Chartered Professional Accountants of Canada v. Zakaria Frouni
Claim Number: FA1807001795339
Complainant is Chartered Professional Accountants of Canada (“Complainant”), represented by Mary M Cheng of Osler, Hoskin & Harcourt LLP, Canada. Respondent is Zakaria Frouni (“Respondent”), Quebec, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cpacanada.online>, registered with Super Registry Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 5, 2018; the Forum received payment on July 5, 2018.
On July 9, 2018, Super Registry Ltd confirmed by e-mail to the Forum that the <cpacanada.online> domain name is registered with Super Registry Ltd and that Respondent is the current registrant of the name. Super Registry Ltd has verified that Respondent is bound by the Super Registry Ltd 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 July 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2018 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@cpacanada.online. Also on July 11, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
The Complainant, Chartered Professional Accountants of Canada ("CPAC"), owns and operates the domain name www.cpacanada.ca and has been extensively using the trade name and trademark CPA Canada since at least as early as April 1, 2013, in association with the governance to the accountancy profession, association services and maintenance of standards that govern the accountancy profession in Canada.
The Complainant is the national organization established to support a unified Canadian accounting profession under the professional designation "Chartered Professional Accountants" also known as "CPA".
The Complainant filed an application for registration of the CPA Canada & Design trademark on September 30, 2013 for the following goods and services:
Goods:
"Publications, namely, newsletters, guides, manuals, books, research findings and recommendations in the fields of accounting, management accounting, audit, assurance, financial, taxation, business strategy and planning, business advisory, risk management and governance matters."
Services:
"Dissemination through publications and otherwise of research findings and recommendations, furnishing of material relating to educational and professional development and other services related to the accounting field furnished from time to time to members of the applicant and others; Education services in the fields of corporate finance, accounting, management accounting, audit and assurance, business advisory, business strategy and planning, finance and taxation, namely arranging and conducting educational conferences, classes, seminars, discussion groups and forums, workshops and courses of instruction, development and dissemination of educational materials, educational testing services, and providing designations, credentials, certificates, incentives, awards and scholarships to individuals and organizations to recognize and demonstrate proficiency and excellence in the field of corporate finance; Dissemination through publications and otherwise of research findings and recommendations, furnishing of material relating to educational and professional development and other services related to the accounting, management accounting, audit, assurance and taxation fields furnished from time to time to members of the applicant and others, namely, research and analysis of information and providing reports reference and resource information, providing electronic and printed publications, providing recommendations and guidance on best practices, providing topical newsletters and alerts related to the fields of accounting, management accounting, audit, assurance, taxation, business advisory, business strategy and planning, and financial services, providing support information resource services to members to assist them in planning and carrying out their professional career goals."
The Complainant is the national body for the chartered professional accountants in Canada, which are also governed by provincial institutes that are recognized as public authorities in Canada. As a result, there are a number of official marks that contain the CPA element held in the names of the related provincial institutes in Canada, namely the Chartered Professional Accountants of Ontario and the Ordre des Comptables Agrees du Quebec.
The CPA CANADA Mark is an important asset of the Complainant and its related provincial institutes, which together govern the CPA designation in Canada and the educational and professional development of chartered professional accountants.
The cpacanada.ca domain name was first registered on March 25, 2011, and the web site prominently features the CPA CANADA Mark.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
All three elements of the Policy must be alleged and proved by the Complainant. UDRP ¶4(a).
[a.] Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)( I); UDRP Policy ¶4(a)(i).
The Complainant was incorporated as a not-for-profit corporation under the Canada NotFor-profit Corporations Act on January 1, 2013. The Canadian chartered professional accountant designation, CPA, was adopted and used as of April 1, 2013 by Canada's accounting profession across the country as of that date. The CPA designation was created to adopt a new identity with the unification of three legacy accounting designations: Chartered Accountant (CA), Certified General Accountant (CGA) and Certified Management Accountant (CMA).
The Complainant also launched its visual identity campaign, prominently featuring the CPA CANADA Mark, as of April 1, 2013. The CPA CANADA Mark is now an essential asset and key component of the Complainant's profile and reputation. The CPAC's mandate is to uphold the standards of its qualified members, as well as uphold standards for accounting that allow organizations and the economy to succeed, achieve and prosper, and to safeguard the integrity of good business practices, the accountancy profession and individuals holding the CPA designation. The CPA designation ultimately allows consumers and businesses to identify professionals that meet high standards for accounting services.
Today, the Complainant is one of the world's largest national accounting bodies, with more than 210,000 members across Canada and around the world. The Canadian CPA is the pre-eminent, globally respected business and accounting designation. As a result of the national multimedia advertising campaign that the Complainant has undertaken since its inception, CPA CANADA is a strong and reputed organization responsible for the CPA designation. Based on surveys conducted by the Complainant, the CPA designation has 88% awareness among managers, owners, professionals and entrepreneurs, who put CPA on par with MBA versus other business and accounting credentials. The Complainant also carries a strong influential voice, and the Complainant's efforts to promote the accountancy profession's visibility in the media resulted in 16 million media impressions in 2016 and prominent media coverage on a range of issues such as tax and fraud prevention since its adoption.
The cpacanada.online domain name is identical to the Complainant's CPA CANADA Mark and trade name.
The cpacanada.online domain name is also identical to the domain name cpacanada.ca, except for the generic domain identifier. The cpacanada.ca domain is used by the Complainant as its primary Internet presence, and a hub to (i) educate individuals and businesses about the CPA profession and qualifying examinations and steps for becoming a CPA; (ii) provide access to a portal for members to access information regarding professional development resources, additional certifications and access to their personal CPA Canada accounts; (iv) link visitors to the online CPA store (called the "CPAstore") for purchasing publications relevant to the accountancy profession; and (v) provide access to up-to-date and essential industry news. As such, the name and mark CPA CANADA have developed a secondary meaning in Canada in association with the domain name, which is identified with the Complainant by individuals, including the Complainant's 210,000 members, and businesses.
In or about January 30, 2018, it came to the attention of the Complainant that the Respondent (or a party whose identity is being shielded by the Respondent) registered and commenced use of the domain name for a web site at www.cpacanada.online in association with identifying professional accountants in Canada, without authorization or license. Attached is a print out of the home page at cpacanada.online as it appeared at the time. The web page also identified an email address that includes the use of the CPA CANADA Mark: info@cpacanada.online.
Counsel for the Complainant sent a cease and desist letter to the Respondent, identifying it as CPA CANADA ONLINE on February 6, 2018 at the email address then posted to the web site at cpacanada.online, demanding that (i) the Respondent immediately cease use of the CPA CANADA Mark, including as part of its domain name; (ii) transfer the domain name to the Complainant; and (iii) confirm that it would execute a domain name transfer agreement.
In response, the Respondent initially agreed to comply and took down the home page, but subsequently has refused to transfer the domain name despite numerous requests by the Complainant. The Complainant had only the one email address for the Respondent, but no responses have been forthcoming from this address.
On or about May 10, 2018, the Complainant wrote to Privacy Hero for further resolution of the dispute, asking for the identity of the Respondent, but Privacy Hero simply advised that it would need to be named in a domain name complaint in order to reveal the identity of the Respondent/registrant.
The disputed domain name cpacanada.online is identical to the Complainant's domain name cpacanada.ca and its trademark CPA CANADA, based on other decisions confirming confusing similarity is established without regard to the .online: see Pomellato Sp.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000) and Rollerblade Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
The Complainant respectfully requests that the Panel find that the Respondent's accused domain name is confusingly similar to the trade name, domain names and trademark of the Complainant that feature the words CPA CANADA.
[b.] Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
Current attempts to go to the web site cpacanada.online show that there is no longer any web site set up on this domain. Given the lack of any business or web page at the accused domain name, it is obvious that the Respondent has no current legitimate business in connection with the infringing domain name. The Respondent's prior contents on the domain name clearly were aimed at parties looking for the Complainant's website and resource portal.
The Respondent's use and registration of the domain name unavoidably infringes the trademark rights of the Complainant, due to its identical nature. Further, as discussed below, there is no longer any web site at cpacanada.online and the Respondent is concealing its identity as owner of the domain by using a privacy shield through Privacy Hero Inc. ("Privacy Hero"). The Respondent is therefore not making any legitimate use, or any use at all for that matter, of the confusingly similar and identical domain name cpacanada.online.
The online arbitral decisions under the UDRP have held that "the addition of a generic top-level domain to another's mark is not enough to create a distinct mark capable of overcoming a claim of confusing similarity": see BEA Systems Inc. v. Ahmed Bouras, FA0203000105951 (Nat. Arb. Forum April 26, 2002), finding also that "[a]ny use of the disputed domain name by the Respondent would create a likelihood of confusion as to the source, sponsorship, or affiliation of the website ..." even though "Respondent has not developed a website at the disputed domain name".
Where the Respondent is not making an active use of the domain name, this will be held to amount to the lack of a bona fide offering of goods or services under the Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii): see AT&T Intellectual Property II, L.P. v. Janelle Churilla/ Suncom LLC, FAl 103001381381 (Nat. Arb. Forum April 30, 2011) holding "such non-use of the domain name is evidence that Respondent lacks rights and legitimate interests in the domain name." Further, the passive holding of a domain name does not establish rights or legitimate interests pursuant to Policy ¶4(a)(ii), as found in TMP Int'l Inc. v. Baker Enters., FA03 l 0000204112 (Nat. Arb. Forum Dec 6, 2003).
Consequently, the Respondent's inactive use of the domain name provides no basis for it to have rights or legitimate interests under either UDRP Policy ¶4(c)(i) or ¶4(c)(iii).
The Respondent is also not commonly known by the disputed domain name, which wholly incorporates the Complainant's trade name, domain names and trademark. The Respondent has no legitimate business being carried on at cpacanada.online, has no association whatsoever with CPA CANADA and is in fact hiding its identity from the cpacanada.online domain through a privacy shield. Further, given that the service of finding professional accountants under a false association with the Complainant is no longer being offered at cpacanada.online, the owner cannot possibly be commonly known by the disputed domain name.
In the circumstances, there is no basis for declaring that the Respondent is commonly known by the disputed domain name under Policy ¶4(c)(ii): see Capital One Financial v. Shaul Teller, FA1610001696471 (Nat. Arb. Forum November 7, 2016) finding no rights or legitimate interests where the Respondent was not commonly known by the disputed domain name and where the Complainant has never authorized the Respondent to use its mark.
In conclusion, it is clear that the Respondent has no rights or legitimate interests in the accused domain name pursuant to Policy if 4(c)(ii).
[c.] Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
The Respondent is hiding its identity through a privacy shield provided by Privacy Hero, which is listed as Registrant, Administrative and Technical contact for the domain name cpacanada.online. The WHOIS and ICANN WHOIS summaries regarding the domain name show Privacy Hero as the main contact and do not disclose the identity of the Respondent.
The accused domain name was registered on February 4, 2016 and updated on December 15, 2017. However, we believe that the website only went live in or about December 15, 2017, which would be consistent with the Complainant's discovery of the Respondent's infringing activities.
The Respondent registered and, until requested by the Complainant to shut down the web site, used the domain name to attract Internet users to its web site by creating confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Complainant's web site. Policy ¶4(b)(iv). The registration and use of a domain name to trade on the Complainant's mark by attracting Internet users to its competing web site is evidence of bad faith. Policy if 4(b)(iii) see: Southern Exposure v. Southern Exposure, Inc., FA0005000094864 (Nat. Arb. Forum July 18, 2000), inferring from the Respondent's being in the same industry as the Complainant that "the Respondent knew or should have known of the Complainant's business under its established and registered mark."
The four criteria set out in Policy ¶4(b) are nonexclusive. Additional factors alone or collectively have been held by Panels to support findings of bad faith. See: RRI Financial, Inc. v. Chen, D2001-1242 (WIPO December 1, 2001) and Telstra Corporation Limited v. Nuclear Marshmallows, D2000-003 (WIPO February 18, 2000).
The domain name no longer hosts a web page, but is rather being passively held by the Respondent behind a privacy shield. The online arbitration decisions have long held that the passive holding of a domain name amounts to bad faith use: See Pirelli & C. Sp.A. v. Tabriz, FA0702000921798 (Nat. Arb. Forum April 12, 2007); JELD-WEN, Inc. v. jeldwengaragedoorlongisland.com et al., FAl 101001370032 (Nat. Arb. Forum March 6, 2011), "Complainant asserts, and the Panel agrees, that Respondent's inactive holding of the disputed domain name(s) indicated that the disputed domain names were registered and are being used in bad faith under Policy if 4(a)(iii); Red Bull GmbH v. Manuel Sousa, D2001-0584 (WIPO July 3, 2001) holding that "Occupying an entry in the DNS is "use" in any event, since it has a blocking function" and "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"; and Telstra Corporation Limited v. Nuclear Marshmallows, D2000- 003 (WIPO February 18, 2000), also supporting the conclusion that passive holding of a domain name amounts to bad faith use.
Panels have also inferred bad faith where a domain name owner has taken active steps to conceal its identity. See: Morrison & Foerster, LLP v. Wick, FA0003000094301 (Nat. Arb. Forum April 17, 2000) and Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). It is apparent from the emails exchanged by the domain name holder and the counsel of the Complainant that the domain holder was not prepared to identify itself even for the purposes of a domain name transfer.
Further, failure to respond to a cease and desist letter and requests to transfer a domain name have also enabled findings of bad faith. See: Southern Exposure v. Southern Exposure, Inc., FA0005000094864 (Nat. Arb. Forum July 18, 2000) and RR! Financial, Inc. v. Chen, D2001-1242 (WIPO December 1, 2001).
The foregoing facts of showing bad faith use, concealment, and failure to transfer the domain, while continuing to passively hold the domain, should demonstrably support a finding of bad faith pursuant to Policy ¶4(b), justifying this Panel's intervention in awarding the domain name to the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Complainant claims rights in the CPA CANADA mark based upon its registration with the Canadian Intellectual Property Office (“CIPO”). Registrations of a mark with a governmental authority, such as the CIPO, are sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country.”). Complainant has rights in the CPA CANADA mark under Policy ¶4(a)(i).
Complainant also claims common law rights in the CPA CANADA mark, dating back to at least April 1, 2013. Common law rights in a mark can be established through a showing a complainant has established secondary meaning in the mark associated with the complainant. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (“Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created . . . Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as Mar. 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.”). Complainant was incorporated as a not-for-profit corporation under the Canada Not-for-profit Corporations Act on January 1, 2013, and has used the CPA CANADA mark as a central feature of its visual identity campaign since then. Complainant is one of the world’s largest national accounting bodies, having more than 210,000 members with 88% awareness among managers, owners, professionals and entrepreneurs. Complainant owns and operates the <cpacanada.ca> domain name. Complainant has established secondary meaning in the mark and demonstrated it has common law rights in the mark under Policy ¶4(a)(i).
Complainant claims the <cpacanada.online> domain name is identical or confusingly similar to the CPA CANADA mark because Respondent incorporated the mark in its entirety and added the “.online” gTLD in creating the name. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Respondent’s <cpacanada.online> domain name is identical to Complainant’s CPA CANADA mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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”).
Complainant claims Respondent has no rights or legitimate interests in <cpacanada.online> because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CPA CANADA mark in any way. Respondent is not a member of Complainant. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record identifies registrant as “Privacy Hero”. Once the WHOIS privacy was dropped when the Proceeding commenced, the registrant was identified as “Zakaria Frouni.” In neither case is there an obvious relationship between the Respondent’s name and the disputed domain name. There is no evidence Respondent was authorized to register a domain name using Complainant’s mark. It seems clear Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent’s used the <cpacanada.online> domain name to purport to offer competing financial services does not amount to a bona fide offering of goods or services or legitimate noncommercial use that would indicate Respondent has rights or legitimate interests in the name. Using a confusingly similar domain name to compete with a complainant’s business (in this case, the business of its members who have the CPA designation) does not amount to a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). This previous use was not sufficient to establish Respondent’s rights or legitimate interests under Policy ¶¶4(c)(i) or (iii).
Complainant now claims Respondent is passively holding the <cpacanada.online> domain name. Failing to use a domain prevents Respondent from claiming it makes a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain under Policy ¶¶4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Respondent’s domain name resolves to an inactive website and Respondent does not claim to use the domain for any other purpose (such as an email server or an ecommerce portal). The <cpacanada.online> domain name is inactive. Merely passively holding a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii).
Respondent registered the domain name using a WHOIS privacy service. Respondent has done nothing to publicly associate itself with the domain name. This means Respondent could not have acquired any rights simply be registering the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and used the <cpacanada.online> domain name in bad faith. Respondent attempted to attract, for commercial gain, users to the disputed domain name by offering services that directly compete with Complainant or its members (the preparation of income tax returns). Using a confusingly similar domain name to commercially benefit via the offering of competing goods or services constitutes evidence of bad faith registration and use under Policy ¶4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Respondent used the disputed domain name to offer competing accounting related services that directly competed with Complainant’s services (or the services of its members). Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶4(b)(iv).
Currently, Respondent fails to make an active use at the disputed domain name. Failure to actively use a disputed domain name is evidence of bad faith under Policy ¶4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum February 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Respondent took down the home page once Complainant issued a cease and desist letter. Now, Respondent is simply passively holding the disputed domain name. Respondent’s inactive use of the disputed domain name constitutes bad faith registration and use under Policy ¶4(a)(iii).
Registering a domain name using a WHOIS privacy service raises a rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut that presumption. The context of this domain involves the professional qualifications of accountants, something which is clearly commercial. The Panel is willing to find bath faith on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <cpacanada.online> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, August 6, 2018
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