The Computing Technology Industry v.
Bruce Moran
Claim Number: FA0504000464331
PARTIES
Complainant is The Computing Technology Industry Association, Inc. (“Complainant”),
represented by Gerald C. Pia, of Pullman and Comley, LLC,
850 Main Street, Bridgeport, CT 06604.
Respondent is Bruce Moran (“Respondent”),
1103 Middle Creek, Friendswood, TX 77546.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comptiapress.com>, registered
with Go Daddy Software, Inc.
PANEL
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.
R.
Glen Ayers, Jr. served as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on April 15, 2005; the National
Arbitration Forum received a hard copy of the Complaint on April 18, 2005.
On April 15, 2005, Go Daddy Software,
Inc. confirmed by e-mail to the National Arbitration Forum that the domain name
<comptiapress.com> is
registered with Go Daddy Software, Inc. and that the Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. 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 April 20, 2005, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 10, 2005 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@comptiapress.com
by e-mail.
A timely Response was received and
determined to be complete on May 10, 2005.
Complainant and Respondent each filed
timely additional submissions.
On May 17, 2005,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers, Jr., as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
is an entity known as The Computing Technology Industry Association, Inc.,
which asserts that it is known by and uses the semi-acronym, “CompTIA.” CompTIA was first used in commerce, says
Complainant, in 1993. The attached
certificate of registration provided by Complainant shows that the mark was
registered on the principal register on March 26, 1996. The Complainant alleges that “CompTIA” was
created by Complainant and has been used by Complainant to refer to all of its
business activities. The domain name
complained of is <comptiapress.com>.
That domain name has been registered by Respondent.
Complainant asserts that <comptiapress.com> is a reasonable
extension of its products, services and trademarks. Complainant notes that there are a number of similar domain names
such as <oraclepress.com>. Such
“press” websites are used to utilized to sell authorized publications.
Complainants
asserts that it wished to sell authorized publications through <comptiapress.com> and discovered that Respondent had been
improperly using the domain name for several years.
CompTIA, through <comptiapress.com>, intended to
operate a press to provide authorized study guides
and other materials for the CompTIA certification exams and related
services. Complainant asserts “that
Respondent offers competing unauthorized products under a domain name
comprised of Complainant’s trademark” which is also identical to the “press”
service program. Of course, Complainant
asserts that the addition of the word “press” does not make the use of its
“CompTIA” mark in a domain name “not confusingly similar.”
Complainant also asserts that Respondent has no rights
or legitimate interest in the domain name.
Complainant admits that Respondent clearly uses the domain name in
connection with the offering of goods and services, it denies that the
offerings are “bona fide.”
Complainant asserts that Respondent is not commonly known by the domain
name. In fact, Complainant asserts that
Respondent operates under the trade name “total recall.”
Complainant asserts that “Respondent’s use is
commerical and unfair” and is intended to generate commercial gain.
As to bad faith, Complainant asserts that Respondent
understood the value of the domain name and appropriated the value. The evidence, says Complainant, is that
Oracle and Cisco had registered their <<xxxpress.com>> domains in
the mid 1990’s, giving Respondent the benefit of such use.
In addition, Complainant asserts that “Respondent
has engaged in a pattern of such conduct.”
Respondent has registered “<<citrixpress.com>>. Citirix is another well known computer
related entity. Next, Complainant
asserts that the registration of the domain name was “for the purpose of
disrupting the business of CompTIA.”
The domain name enables Respondent to sell his own study guides for the
examination sponsored by CompTIA.
Finally, Complainant asserts that “Respondent has intentionally
attempted to attract for commercial gain Internet users to Respondent’s
website. . . . “ Complainant argues
that such confusion has the impact of promoting Respondent’s products and
implying that Respondent’s products have some association with their
sponsorship by CompTIA.
B. Respondent
In its
response, Respondent states that it writes, produces and publishes, in various
forms and using various technologies, study guides, practice examinations,
training manuals, and so forth, related to computers and the information
technology industry. Respondent states
that the domain name, <<comptiapress.com>> and the mark
CompTIA are not identical or confusingly similar because Respondent is careful
to print a disclaimer stating that the products which it sells are
“independently developed and copyrighted by Total Recall Publications,
Inc.” Respondent then argues that an
analysis of the domain name extensions, .org and .com, would indicate that the
domains related to CompTIA resolve to a .org extension domain. Respondent then argues that everyone knows
that .org domains are for non-profits and .com domains are used for profit
entities, therefore, there can be no confusion between his commercial
enterprise and CompTIA’s not-for-profit enterprise.
Respondent
also says that he has been creating “Product” related to Complainant’s exams
since 1999. He basically questions why
a five-year delay occurred if CompTIA was so interested.
Respondent
also asserts that he has legitimate rights in the name where he uses it to
support a line of products related to CompTIA’s examinations and
certifications. He points out that
Complainant does not compete with Respondent for it has no similar line of
products. Respondent also asserts that
he is using <<comptiapress.com>> as a commercial domain name
to support his products and that he has been using <<comptiapress.com>>
for five years. Since Complainant does
not have a product that competes, Respondent asserts that there is no identity
and no confusing similarity.
As to
bad faith, Respondent asserts that he has never considered transferring the
domain name. Respondent admits that it
has registered <<citrixpress.com>> and others in support of
Respondent’s products. Respondent
asserts that he registered the domain name only for the purpose of promoting
his own products and with no intent to harm anyone else. Again, Respondent asserts the use of a
disclaimer to avoid confusion.
C. Additional Submissions
Both
Complainant and Respondent submitted additional submissions and both have been
considered by the Panelist.
Complainant:
Complainant
argues that the disclaimer does not save Respondent, for the use of the mark as
a domain name is designed to direct customers to Respondent’s site. Complainant also discusses “fair use;” it
argues it has not waived any of its rights.
Respondent:
Respondent’s “Response to Complainant’s
Reply of May 13, 2005” states that the Complainant is attempting to bar his use
of the domain name to redirect interested users to <<totalrecallpress.com>>. Respondent asserts that his disclaimers mean
that he has not created a confusingly similar domain name. Respondent also asserts that he gained
rights to the domain name from the domain name register.
Respondent also denies again that he has
violated any of Complainant’s rights.
Respondent asserts that Complainant is
attempting to persuade the Panel to ignore the common industry practice of
using domain names to redirect traffic to other websites. Respondent points out that redirection is
common, including redirection from Complainant’s own
<<comptia.com>> to <<comptia.org>>.
Respondent also asserts that “CompTIA” is
a “recognized . . . term for an entry level IT Certification.” Respondent asserts that CompTIA is trying to
“hijack” the domain name, a domain name of which he has made fair use for over
five use. He says this is like Ford
developing a new product and trying to sue an auto parts store for advertising
Ford parts.
FINDINGS
The Complainant has provided adequate
information and evidence that it holds the registered “CompTIA” trademark and
has held the mark since 1996. The mark
is obviously identical to or confusingly similar to the domain name selected by
Respondent. It is evident that the
domain name and the trademark are identical or confusingly similar. The addition of the word “press” does not
have any significance, at least as to the issue of whether or not the domain
name <<comptiapress.com>> and the registered mark, “CompTIA”
are confusingly similar. See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in
dispute contains the identical mark of the complainant combined with a generic
word or term); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the subject domain name incorporates the VIAGRA
mark in its entirety, and deviates only by the addition of the word “bomb,” the
domain name is rendered confusingly similar to the complainant’s mark). The statements and representations made by
both Respondent and Complainant indicate that CompTIA is a widely known and
widely used abbreviation for the Complainant’s formal name.
Complainant,
which holds the mark CompTIA, has also shown that Respondent has no rights in
the name. Respondent has not licensed
the name and is not known by the name.
Respondent has not established rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in the respondent’s WHOIS information implies that the
respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply). And, the Respondent is not engaged in a bona fide use of the name
to promote goods and services. Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6,
2002) (finding that the respondent had no rights or legitimate interests in a
domain name that used the complainant’s mark to redirect Internet users to a
competitor’s website).
Finally, the use is in “bad faith,” as
demonstrated by Complainant. First,
Response’s use of the Complainant’s mark is purely commercial. Qwest Communications Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat.
Arb. Forum Oct. 6, 2003) (“Respondent's
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).”).
Second, the domain name has been registered specifically to attract
interested users to Respondent’s <<totalrecall.com>> domain. See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
Respondent registered the <comptiapress.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the CompTIA mark due to Complainant’s registration of the mark with the
USPTO. The Panelist infers that
Respondent registered the domain name with actual knowledge of Complainant’s
rights in the mark due to the obvious connection between Respondent’s website
and Complainant’s business.
Registration of a domain name that is confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights is
tantamount to bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he
complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a
status that confers constructive notice on those seeking to register or use the
mark or any confusingly similar variation thereof.”); see also Pfizer, Inc.
v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link
between the complainant’s mark and the content advertised on the respondent’s
website was obvious, the respondent “must have known about the complainant’s
mark when it registered the subject domain name”).
Respondent’s use of a disclaimer on its
website is not enough to negate Respondent’s bad faith registration and use of
the <comptiapress.com> domain name pursuant to Policy ¶
4(a)(iii). See Ciccone v. Parisi (Madonna.com),
D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s
use of a disclaimer on its website is insufficient to avoid a finding of bad
faith. First, the disclaimer may be ignored or misunderstood by Internet users.
Second, a disclaimer does nothing to dispel initial interest confusion that is
inevitable from the respondent’s actions.”); see also Thomas & Betts Int’l v. Power Cabling
Corp., Inc., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based
upon initial interest confusion despite disclaimer and link to the
complainant’s website on the respondent’s website).
Respondent’s use of the Complainant’s
trademark on his “Total Recall” website, however, appears to be perfectly
legitimate. Respondent’s offerings on
the Total Recall site seem to constitute “fair use” of the marks of
others. However, he simply cannot
appropriate another’s mark and create a domain name in order to lure customers
to his business site.
Respondent’s other arguments are not
addressed.
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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
The mark and domain name are confusingly
similar.
Respondent has no rights or legitimate
interests in the name.
Respondent
has registered and used the domain name in bad faith.
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 <comptiapress.com>
domain name be TRANSFERRED from Respondent to Complainant.
R. GLEN AYERS,
JR., Panelist
Dated: May 31, 2005
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