WIPO Domain Name Decision D2007-1296 for mycpa.info

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

M, Inc. v. Nilesh Sangoi

Case No. D2007-1296

1. The Parties

The Complainant is M, Inc., United States of America, represented by Trevor H. Francis, United States of America.

The Respondent is Nilesh Sangoi, United States of America.

2. The Domain Name and Registrar

The disputed domain name is registered with Blue Razor Domains.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2007. On September 3, 2007, the Center transmitted by email to Blue Razor Domains a request for registrar verification in connection with the domain name at issue. On September 4, 2007, Blue Razor Domains transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2007. The Response was filed with the Center on September 27, 2007.

The Center appointed Dennis A. Foster as the sole panelist in this matter on October 10, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant operates accounting services in the United States of America and uses a registered service mark, MYCPA.COM, INC. (United States Registration No. 2,548,864; March 19, 2002) in connection with those services. The registration was filed on November 18, 1999, and the Complainant’s first use of the mark occurred after that.

The Respondent registered the disputed domain name on March 25, 2005. The Respondent parked the name with a third party domain name holder, where it was offered for sale.

Starting in August 2007, the Complainant and the Respondent engaged in inconclusive negotiations regarding the transfer to the Complainant of the disputed domain name. The Complainant’s last offer was approximately $800 USD, the Respondent’s last counteroffer, $2,950 USD.

5. Parties’ Contentions

A. Complainant

- The Complainant wholly owns the Certified Public Accounting firm MyPersonalCPA.com, inc., which is incorporated in the state of Nevada, United States of America, and licensed also in the state of California, United States of America.

- The Complainant is the owner of the registered service mark MYCPA.COM, INC. It was registered with the United States Patent and Trademark Office (“USPTO”)on March 19, 2002 (Registration No. 2,548,864).

- The Complainant has advertised its service mark extensively in Southern California and via Internet throughout the United States and the world.

- The Complainant’s mark predates the Respondent’s registration of the disputed domain name, which occurred on March 25, 2005.

- The website located at the disputed domain name says that it may be for sale. In reaction to a suggested price of $289 USD, the Complainant made an anonymous offer of $500 USD on August 19, 2007. The Respondent countered with a request for $3,000 USD. The Complainant responded with an offer of $750 USD, drawing another counter at $2,950 USD. All the while, the Respondent said he was offering a bargain deal relative to market prices for domain names of this caliber.

- On August 30, 2007, the Complainant revealed the ownership of its service mark and upped his bid to $800 USD. The Respondent again countered at $2,950 USD, claiming that he was a certified public accountant (“CPA”) and had legitimate rights in the disputed domain name .

- “Mycpa” is the distinguishing feature of both the Complainant’s service mark and the disputed domain name, so they are confusingly similar. The Complainant has common law and intellectual property rights in its service mark. The addition of “.info” does not reduce the likelihood of consumer confusion as to the source of the name and its relation to the mark and the Complainant’s business.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name.

- Though the Respondent is listed as a CPA in the state of Kentucky, United States of America, he has not used the disputed domain name in connection with accounting services or any other bona fide offering of goods or services.

- There is no evidence that the Respondent is commonly known by the disputed domain name or that he is making a noncommercial or fair use of the same.

- The domain name in question was registered and is being used in bad faith. The Respondent acquired the disputed domain name for the sole purpose of selling it for a profit. The Respondent had constructive, if not actual, knowledge of the Complainant’s mark, and the asking price of $3,000 USD is far in excess of the Respondent’s registration costs. To the extent that the Respondent is passively holding the name, that is further evidence of bad faith.

B. Respondent

- The disputed domain name is not confusingly similar to the Complainant’s service mark due to the fact that the mark is 14 characters long and only the first six (less than 50%) match the name. Furthermore, the Complainant possesses alternate domain names and , creating a distinction from the disputed domain name.

- The Complainant does not have exclusive rights to the generic term “My CPA” and has no common law rights to the term. The Complainant has established no secondary meaning bonding it to that term, and other people have domain names that include “my cpa.” Moreover, the Complainant has used a number of similar marks (i.e., MYCPAPORTAL, MYPERSONALCPA, etc.), so that no one of them signifies the Complainant’s services.

- The Respondent has a legitimate right to the disputed domain name as it is a generic term which is found in the domain names of many third parties. The Respondent is a CPA, licensed in the state of Kentucky, who operates as an individual accountant.

- The Respondent registered the disputed domain name in March 2005, well before the Complainant opened its office bearing the name “myCPA.com, inc.” in August 2005. The Respondent had no knowledge of the Complainant’s service mark prior to registration of the disputed domain name.

- The Respondent had planned to use the disputed domain name for his accounting services but altered that plan due to a change in project assignments. As a result, the Respondent parked the name at a third party website since the Respondent is also in the part-time business of acquiring, parking and selling generic or descriptive domain names. In this connection, the disputed domain name was set up to return pay-per-click revenue in connection with advertising links found at the name. Both activities constitute a bona fide offering of services.

- The Complainant cannot claim, by virtue of its service mark, exclusive rights to “my”, “CPA”, “.com” or “inc.”, no more than the owners of “MICROSOFT” can claim exclusive rights to the generic term “micro”.

- The Complainant was unsuccessful in registering “MYCPA.COM” as a service mark with the USPTO, and therefore registered MYCPA.COM, INC.

- The Respondent has not engaged in bad faith registration of the disputed domain name because he was unaware of the Complainant mark at the time of registration, and only became so aware based on an exchange of emails years after that registration.

- The Respondent did not register the disputed domain name with the intention to sell it to the Complainant or a competitor, and the Complainant made the first offer to Respondent not vice versa.

- The Respondent neither attempted to prevent the Complainant from registering an appropriate domain name nor attempted to disrupt the Complainant’s business. Passive holding of a domain name is not evidence of bad faith, especially if the holder is unaware of a similar trademark or service mark.

- The Respondent denies that the disputed domain name was initially listed for sale at $289 USD. Moreover, since the Respondent spent 15 hours of valuable professional time researching the name for registration, a price of $2,950 USD is not unreasonable (i.e., $200 USD per hour for the time of a professional CPA with 8 years of experience).

- The Complainant is engaging in reverse domain name hijacking: the Complainant knew that the Respondent is a CPA and thus had legitimate rights in the disputed domain name; the Complainant continued to make offers to purchase the name after filing the Complaint, evidence that the Complainant knew it would not prevail; the Complainant hardly used its service mark prior to July 2007; and the Complainant has made several specious USPTO service mark registration applications, all involving “CPA” in some manner or other.

6. Discussion and Findings

Per paragraphs 4(a)(i-iii) of the Policy, the Complainant may prevail in this administrative proceeding and gain possession of the disputed domain name if the Complainant can demonstrate the following:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant has presented the Panel with evidence of the Complainant’s USPTO registration for the service mark MYCPA.COM, INC. Many prior panels have held that such registration of a mark provides conclusive or strong prima facie evidence of a complainant’s rights in that mark. See, Ticketweb Inc. v. Domains Ventures, NAF Case No. FA654538 (April 20, 2006) (“Complainant’s registration of its TICKETWEB trademark with the USPTO establishes its rights in the mark pursuant to paragraph 4(a)(i) of the Policy.”); and The Cyberbingo Corporation v. 207 Media Inc.,WIPO Case No. D2005-0714 (October 4, 2005), (“This Panel believes that the Registered Trademarks for CYBERBINGO are prima facie evidence of validity…”). The Panel concurs with those rulings, and finds that the Complainant does have rights in the MYCPA.COM, INC. service mark.

The Respondent argues that the Complainant possesses no common law rights to its claimed mark because no secondary meaning has attached it exclusively to the Complainant. He asserts further that the terms “my” and “CPA” are generic and that third parties own domain names containing those two terms. While the Panel may agree that the Complainant’s mark is not very distinctive and others may have variants of the mark in domain name registrations, the Panel is loathe to substitute a cursory examination for that of the USPTO and finds that common law considerations are unnecessary to establish rights in a mark when presented with a valid service mark registration. See SystemSoft Corporation v. RareNames, WebReg, NAF Case No. 474793 (June 28, 2005); and United States Office of Personnel Management v. MS Technologies Inc., NAF Case No. FA198898 (December 9, 2003).

The Respondent also contends that the disputed domain name contains only six characters, “mycpa.”, that match in identical order any of the 14 characters in MYCPA.COM, INC., in the Complainant’s service mark, and so the name and the mark are not identical or confusingly similar. However, the Panel notes that the crucial identity, which causes confusing similarity, is represented by the first five characters found in the disputed domain name and the Complainant’s mark, i.e., “mycpa”. Moreover, many prior UDRP panels have found that the inclusion and/or omission of various suffixes such as, “.com”, “.info” and “inc.”, do not measurably dilute the confusing similarity between domain names and trademarks that are otherwise identical. See, for example, SIGARMS, Inc. v. Sigsauer Dot Com, NAF Case No. FA1024240 (August 9, 2007) (where the panel found that, “…the , , and domain names are identical to Complainant’s SIG SAUER mark pursuant to paragraph 4(a)(i) of the Policy.”); Valeant Pharms. International v. Carpela,WIPO Case No. D2005-0786 (September 2, 2005); and Tracktime, Inc. v. The Web People, FA95860 (Nat. Arb. Forum Dec. 6, 2000). Thus, the Panel finds at least confusing similarity in this case.

In conclusion, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy places the burden on the Complainant to prove that the Respondent lacks rights or legitimate interests in the disputed domain name. However, it has become nearly axiomatic in Policy cases that a complainant must present only a prima facie case on this issue to shift the burden of production to the respondent. See, for example, Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. FA741828 (August 18, 2006); and Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (June 6, 2000) (where the panel, ruling in favor of a domain name transfer opined “Although paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element [along with the other two], once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).

In the present case, the Complainant has persuaded the Panel of its valid service mark rights, and there is nothing in the record to suggest that the Respondent was licensed or otherwise authorized to use the mark in any way. Thus, the Panel determines that the Complainant has sustained the requisite prima facie case.

In rebuttal to this prima facie case, the Respondent contends that he is commonly known as the disputed domain name. However, the only evidence he cites for this proposition is that he is a CPA. Since the Panel believes that not all accountants are commonly known as “CPA” or “my CPA”, the Panel must reject this argument in the absence of more compelling evidence. Therefore, the elements necessary to establish a respondent’s rights or legitimate interests in a disputed domain name as suggested in paragraph 4(c)(ii) of the Policy do apply in this case. Furthermore, given the Respondent’s contentions below, compliance with the criteria for rights or legitimate interests found in paragraph 4(c)(iii) – i.e., engagement in noncommercial or fair use of the disputed domain name – also are not present.

Somewhat more persuasively, the Respondent contends that the terms “my” and “CPA” (and thus the combination “my CPA”) are generic, and therefore his offering of the disputed domain name for sale or as a vehicle to collect so-called “pay per click” fees – through advertising referral links listed in the website found at the name – is a bona fide offering of goods or services sufficient to satisfy the requirements of paragraph 4(c)(i) of the Policy. To buttress his contentions, the Respondent cites: InCorp Services, Inc. v RareNames, WebReg, NAF Case No. 559911 (November 10, 2005) and Front Range Internet, Inc. v. David Murphy a/k/a This Domain For Sale, NAF Case No. FA145231 (April 4, 2003) for the proposition that selling domain names consisting of generic or descriptive terms is a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) of the Policy; and Asset Data Corporation v. Name Administration Inc. (BVI), NAF Case No. FA699525 (July 10, 2006) for the proposition that using domain names for paid advertising referrals is also such an offering.

On the other hand, the Panel has found prior UDRP decisions that specifically deny that either activity, trading in domain names or using them solely as vehicles for links to advertised websites, fulfills the requirements of paragraph 4(c)(i) of the Policy. See ATOL v. Namegiant - Moyobamba Pshp,WIPO Case No. D2006-1203 (November 16, 2006); and Prestige Brands Holdings, Inc., and Prestige Brands International, Inc. v. The domain is not for sale / Motohisa Ohno,WIPO Case No. D2006-0608 (July 17, 2006) (where the panel wrote “The Respondent registered the Domain Name with a view to selling it and pending sale has been using it commercially to derive ‘revenue-per-click’ income via a parking page service…but [that] cannot be categorized as a bona fide use within the meaning of paragraph 4(c)(i) of the Policy. That paragraph of the Policy is intended to protect registrants conducting genuine business under the domain name in question.”).

The Panel also cites the pertinence of another case, Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964 (September 23, 2006), where the panel attempted to reconcile the apparent divergence between the rulings in InCorp Services, supra and Prestige Brands, supra. That panel noted that, although the aforementioned uses of a disputed domain name might not meet the criteria suggested in paragraph 4(c)(i) of the Policy, paragraph 4(c) as a whole is not intended to be exhaustive of the ways in which a respondent may establish its rights and legitimate interests in a name and thus, under certain circumstances, resale activities or “pay per click” website referral can legitimize a respondent’s ownership of a disputed domain name. The Panel notes that Front Range, supra, cited above by the Respondent, also supports this notion, as the panel in that case wrote “In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.” [emphasis added]

Furthermore, the Panel believes that the panel in Media General, supra suggested the correct approach when listing the circumstances that must be satisfied in order to determine whether holding a disputed domain name for resale or using it for “pay per click” website linkage should be considered legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, as follows:

(1) the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;

(2) the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;

(3) the domain name in question is a “dictionary word” or a generic or descriptive phrase;

(4) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and

(5) there is no evidence that the respondent had actual knowledge of the complainant’s mark.

In examining the evidence presented in this case, the Panel can conclude: that the Respondent is, as he represents, a regular (if merely part-time) reseller of domain names; that the disputed domain name is a descriptive phrase; and that the Complainant’s mark is not famous or distinctive. Thus, circumstances (1), (3) and (4) above are deemed satisfied.

However, the Panel does not reach the same conclusion regarding circumstances (2) and (5) above. The Respondent avers that he spent 15 “valuable professional” hours researching the domain name in question. Seemingly, that would suggest compliance with circumstance (2) above. Yet, the Panel finds it incredulous that, if the Respondent spent so much time, he remained unaware – as he claims he did – of the Complainant’s service mark since it would have been apparent after a simple check with the USPTO’s website. Certainly, the Respondent is familiar with USPTO information and how to access it, as he has furnished the Panel with voluminous information regarding the Complainant’s many USPTO registration applications involving other marks and about the changes in the USPTO application for the service mark in this case. In short, the Panel is convinced that the Respondent was aware of the Complainant’s service mark when the Respondent registered the disputed domain name. Therefore, the Panel determines that the Respondent has failed to satisfy circumstances (2) and (5) in establishing his legitimate interest in that name per the list above.

Finally, the Respondent has argued that he has rights and legitimate interests in the domain name simply because he is a licensed certified public accountant and thus the name is descriptive of his occupation. The Panel might accept that reasoning had the Respondent, for example, put the name to use in his accounting practice, or indeed to a use at least evidently relating to accounting. However, he did not, nor does he contend beyond a claimed general intent that he made any demonstrable preparations to do so. Moreover, as dicscussed further below, the Panel believes that the Respondent was in all likelihood aware of the Complainant’s mark. Thus, the Panel finds in the circumstances that the Respondent’s status as an accountant does not itself give rise to rights or legitimate interests, in the disputed domain name where it is being used for purposes unrelated to accounting.

In light of the foregoing, the Panel rules that the Complainant has discharged its duty to show that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith

The Complainant has asked the Panel to find that the Respondent registered and is using the disputed domain name in bad faith because he registered the name for the sole purpose of selling it to the Complainant for profit, a circumstance that allows for a finding of bad faith registration and use per subparagraph 4(b)(i) of the Policy. However, the Complainant undercuts its own argument by admitting in the Complaint that it initiated the negotiation for the sale of the domain name on an anonymous basis.

The Complainant also asserts that the Respondent’s passive holding of the domain name in dispute is conclusive evidence of bad faith. However, without sufficient evidence that a complainant’s mark is well-known, passive holding is not enough to sustain such a conclusion. See, for example, Barlow Lyde & Gilbert v. The Business Law Group,WIPO Case No. D2005-0493 (June 24, 2005); and Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Christopher C. Gramly, 12 Galaxies,WIPO Case No. D2004-0416 (July 21, 2004). In the instant case, the Complainant has failed to provide the Panel with persuasive evidence that its service mark is well-known.

Moreover, in this case, the Panel does not detect the direct applicability of any of the other specific paragraph 4(b) of the Policy circumstances that point toward a determination of bad faith registration and use of the disputed domain name. However, that paragraph states explicitly that those circumstances are not intended to be the exclusive reasons for such a determination.

The Panel turns again to the case of Media General, supra, for guidance in its analysis of bad faith registration and use. The panel in that case noted that, “…paragraph 2 of the Policy implicitly requires some good-faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.” As noted above, the Respondent maintains that he spent 15 hours researching the disputed domain name for registration. He is evidently internet-savvy and is in addition a United States of America resident, so it seems apparent to the Panel that, in his research, he would have made simple use of the USPTO web site to determine whether his registration would correspond to a trademark registered in the United States. The Panel is convinced that he did just that and, instead of avoidance, went ahead to register the disputed domain name with full knowledge that it was virtually equivalent to the Complainant’s mark.

The Panel concludes further that, having determined that the disputed domain name corresponded to an existing registered service mark, the Respondent should have expected that the degree of confusion with that mark as to sponsorship and source would likely increase as the mark increased in notoriety, no matter how weak the service mark was at the time of its registration. Trading on such expectations constitutes a type of bad faith use of domain names, or cyber-squatting, that the Policy is designed to curtail.

The Respondent contends that, because he has found others who are using the phrase “my CPA”, the Complainant does not have an exclusive right to it. However, the Complainant does not require an exclusive right to use that phrase in every possible context to establish a violation of the Policy. See Media General, supra.

In accordance with the reasons stated above, the Panel decides that the Complainant has succeeded in showing that the Respondent registered and is using the disputed domain name in bad faith.

Since the Complainant has prevailed, it is obvious the Respondent’s allegations of reverse domain name hijacking are untenable.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

Dennis A. Foster
Sole Panelist

Date: October 24, 2007

Full & Egal Universal Law Academy