The Complainant is Construction Industry Training Board also known as CITB of King’s Lynn, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented internally.
The Respondent is Ciprian Toma of Harrow, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2016. On June 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a July 4, 2016 notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 7, 2016.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on August 8, 2016. 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 following facts, relevant to the Panel’s determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant runs a number of “competence card schemes” for workers in the construction industry. The competence card scheme for workers who operate plant and machinery is known as the Construction Plant Competence Scheme or “CPCS”. The CPCS is a series of verbal tests, and the Complainant makes the questions -- but not the answers -- available to assist test-takers in studying for the tests.
The Respondent registered the disputed domain name on February 9, 2016 and uses it to operate a website that sells answers to questions appearing on the CPCS.
The Complainant owns various iterations of the mark CPCS which it uses for, among other things, certification services in the field of construction. It has several registrations in the United Kingdom for these different iterations of the mark, including No. 2488306, issued on May 23, 2008. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to each disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of its registrations of its mark, including registrations which predate the registration of the disputed domain name. On the basis of these registrations, the Panel is satisfied that the Complainant has rights in its mark CPCS.
The Panel also finds that the disputed domain name is confusingly similar to the CPCS mark. “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.” See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505.
In this case, the disputed domain name contains the mark in its entirety. The addition of the words “theory test answers” does nothing to diminish this confusing similarity. As the panel held in Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. In the present case, the dominant element in the disputed domain name is the CPCS mark. The words “theory test answers” are, in light of the nature of the Complainant’s services, entirely generic.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town,WIPO Case No.
D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In this case, the Panel credits the Complainant’s assertion that the Respondent has no connections with the Complainant and is not authorized to use the CPCS mark or to sell or otherwise disclose the materials that are being offered for sale through the Respondent’s website.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name, and the Complainant has prevailed on this element of the UDRP. C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location”.
In this case, it is clear that the purpose of registering the disputed domain name was primarily to rely on the value of the CPCS mark in order to attract Internet users to the Respondent’s website, and to generate revenue via the sale of unauthorized materials.
The Complainant has prevailed on this third element of the UDRP. 7. Decision
For 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.
Evan D. Brown
Sole Panelist
Date: August 22, 2016
Full & Egal Universal Law Academy