The Complainant is Construction Skills Certification Scheme Limited, West Sussex, United Kingdom of Great Britain and Northern Ireland, represented by Fasken Martineau LLP, United Kingdom.
The Respondent is Mara Figueira, Hertfordshire, United Kingdom (hereinafter “UK”). 2. The Domain Name and Registrar
The Disputed Domain Name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2010. On June 10, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On June 11, 2010, 1&1 Internet AG transmitted by email to the Center its verification response. The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on June 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2010. An email was received by the Center on July 5, 2010 from the Respondent.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 2, 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
The Complainant administers a scheme by which construction workers can be assessed for occupational competency. It was established in 1995. It is the owner of UK and Community trade marks for CSCS. The Respondent registered the Disputed Domain Name on June 28, 2008 and it is being used in relation to a web site offering services associated with booking the CSCS test and obtaining CSCS cards. 5. Parties’ Contentions A. Complainant
The Complainant’s submissions can be summarised as follows:
The Complainant administers a scheme by which construction workers can be assessed for occupational competency. It was established in 1995. The scheme’s full name is the Construction Skills Certification Scheme, but it is generally known by its acronym CSCS. CSCS was established in 1995 and has become the industry standard competency card scheme for construction. It has issued over one and a half million cards to date. Once a worker has passed a CSCS test he or she can be issued a CSCS card.
The Complainant is the owner of UK and Community trade marks for CSCS. It has built up substantial goodwill and reputation in the UK and internationally and has over 100,000 visitors to its web site each month.
The Disputed Domain Name is confusingly similar to the Complainant’s marks consisting of the CSCS trade mark and the generic term “booking”, which does not serve to prevent the likelihood of confusion with the Complainant’s mark. The Respondent’s web site also shows the Complainant’s logo on each page and uses the Complainant’s mark in its trading name. This gives the impression that the Respondent has proprietorship over the CSCS scheme.
The Respondent has said the site is not being used, accordingly the Respondent cannot have acquired any rights in the Disputed Domain Name. The Respondent has no connection with the Complainant and the Respondent is not commonly known by the Disputed Domain Name. The Respondent also admits that the intention when building the site was to use it for commercial purposes even though it was not ever, in fact, so used. The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent is trying to attract users to its web site by its confusing use of the Disputed Domain Name and by encouraging them to use its services by giving the impression that it is associated with the Complainant. This is made worse by the use of the Complainant’s logo. Despite contact being made the Respondent has not removed the site. It continues to be accessible causing confusion to those in the construction industry. The Respondent has registered and is using the Disputed Domain Name in bad faith. B. Respondent
The Respondent replied by e mail on July 5, 2010 to say it had made enquiries how to shut the web site down, but was still waiting for the form. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Disputed Domain Name consists of the Complainant’s CSCS registered mark and the generic word “booking”. The addition of the generic word “booking”, reflecting the booking of a test for the Complainant’s scheme, does not serve to distinguish the Disputed Domain Name from the Complainant’s CSCS trade mark. As such the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent has not filed a formal Response and did not claim it has any rights or legitimate interests in the Disputed Domain Name in its email saying it was trying to shut its site down. From the record before the Panel, it does not appear that the Respondent has any trade marks associated with CSCS, is not commonly known by this name and does not have any consent from the Complainant to use this name. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. It does appear that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant’s services and the services offered on the site attached to the Disputed Domain Name for commercial reasons.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and used in bad faith. 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 Disputed Domain Name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: August 11, 2010
Full & Egal Universal Law Academy