Institute of Biomedical Science v. Mohanned Al-zahrani / ibmsPortfolio
Claim Number: FA1612001705301
Complainant is Institute of Biomedical Science (“Complainant”), UK. Respondent is Mohanned Al-zahrani / ibmsPortfolio (“Respondent”), UK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ibmsportfolio.com>, registered with 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 Panelist in this proceeding.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2016; the Forum received payment on December 1, 2016.
On December 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ibmsportfolio.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017 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@ibmsportfolio.com. Also on December 6, 2016, 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.
Preliminary Issue: Deficient Response
A Response was received on January 4, 2017, one day after the deadline had passed. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5.
However, the Panel, chose to accept and consider this Response. See also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
On January 13, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1- Complainant, Institute of Biomedical Science (“IBMS”) is a UK incorporated company which acts as a training provider for biomedical scientists that work in the full range of disciplines within pathology.
2- Complainant has registered the IBMS mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00002477300, registered Sept. 26, 2008), establishing rights in the mark. See Compl., at Attached Supp. Doc. 1.
3- Complainant argues that the domain name <ibmsportfolio.com> registered by Respondent causes confusion because it incorporates the mark entirely while adding the term “portfolio” which may be associated with Complainant’s portfolio of training materials.
4- Complainant alleges that Respondent could have registered a different domain.
5- Respondent uses <ibmsportfolio.com> to refer to a product which is operated by Complainant.
6- Complainant argues that Respondent registered and used <ibmsportfolio.com> in bad faith. Respondent has endeavored to confuse and attract Internet users for commercial gain under Policy ¶ 4(b)(iv) because the website makes guarantees and timescales (and previously an image of an IBMS training portfolio which included the IBMS mark), which suggest that the website is arranged by Complainant.
B. Respondent
1- Respondent admits having knowledge of Complainant’s domain name <ibms.org>, its use and registration.
2- Respondent argues to have used <ibmsportfolio.com> in good faith for a specific purpose: to allow people to do their scientific training.
3- Respondent’s use does not confuse Internet users, and Complainant has not met the “quantum of proof” to support the argument under Policy ¶ 4(b)(iv).
Complainant is a UK incorporated company, known as IBMS, which acts as a training provider for biomedical scientists through the website <ibms.org> and has registered the IBMS mark with the United Kingdom Intellectual Property Office, establishing rights in the mark. Respondent registered the disputed domain name <ibmsportfolio.com> portfolio” which may be associated with Complainant’s portfolio of training materials and refers to a product which is operated by Complainant.
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.
Complainant claims it has registered the IBMS mark with UKIPO (Reg. No. UK00002477300, registered Sept. 26, 2008), and that it therefore has rights in the mark.
Respondent registered the disputed domain name <ibmsportfolio.com> in 2016.
This Panel finds that UKIPO registration is sufficient to prove that Complainant has the rights in the mark pursuant to Policy ¶ 4(a)(i).”). See Compl., at Attached Supp. Doc. 1. UKIPO registrations are prima facie evidence of rights. See Slaughter and May v. A Comer, FA 1567446 (Forum Aug. 19, 2014) (“The Panel determines that Complainant’s valid registration of the SLAUGHTER AND MAY mark with the UKIPO shows that it has the rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <ibmsportfolio.com> causes confusion because it incorporates the mark entirely while adding the term “portfolio” which may be associated with Complainant’s portfolio of training materials.
As prior Panels have stated, the addition of the “.com” generic top-level domain (“gTLD”) along with a descriptive term does not overcome a determination of confusing similarity. Therefore, this Panel finds that Respondent’s domain name <ibmsportfolio.com> is confusingly similar to the IBMS mark under Policy ¶ 4(a)(i). See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles” and “.com”).
This Panel points out that in this case not only is IBMS included in the domain name, but also the word “portfolio”, which is also used by Complainant when referring to the training portfolio which has to be completed by individuals to be admitted at the HCPC register.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is using the domain name to refer a product which is operated by Complainant. Complainant alleges that Respondent could have used a different domain name that distinguishes itself and its own business.
This Panel points out that in this case the WHOIS lists “Mohanned Al-zahrani” associated with the organization “ibmsPortfolio.” However, Respondent has not submitted any additional evidence to support its rights under Policy ¶ 4(c)(ii), so the Panel finds that there is no basis for finding Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). See CA Immobilien Anlagen Aktiengesellschaft v. Tianlang Li, FA1103001380921 (May 9, 2011) . (Respondent is not commonly known by the domain name, and Complainant has not authorized Respondent to use its name. Complainant thus has made a prima facie showing that Respondent lacks rights and legitimate interests in respect of the disputed domain name, shifting to Respondent the burden of production to come forward with concrete evidence of such rights or legitimate interests).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent registered and used <ibmsportfolio.com> in bad faith. Complainant makes the assertion that Respondent has endeavored to confuse and attract Internet users for commercial gain under Policy ¶ 4(b)(iv) because the website makes guarantees and timescales (and previously an image of an IBMS training portfolio which included the IBMS mark), which suggest that the website is arranged by Complainant.
This Panel is convinced that the Respondent registered and used the domain name in bad faith according to the grounds detailed below.
Respondent expressly admitted to have knowledge of Complainant’s domain name <ibms.org>, its use and registration. Thus, bad faith in registration is proven (See Queen’s Harbour Yacht & Country Club Owners Association, Inc. v. christine lee, FA1111001415457 (December 29, 2011). (The Panel also notes Respondent did not deny knowledge of Complainant and its mark at the time of the registration of the domain names and the latter were thus registered in bad faith pursuant Policy ¶ 4(a)(iii). See also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Moreover, prior Panels have stated that the reproduction of Complainant’s mark by Respondent in its entirety in registration of the domain name shows that Respondent clearly knew of the existence of Complainant’s trademark and of its relevance in the market. See Spring Lake Communications LLC v. Jack Sun, FA1609001692715 (Forum October 1, 2016). See also DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094, (wherein it was observed that the registration of a domain name in the name of a famous mark, of which the respondent had knowledge, may, in any case, be considered strong supporting evidence of bad faith).
In addition, Respondent admitted to use <ibmsportfolio.com> to allow people to do their scientific training using the ibmportfolio, which this Panel understands is the Complainant’s product.
This Panel concludes that Respondent’s reference to “using the ibmportfolio” shows an intention to link or associate its domain name with the Complainant’s trademark, and it would be an unauthorized use in bad faith and attempt to create confusion under Policy ¶¶ 4(b)(iii) and (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). Thus, the Panel finds that Respondent has exhibited bad faith under Policy ¶¶ 4(b)(iii) and (iv).
The use of a trademark without authorization and which leads consumers into confusion it is a clear bad faith act. See Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). See also Microsoft Corporation v. John Casiano, FA1612001706438 (Forum January 17, 2017). (Respondent's registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in an attempt to sell unlicensed and likely counterfeit goods, is indicative of bad faith under these provisions of the Policy).
Respondent admitted to have knowledge of Complainant’s domain name and of its product and mentioned the intention of use of the domain name in relation to ibmsportfolio. This Panel finds that it shows bad faith in registration and use. See the decision mentioned in prior paragraph. (Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent'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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location.").
This Panel finds bad faith under Policy ¶ 4(b)(iv) and that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ibmsportfolio.com> domain name be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: January 26, 2017
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