DECISION

 

Certified Financial Planner Board of Standards, Inc. v. Career Professionals, Inc.

Claim Number: FA0106000097354

 

PARTIES

Complainant is Certified Financial Planner Board of Standards, Inc., Denver, CO, USA (“Complainant”) represented by Adam White Scoville, Esquire, of Faegre & Benson, LLP.  Respondent is Career Professionals, Inc., St. Louis, MO, USA (“Respondent”) represented by Thomas Delaney, President of Career Professionals, Inc.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <gocfp.com>, registered with Network Solutions.

 

PANEL

The undersigned, Nelson A. Diaz, 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 4, 2001; the Forum received a hard copy of the Complaint on June 4, 2001.

 

On June 5, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <gocfp.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 June 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 25, 2001 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@gocfp.com by e-mail.

 

A timely response was received and determined to be complete on June 22, 2001.

 

An additional submission was received from Complainant in a timely manner pursuant to Supplemental Rule # 7 and was given appropriate consideration.

 

On June 27, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nelson A. Diaz as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant contends that the domain name <gocfp.com>is essentially identical to, and, in any case, confusingly similar to Complainant’s CFA service mark (the “Mark”). 

B.     Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name. 

C.     Complainant contends that Respondent registered and is using the domain name in bad faith in violation of the Policy.

D.     Respondent denies that the disputed domain name is identical or similar to Complainant’s Mark.

E.      Respondent asserts that it possessed rights or legitimate interest in the disputed domain name prior to notification of this dispute. 

F.      Respondent denies that it registered and is using the domain name in bad faith in violation of the Policy.

 

FINDINGS

Complainant is the owner of a U.S. Service mark registration for the CFP Mark, with a date of first use of 1970.  Complainant is also the owner of various service mark registrations for the Mark in other countries around the world.  In addition, Complainant is the owner of a U.S. registration for the Mark CERTIFIED FINANCIAL PLANNER.  Complaint uses the Mark in association with the operation of a certification program for financial planning practitioners.

 

Respondent registered the <gocfp.com> domain name on June 15, 1998.  Respondent has made no actual use of the domain name.  Respondent has however registered numerous other domain names, including goengr.com; goclu.com; gophysician.com; gophd.com.  With the exception of goclu.com, and gocfp.com there is no record that any of these domain names correspond to another’s trademark.

 

On July 29, 1998-- six weeks after registration-- Respondent’s president contacted Complainant and offered a for-profit e-mail forwarding service connected with the domain name for use by Complainant’s members.  Respondent’s letter to Complainant indicates that it was sent “to inquire as to your organization’s possible interest in entering into some mutually beneficial relationship in an endeavor of this type.  Our web-site is not yet up and running but when it is, it will be at http://www.gocfp.com.”

 

The parties subsequently entered into discussions wherein Complainant rejected Respondent’s offer and demanded transfer of the domain name.  Respondent thereafter retained counsel, made an offer to sell the disputed domain names to Complainant for $1,000.  Complainant countered with an offer of $350.  Respondent subsequently raised its demand to $1,500.  Ultimately, the parties were able to agree to the amount of $750, but were unable to agree on the remaining terms of settlement.  This proceeding followed. 

 

DISCUSSION

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred:

 

i.         Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      Respondent’s domain name has been registered and is being used in bad

faith. 

 

Identical and/or Confusingly Similar

In assessing whether the domain name and the Mark are “confusingly similar,” the Panel is guided by recent federal court decisions which hold that confusing similarity should be determined by comparing the Mark and domain name alone, independent of the other marketing and use factors usually considered in a traditional infringment action.  See, e.g., Northern Light Technology, Inc. v. Northern Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum, Feb. 19, 2001) (discussing same principle with respect to “your” prefix to domain name). 

 

Applying that principle here, we find that <gocfp.com> is confusingly similar to Complainant’s CFP Mark.  The salient, dominant feature of each is “cfp”.  The addition of “go” and “.com” is likely to be viewed by Internet users as little more than an indicator that the domain name links to a web site related to CFP.  While the use of “go” as a prefix to a domain name is not so common as the use of another prefix, “my”, the function of each is essentially the same: to direct the user to a web site and its contents.  See Sony Kabushiki Kaisha v. Sin, Eonmok, D2000-1007 (WIPO Nov. 16, 2000) (finding that the domain name “mysony.com” was confusingly similar to Complainant’s trademark “Sony”.  “The addition of the letters ‘my’ has the effect of focusing the reader’s attention on Complainant’s trademark”).  Applying this same logic, the Panel finds the domain name <gocfp.com> is confusingly similar to Complainant’s CFP Mark.

 

Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:

 

i.      Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

ii.    An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

iii.      Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

 

In defense of its alleged actions, Respondent asserts that, prior to the dispute, it had already begun preparations to use the domain in connection with an “e-mail forwarding service” which targeted members of the financial planning profession.  Upon review, the Panel finds that the existence of this service does little to prove any rights or legitimate interest in the disputed domain name.  The reason is simple: even if this service were commercially and technologically viable (a fact in some doubt), there is no doubt that Complainant's permission or authorization would be required for the proposed service to lawfully function.  Complainant, consistent with its status as the owner of the Mark, was entirely within its rights when it denied Respondent this permission. 

 

The existence of a service that might potentially interest Complainant or its members does nothing to legitimize Respondent’s opportunistic registration of the domain name.  Since the service necessarily relied upon the good graces of the trademark holder for its success, it must be concluded that Respondent's preparations to operate an e-mail forwarding service do not create rights or legitimate interests in the domain name under subparagraph 4(c)(i) of the Policy.

 

Finally, there is no evidence that Respondent was commonly known by the domain name or made a legitimate noncommercial or fair use of the domain name as required by subparagraph 4(c)(ii) or (iii) of the Policy.

 

The Panel thus finds that Complainant has met its burden in proving that Respondent had no rights or legitimate interest in the disputed domain name.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets forth, “in particular but without limitation,” circumstances which “shall be evidence of registration and use of a domain name in bad faith.”  These non-exclusive circumstances include:

 

i.                     Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;

ii.                   A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

iii.                  Registration of the domain name for the purpose of disrupting the business of competitor; or

iv.                 Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s Mark.

 

As an initial matter, subparagraphs (ii), (iii) and (iv) are not applicable here.  While there is evidence that Respondent registered two domain names corresponding to trademarks  (<goclu.com> and <gocfp.com>), the Panel does not find that this evidences "a pattern of conduct" as required by (ii).  In addition, Respondent is not the competitor of Complainant as required by (iii) and there is no use of the domain name as required by (iv). 

 

The sole factor remaining factor under paragraph 4(b) is whether circumstances exist which show that Respondent registered the domain name with the intent of reselling it to Complainant for profit.  While in most situations of non-use, it is difficult, if not impossible, to draw any conclusion about whether a Respondent registered the domain name with the intent to sell, the facts here allow the Panel to draw such an inference. 

 

First, as a matter of United States law, Respondent had prior constructive knowledge of Complainant’s trademark.  Despite this knowledge, Respondent proceeded to register a domain name containing Complainant’s entire CFP Mark. While Respondent has proposed numerous “imaginative” possible users of the domain name, such evidence is irrelevant. Respondent has not alleged and can not allege any credible, good faith basis for using the domain name that would not violate Complainant’s trademark rights. 

 

Second, the facts show that Respondent had but one intended use -- to sell the domain name (or services connected to it) to Complainant.  Significantly, Respondent contacted Complainant a mere six weeks after registering the domain name and offered to sell e-mail services linked to the domain name.  The Panel finds that the timing of this offer provides further evidence of Respondent’s bad faith registration and use.

 

Third, the Panel finds that Respondent’s passive holding of the disputed domain name for almost three years evidences bad faith.  See Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).  This passive holding confirms that Respondent had no legitimate reason to register the domain name and made no preparations to use it.  In sum, the evidence shows this to be a plain case of cybersquatting.

 

DECISION

For all of the foregoing reasons, the Panel holds that the domain name registered by Respondent is identical or confusingly similar to the CFP Mark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name and that Respondent’s domain name was registered and used in bad faith.  Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <gocfp.com> be transferred to Complainant.

 

 

Nelson A. Diaz, Panelist

 

Date: July 12, 2001