The Complainant is The Institute of Internal Auditors, Inc. of Lake Mary, Florida, United States of America (“United States” or “US”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States / Perkins David of South Richmond, New York, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with L Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2018. On May 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 8, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 9, 2018.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2018.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on June 5, 2018. 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 is an international professional association in the field of internal audit and related fields; it provides leadership, education, certification and advocacy services in that field. The Complainant was founded in 1941, and according to the Complaint, has more than 195,000 members worldwide, of which more than 70,000 are in the greater North American region. The Complainant confers a certification of “Certified Internal Auditor”, which is generally shortened to the acronym “CIA”. According to the Complaint the CIA certification is offered in three parts, and the 2017 pass rate on the required exam for the certification was 42 percent.
The Complainant is the owner of numerous trademarks for both CERTIFIED INTERNAL AUDITOR and CIA, and these are listed in Annex 10 of the Complaint. The Complainant and the Panel particularly note that the CIA trademark was registered in the United States on March 7, 1995 (US Reg. No. 1,882,539 for use in connection with “testing services…namely....testing programs for candidates for internal auditors”, and was registered for a similar purpose in Europe on January 20,2009 (European Union Reg. No. 6,139,208).
Little is known about the Respondent, who failed to answer the Complaint.
The disputed domain name was registered on March 6, 2018. 5. Parties’ Contentions A. Complainant
The Complainant submits a detailed Complaint alleging that the Respondent is using the disputed domain name to purport to offer CIA certification, without exam, against a payment of USD 1,500; in so doing it is alleged that the Respondent is seeking to make use of the deliberately confusing disputed domain name, as well as the Complainant’s reputation and renown as the only entity authorized to issue CIA certification. The Complainant confirms that it has never authorized or permitted the Respondent to make use of its trademarks in the disputed domain name of otherwise, and that the Respondent has no rights or legitimate interests in the disputed domain name. Consequently, the Complainant maintains a clear registration and use of the disputed domain name in bad faith.
Further facts alleged or proven in the Complaint will be evoked as necessary in the Discussion and Findings below.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name contains the entirety of the Complainant’s CIA trademark directly followed by the word “success”. The facts that the entirety of the registered trademark is reproduced and that it comes first are both relevant criteria pointing to identity or confusion similarity in the disputed domain name. See, e.g., F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher/Mark Lichtenberger, WIPO Case No. D2007-0189. The suffix “success” does not here necessarily diminish confusing similarity, and may add to it, as it could readily imply success in obtaining a CIA certification, or in passing the exam which the Complainant administers and on which success is a prerequisite to obtaining a CIA credential. There remains the issue that the initials “CIA” are general and are not necessarily or exclusively linked to the Complainant’s certification of an internal auditing credential. In this case, however, the Complainant has provided contemporaneous evidence that the site to which the disputed domain name resolved specifically referred to CIA certification and the CIA trademark of the Complainant. While UDRP panels do not normally look at the contents of the website linked with the disputed domain name in connection with confusing similarity, it is permissible to do so where, as here, it appears that the Respondent is prima facie targeting a trademark through the disputed domain name. See of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.15.
Weighting all these circumstances here it is clear that the disputed domain name is confusingly similar to the Complainant’s trademarks. The first element of paragraph 4(a) of the Policy is accordingly proven. B. Rights or Legitimate Interests
Jurisprudence and decisions under the UDRP establish that a complainant must demonstrate at least a prima facie case showing that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such a prima facie case is established, the burden shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See also Meizu Technology Co., Ltd. v. “osama bin laden”,WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo,WIPO Case No. D2014-0225; WIPO Overview 3.0, Section 2.1.
The Complainant has here clearly and convincingly asserted that it has never authorized the Respondent to use its trademarks in the disputed domain name or otherwise, and that it has no knowledge or belief of any rights or legitimate interests of the Respondent in the disputed domain name. Furthermore, there is no evidence or indicia in the file of this case that would suggest that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the defaulting Respondent; the Complainant has therefore met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered long after the Complainant’s trademarks, and long after the Complainant had used the trademarks in connection with its testing and certification business. Significant evidence submitted by the Complainant all points to the Respondent having registered the disputed domain name as part of a scheme wrongly to obtain fees from Internet users who desired a CIA credential. This demonstrates that the Respondent registered the disputed domain name as part of its attempt to make use of the Complainant’s trademarks in order to attract Internet users for commercial gain—which is constitutive of bad faith under paragraph 4(b)(iv) of the Policy.
The same conclusion must be drawn as to the Respondent’s use of the disputed domain name, which also clearly appears to have been an attempt improperly to capitalize on the Complainant’s trademarks for the Respondent’s gain. The Complainant submits further evidence of bad faith such as the use of a copyright notice for the Complainant’s trademark on the site to which the disputed domain name resolves. See Philip Morris Products S.A. v. Kazim Akgul,WIPO Case No. D2017-2521 (among other things, “the use of a misleading copyright notice… is sufficient evidence in view of the Panel that the Respondent intentionally tried to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s… trademark as to the source, sponsorship, affiliation or endorsement of its websites”).
In addition the Complainant submits affidavit and other evidence alleging that the Respondent was involved in a scam whereby it would promise a CIA certification against a fee payment, but without the necessity to take a qualifying exam as is required by the Complainant. This and other evidence here reinforces the clear finding of bad faith as to the Respondent’s registration and use of the disputed domain name. The third element of paragraph 4(a) of the Policy is accordingly proven. 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.
Nicolas Ulmer
Sole Panelist
Date: June 11, 2018
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