WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Conference Board, Inc. v. Domain Manager and eC Case No. D2010-0302 1. The Parties
Complainant is The Conference Board, Inc. of New York, New York, United States of America, represented by Justin M. Kayal, United States.
Respondent is Domain Manager, eC, of Indianapolis, Indiana, United States, represented by Chad Folkening, United States. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2010. On February 26, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the Domain Name. On that same day, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 5, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 10, 2010 and an amendment to the Complaint on March 15, 2010. The Center verified that the Complaint, the amendment to the Complaint and the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on March 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2010. The Center issued a Notification of Respondent Default on April 6, 2010. Respondent filed a late response that same day.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on April 14, 2010. 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
For over 90 years Complainant, a non-profit global business organization, has created and disseminated knowledge about management to help businesses. Complainant operates as a global independent membership organization working in the public interest, publishing information and analysis, making economics-based forecasts, assessing trends, and facilitating learning. Complainant also holds conferences, convenes executives and conducts business management research. Complainant connects more than 1600 corporations in nearly 60 nations, with its worldwide conferences attracting more than 12,000 senior executives each year. More than 150 chief executive officers address Complainant's events each year and Complainant's meetings have been independently rated as one of America's top speaking platforms.
Complainant owns United States (“U.S.”) Trademark Registration Nos. 1,775,422 and 1,743,103 for the mark THE CONFERENCE BOARD (“the CONFERENCE BOARD Mark”) for use in connection with: information services such as researching, compiling and presenting factual data and commentary on economics, public affairs and business management issues; and educational services such as organizing and conducting conferences, seminars and councils in the fields of economics, public affairs and business management, respectively. It also owns other United States(“U.S.”) trademark registrations, which incorporate the Conference Board Mark. Complainant has been continuously using the Conference Board Mark since 1970.
Complainant also owns Canadian, Benelux and Mexican trademark registrations for the Conference Board Mark.
Respondent registered the Domain Name on January 4, 2000. At the time Complainant commenced this proceeding, Respondent's website associated with the Domain Name marketed and promoted a “web-based, Mobil application for the posting and updating of tradeshow and conference information.” The site further stated: “Have you ever been at a Conference and forget your schedule or made contact and forget your potential client contact. ConferenceBoard is your next wiki type, CRM tool for tradeshows and Conference.” 5. Parties' Contentions A. Complainant
Complainant alleges rights in the Conference Board Mark from long-standing use and trademark registrations, including at least two U.S. registrations. The Domain Name is identical to the Conference Board Mark.
Respondent has no legitimate interests regarding the Domain Name because it is using the Conference Board Mark without Complainant's authorization for commercial gain and to cause confusion, and because it registered the Domain Name aware of Complainant's Conference Board Mark.
Respondent registered and is using the Domain Name in bad faith to get a free ride off of Complainant's good will in the Conference Board Mark and to cause confusion. B. Respondent
Respondent filed a late response that the Panel has not considered. 6. Discussion and Findings A. Preliminary Issue – Late Filing of Response
Respondent filed a Response but failed to file it within the mandatory 20-day period after commencement of this proceeding as required under Paragraph 5(a) of the Rules. The Panel is satisfied that Respondent was clearly notified of the requirement to file its response within this timeframe as set out in the standard Complainant Transmittal Coversheet and the Center's Notification of Complaint and Commencement of Administrative proceeding document.
The Rules are clear that a Respondent shall file its Response within the stated period and under Rule 14(a) the Panel shall proceed to a decision unless there are exceptional circumstances supporting an extension of time. Respondent did not request an extension of time nor did it even demonstrate any exceptional circumstances to support an extension. Thus, the Panel must proceed to a decision on the basis of the Complaint alone. The Panel, however, notes that the late filed Response would not have altered its decision for transfer (as described below) had the Panel admitted it.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Panel finds Complainant has rights in the Conference Board Mark. It is undisputed that Complainant has been using the Conference Board Mark since 1970 and it has registered the Mark with the U.S. Patent and Trademark Office. Thus, the Mark is entitled to a presumption of validity. See Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at paragraph 1.1 (“If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights.”).
The Panel further finds that the Domain Name is identical to the CONFERENCE BOARD Mark, except for the addition of the suffix “.com.” The addition of the gTLD “.com” is without legal significance from the standpoint of comparing the Domain Name to the CONFERENCE BOARD Mark because use of a gTLD is required of domain name registrants, “.com” is one of only a few such gTLD's, and it does not serve to identify a specific enterprise as a source of goods or services. See SBC Communications v. Fred Bell aka Bell Internet,WIPO Case No. D2001-0602 (July 13, 2001).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. C. Rights or Legitimate Interests
Complainant asserts that Respondent does not have any right or legitimate interest in the Domain Name because: (1) Respondent's use is not authorized; (2) Respondent is using the CONFERENCE BOARD Mark in the Domain Name and in the text on its site to trade off of the good will Complainant has in the CONFERENCE BOARD Mark and to cause confusion for Internet users searching for Complainant; and (3) Respondent most likely knew of Complainant's rights in the CONFERENCE BOARD Mark when it registered the Domain Name based on Complainant's long-standing use of the mark and its registrations, and Respondent is offering services that are similar to some of Complainant's services.
Complainant's facts are sufficient to permit a finding in Complainant's favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith
Respondent has failed to invoke any of the circumstances that could demonstrate it did not register and use the Domain Name in bad faith.
Respondent registered the Domain Name on January 4, 2000, approximately thirty years after Complainant began using the CONFERENCE BOARD Mark and approximately seven years after Complainant's registration of the CONFERENCE BOARD Mark in the United States. Given Complainant's widespread and long-term use of the CONFERENCE BOARD Mark, as well as the U.S. trademark registrations for it, the Panel finds it is highly unlikely Respondent was unaware of the Conference Board Mark when it registered the Domain Name. Respondent's bad faith registration is also evidenced by the fact that the Domain Name is identical to Complainant's CONFERENCE BOARD Mark and Respondent has not shown any legitimate use of it. See, e.g., ESPN, Inc. v. XC2,WIPO Case No. D2005-0444.
With regard to bad faith use, Respondent is using a domain name that is identical to Complainant's mark to host a site that sells products and services in competition with Respondent's products and services. The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's CONFERENCE BOARD Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films,WIPO Case No. D2006-0893. Even if the users who access Respondent's website may conclude that it is not what they were originally looking for, Respondent has already succeeded in its purpose of using Complainant's mark to attract users for commercial gain. See Red Bull GmbH v. Unasi Management Inc.,WIPO Case No. D2005-0304.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Complainant.
Harrie R. Samaras
Sole Panelist
Dated: April 21, 2010
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