination of bad faith. ***

 

“Beyond constructive notice, it is evident that Respondent had actual notice of the NACES Mark. Respondent has had actual notice of the NACES Mark since at least September 21, 2010 when NACES, through its counsel ***, sent a letter to Respondent and ACREVS advising that NACES holds a federally registered trademark for the NACES Mark and demanding that Respondent cease and desist from using the Domain Name. NACES followed up on the September 21st letter by sending an email to ACREVS on October 18, 2010, again objecting to its use of the Domain Name. Although neither Respondent nor ACREVS responded to the letter or email, on October 25, 2010, NACES’s Membership Chair received an email from ACREVS stating that it wanted to apply for membership again.

 

“Respondent’s actual notice of the NACES Mark is further evidenced by the fact that Respondent, Chairman of a credential evaluation services company, registered a domain name that is identical to the famous NACES Mark. It is inconceivable that Respondent chose the letter combination “naces” without knowledge of NACES Mark—NACES is the acronym by which Complainant National Association of Credential Evaluation Services, Inc. is identified and commonly known. Respondent’s only possible purpose for registering the Domain Name was to create a likelihood of confusion with the NACES Mark. ***

 

“Upon information and belief, Respondent engaged in bad faith registration and use by intentionally trying to establish an association between ACREVS and NACES through its use of the Domain Name instead of the proper application process. *** Indeed, ACREVS has submitted membership applications to NACES twice in recent years, but failed to satisfy the required qualifications. Now, Respondent uses the Domain Name to host a website that confuses direct visitors by redirecting them to the website for ACREVS. Any visitor that was redirected to the ACREVS website might mistakenly believe that ACREVS was affiliated with or endorsed by NACES. Respondent is using the Domain Name to take advantage of the goodwill and reputation of the NACES Mark for commercial gain by falsely suggesting that ACREVS is among the organizations that have satisfied the criteria for NACES membership.

 

“Respondent’s use is damaging not only to NACES, but also to consumers who mistakenly take ACREVS to be a NACES-approved provider, when in fact the quality of the services ACREVS provides has been determined to fall short of NACES’s high standards. Consumers who fall prey to Respondent’s deception could suffer dire consequences as a result of the consumer's evaluation being rejected by the licensing organization or school as not being from a NACES member, which will cause the consumer to incur a second fee, time delays and possible significant economic losses if they miss a deadline for submitting the evaluation and have to defer their applications to a later date, possibly missing a semester or year of school, or having to wait to reapply to the licensing board during their next application period. Further, there could be serious consequences if the state licensing boards, government agencies (for example, nursing, physical therapy, law, accounting, the military, USCIS) and many schools and universities that rely on NACES’s members reports mistakenly relied on a report issued by ACREVS thinking that it was a NACES member. These organizations could receive negative attention for unwittingly accepting fraudulent credentials and subsequently revoking such acceptance. This concern is especially heightened due to potential security risks.

 

“Finally, Respondent’s use of the NACES Mark capitalizes on confused Internet users searching for Complainant’s mark by directing additional traffic to the ACREVS website, presumably resulting in commercial gain.  ***

 

“Hence, it is clear the Domain Name at issue was registered and is being used in bad faith pursuant to ICANN Policy ¶ 4(a)(iii).”

 

            B. Respondent

Respondent first takes issue with Complainant’s submission that the NACES mark is distinctive, well-known and famous.  Respondent asserts that the NACES mark is not famous and should only be entitled to a very limited scope of protection.

 

Respondent contends that the subject domain name will not cause confusion with Complainant’s mark given Complainant’s actual name and the fact that the parties offer different services.  Respondent indicates that Complainant’s name is not NACES but “National Association of Credential Evaluation Services, Inc.”  Respondent further notes that Complainant does not perform any “credential” evaluation services; for example, it does not cover services such as translation or evaluation of work experience.  Respondent further contends that the parties offer different services.  It argues as follows:

 

“The services offered by Complainant and Respondent are also different enough to avoid any confusion in the marketplace.  Complainant is an association of private foreign credential evaluation service companies.  Complainant according to its website is “dedicated to promoting excellence and committed to setting the standard of excellence for credential evaluation services.”  They are a membership organization.  Respondent is an actual service provider that performs academic and credential records evaluation and verifications.

 

“In a nutshell, Respondent’s company performs the exact kind of services that Complainant goes out of its way to state that it does not perform.  Yet, Complainant still contends that there is a likelihood of confusion.”

 

Respondent continues by asserting that the likelihood of confusion is “almost zero” given that most potential customers access Complainant’s <naces.org> website through a hyperlink to <naces.org/members.htm>, which is the contact information of the members of NACES.  According to Respondent, “it is difficult to ascertain how any prospective customers might be steered in the wrong direction by typing in the wrong extension in this case an `.org’ versus a `.com’.  In just about every instance a customer does not even have the opportunity to type in a domain name or link:  it is simply a hyperlink click thru process.”

 

Respondent contends that the likelihood of confusion is “even further diminished” by the fact that other entities use the NACES mark. See Response, Exhibit C.  “To allow Complainant, which already owns the .ORG top level domain, to take this domain name from an existing registrant, is to give one company rights to a common English acronym in potentially all of nearly 200 top level domains without any proof of the strength of its mark, and without any showing of confusion or dilution,” Respondent declares.

 

Respondent argues that it has rights or legitimate interests in the <naces.com> domain name.   He contends that he chose the acronym NACES because his business is geared towards providing “College Education Service” for the North American Market.”  Respondent reports that after selecting this acronym for his business he contacted the owner of the <naces.com> domain name to see if the registrant would be willing to sell it.  The domain name was owned by the Nace family (see Response, Exhibit E), which agreed to sell the name to Respondent in August 2010. See Munshani Declaration, Paragraph 13.  Respondent suggests that the above supports a determination that, prior to notice of this dispute, he made use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.  Respondent also asserts that, in fact, Complainant has no legitimate interests in the <naces.com> domain name because the .com top level domain is primarily used in conjunction with for profit companies and Complainant is not a for profit company.

 

Finally, with regard to the element of “bad faith” registration and use, Respondent contends that he is not a cybersquatter “by any stretch of the imagination,” but, rather, a serial entrepreneur and highly respected individual in Silicon Valley. 

 

Respondent argues that he has not registered the domain name in an effort to extort money from Complainant.  “Respondent has merely registered the domain name which relates to the name of Respondent’s new company.” (emphasis in original)  In sum, Respondent contends that none of the circumstances spelled out in paragraph 4(b) of the Policy is applicable.  Respondent also indicates that the quality of the services he offers has been the subject of “quite a lot of praise” and that Complainant is currently being sued by one of its former members.

 

Respondent asserts that Complainant is guilty of reverse domain name hijacking.  He contends that Complainant knew or should have known that its case could not succeed; that the complaint was filed “to harass and strong-arm Respondent into selling the domain name”; and that the complaint was filed only after Respondent rebuffed Complainant’s attempts to have Respondent cease its legitimate use of the domain name.

 

Additional Submissions

Complainant filed a timely Additional Submission on March 28, 2011.  In it, Complainant points out that ACREVS twice applied for membership in NACES and was twice rejected (see Additional Submission, Exhibits 1, 2, and 3), the last rejection letter being dated June 21, 2010.  Noting that Respondent purchased the <naces.com> domain name less than two months later, Complainant asserts that “it is clear that Respondent specifically targeted the Domain Name in retaliation against NACES for denying ACREV’s application for membership.” Complainant also takes issue with Respondent’s argument that Internet users only access the websites of NACES and its members via a hyperlink.  

 

Complainant accuses Respondent of engaging in so-called initial interest confusion and notes that “consumers in the market for credential evaluation services are particularly susceptible to this type of confusion, as they are international and mostly second language English speakers.”

 

Complainant further declares as follows:

 

“Respondent states that he has rights and legitimate interests in the Domain Name because he is developing a new entity called “North America College Education Service.” (Response at 8.) It is implausible that Respondent, having actual and constructive knowledge of the NACES Mark, would select a name for his new entity that uses the acronym “NACES.” This is nothing more than a transparent ruse. Respondent even admits he “has only been working on this new entity for a very short period of time.” (Response at 9.) There are any number of potential names Respondent could have chosen that would not infringe upon the NACES Mark. Respondent offers no concrete evidence of demonstrable preparations to use the Domain Name

in connection with his new venture. Instead, he relies solely on his self-serving declaration and an unsworn statement from his investor which does not mention the Domain Name or the name “North America College Education Services.” These self-serving documents are insufficient to prove that any legitimate rights exist.”

 

Complainant also indicates that the fact that other organizations use the acronym NACES is irrelevant with respect to the existence of Respondent’s rights or legitimate interests in the subject domain name since such entities are not using the domain name.  It also rejects Respondent’s claim that the .com top level domain is reserved for for-profit companies.

 

Finally, Complainant contends that Respondent’s claim of reverse domain name hijacking must be rejected since Respondent admitted[1] that the domain name is identical to the NACES mark and since Complainant has satisfied all of the elements of the Policy.

 

In his Additional Submission, Respondent contends that there has been no confusion and no harm to Complainant, relying on evidence (see Additional Submission, Exhibit 1) showing that site traffic at <naces.com> has dropped to a negligible amount since Respondent purchased the site.  If, as Complainant asserts, its members and potential customers are being confused and misdirected to the wrong site, “wouldn’t this be reflected in the naces.com site traffic for the months after Respondent acquired this domain name?”

 

With respect to the issue of rights or legitimate interests, Respondent presents an email chain showing communications that he had with its developer in late 2009 and early 2010 regarding the NACES project which allegedly show that he has been working on this project for 6-7 years.

 

Respondent reiterates his position that he is not a cybersquatter and has never attempted to sell the domain name to anyone, and contends that the fact he was rejected for membership in Complainant does not automatically mean that he acted in bad faith when he purchased the <naces.com> domain name.

 

FINDINGS

The Panel finds that: (1) the domain name <naces.com> is identical to the NACES mark, to which Complainant has rights; (2) Respondent has no rights or legitimate interests in the subject domain name; (3) the domain name was registered and is being used in bad faith; and (4) Complainant is not guilty of reverse domain name hijacking.

 

DISCUSSION

Paragraph 15(a) of 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; 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.

 

Identical and/or Confusingly Similar

 

The Panel concludes that the domain name <naces.com> is, for all intents and purposes, identical to the mark NACES.  The domain name incorporates the mark in its entirety while merely adding the generic top-level domain “.com.”  See Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding pomellato.com identical to complainant’s mark because the generic top-level domain “.com” after the mark POMELLATO is not relevant).[2]

 

The Panel further concludes that Complainant, through its use and ownership of a U.S. registration for the NACES mark, has rights in such mark.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”). 

 

Rights or Legitimate Interests

 

The Panel rules that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent has not rebutted such prima facie case.[3]  The evidence establishes that Respondent is using the <naces.com> domain name to operate a website that offers the same or similar services to that offered by Complainant’s members.  As a result, it may not be held that Respondent is using the domain name in connection with a bona fide offering of goods or services.[4]  See DLJ Long Term Inv. Corp. v. BargainDomainNames.com. FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by complainant under its marks).

 

Registration and Use in Bad Faith

 

The Panel concludes that the <naces.com> domain name was registered and is being used in bad faith.[5]  The evidence supports a determination that, by using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion with the Complainant’s mark as to the source of such site or other on-line location (i.e., acrevs.com) and/or of the services offered therein, within the meaning of paragraph 4(b)(iv) of the Policy.  As determined above, the domain name naces.com is identical to the NACES mark.  Moreover, the services offered by the parties, if not identical,[6] are certainly sufficiently related as to support a finding of likelihood of confusion.

 

It is also clear that Respondent had actual knowledge[7]of Complainant and of its use of the NACES mark at the time he purchased the <naces.com> domain name.

 

Reverse Domain Name Hijacking

 

In view of the determinations above, Respondent’s reverse domain name hijacking claim must be, and is, rejected.

 

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 <naces.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Jeffrey M. Samuels, Panelist

Dated:  April 8, 2011