The Complainant is Cisco Technology, Inc. of San Jose, California, United States of America (“USA” or “United States”), represented by Fenwick & West, LLP, USA.
The Respondent is Domain Privacy Service FBO Registrant of Burlington, Massachusetts, USA / The Hai Truong, Ha Thi Anh Tuyet of Nha Trang, Viet Nam, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2019. On January 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2019, 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 January 30, 2019 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 amended Complaint on February 1, 2019.
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 February 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2019. The Respondent submitted an informal email on February 1, 2019, but did not submit any substantive Response. On February 22, 2019, the Center notified the Parties that it would proceed with panel appointment.
The Center appointed Halvor Manshaus as the sole panelist in this matter on March 1, 2019. 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, Cisco Technology, Inc., is the licensor of trademarks to Cisco Systems, Inc., which offers a wide range of computer software, hardware, telephony and networking products. Cisco Technology, Inc. and Cisco Systems, Inc. are jointly referred to in this decision as “the Complainant”.
The Complainant owns trademark registrations worldwide, including the trademark CCNA registered inter alia in the United States with priority from January 29, 1999 (registration nos. 2,532,542 (filed on January 29, 1999 and registered on January 22, 2002), 2,446,891 (registered on April 24, 2001) and 2,449,787 (registered on May 8, 2001)) in class 16, 41 and 42.
The disputed domain name was registered on May 19, 2016. As of the date of this decision, the disputed domain name redirects to the domain name offering the Complainant’s CCNA certification program and exam materials. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark CCNA. The disputed domain name wholly incorporates the Complainant’s trademark CCNA. The mere addition of the characters “v6” does not have an impact on the overall impression of the dominant portion of the name “CCNA”, and is insufficient to avoid confusing similarity to the trademark CCNA, which is both phonetic and visual. The Respondent’s addition of “v6” in the disputed domain name suggests that the materials offered on the website to which the disputed domain name ultimately resolves are a sixth version of the Complainant’s CCNA program and material, thereby increasing the likelihood of confusion.
The Complainant asserts that given the Complainant’s well-established rights to the trademark CCNA, the Respondent cannot have rights or legitimate interests in the disputed domain name. This is demonstrated in that the Respondent has not been commonly known by the disputed domain name at the time of registration and that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
Furthermore, the Complainant submits that the disputed domain name was registered and is being used in bad faith, based on the following assertions: (i) the Respondent has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant's trademark CCNA in order to attract Internet users to its website to generate revenue; (ii) the Respondent uses the website to which the disputed domain name ultimately resolves to provide free access to the Complainant's proprietary CCNA certification program and exam materials for commercial gain, namely hosting sponsored links and pay-per-click advertising; (iii) the Respondent registered the disputed domain name despite the Respondent's actual or constructive notice of the Complainant’s rights to the trademark CCNA; (iv) the disputed domain name fully incorporates the Complainant’s trademark CCNA without authorization; (v) the Respondent's registration of the disputed domain name prevents the Complainant from using the disputed domain name for the Complainant's legitimate purpose; and (vi) the Respondent makes use of the Complainant's trademarks, including the well-known trademark and name CISCO, the Cisco logo and insignia, font and content from the Complainant's website. B. Respondent
The Respondent submitted an email on February 1, 2019, but did not reply to the Complainant’s contentions. In this email, the Respondent simply indicated that it had “received” the Notification of Complaint and Commencement of Administrative Proceeding communication from the Center, and that it would “try to respond as soon as possible before February 21, 2019”. However, no further communications were received from the Respondent. 6. Discussion and Findings
The Complainant has, in accordance with paragraph 4(i) of the Policy, requested that the disputed domain names be transferred to the Complainant.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied for the disputed domain name:
(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.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
Based on the evidence submitted by the Complainant, describing the Complainant’s extensive trademark registrations and associated business, the Panel finds that the Complainant owns rights to the trademark CCNA in several jurisdictions.
The disputed domain name, , comprises the Complainant’s trademark CCNA in its entirety. The addition of the suffix “v6”, which is a common abbreviation for “version six”, and the Top Level Domain (“TLD”) extension “.com”, does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Panel has not been presented with, or otherwise discovered, any evidence showing: (i) that the Respondent has received a license or other permission to use the Complainant’s trademarks or any domain name incorporating or simulating these marks; (ii) that the Respondent is commonly known by the disputed domain name; (iii) that the Respondent has acquired trademark or service mark rights to use the disputed domain name; or (iv) that the Respondent is making legitimate noncommercial or fair use of the disputed domain name.
The combination of the fanciful term “CCNA” and the suffix “v6” in the disputed domain names is naturally understood as referring to the Complainant’s business. The suffix “v6” in the context of the fanciful term “CCNA” inherently refers to version six of the Complainant’s certification program offered under the trademark CCNA, which reinforces the connection with the Complainant’s business and trademarks.
The presented evidence referred to by the Complainant is, in the Panel’s view, sufficient to establish prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. As held by the panel in Ticketmaster Corporation v. Global Access,WIPO Case No. D2007-1921, the burden of production shifts to the Respondent to demonstrate rights or legitimate interests in the disputed domain name when such prima facie case is made.
The Respondent has not replied to the Complainant’s contentions. The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. According to paragraph 4(b)(iv) of the Policy, this includes circumstances indicating that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location”.
In the present case, the Panel considers that the following circumstances when seen together sufficiently indicate the Respondent’s intent in this regard:
(i) The disputed domain name is well suited for creating an association with the Complainant for the commercial gain of the Respondent.
(ii) At the time of this decision, the disputed domain name automatically redirects to the domain name , which in turn resolves to a website through which material relating to the products and services offered by the Complainant under the Complainant’s trademark CCNA are provided free of charge.
(iii) The Complainant has submitted that the abovementioned material comprises the Complainant’s CCNA certification program and exam materials, an allegation which has not been refuted by the Respondent.
(iv) The Complainant’s trademarks and logos are prominently and extensively used on the abovementioned website, without the Respondent having documented any right to use the Complainant’s trademarks.
(v) The abovementioned website features a variety of advertisements, which the Respondent claims are sponsored links and pay-per-click advertisements, and that are suitable for generating revenue for the Respondent, an allegation that has not been refuted by the Respondent.
(vi) The Respondent has failed to respond to the Complainant’s correspondence regarding the registration and use of the disputed domain name, and has similarly failed to respond to the Complainant’s contentions in this dispute.
The Panel considers it obvious that the Respondent was aware of the Complainant’s trademark CCNA at the time of the registration of the disputed domain name and that the Respondent’s intention was to set up a domain name which is confusingly similar to the Complainant’s trademark CCNA.
The Panel thus concludes that the Respondent is using the fame of the Complainant’s trademark CCNA to improperly increase traffic to its website for the Respondent’s own commercial gain, which constitutes bad faith registration and use under the Policy.
The Panel thus concludes that the Respondent has registered and used the disputed domain names in bad faith. 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.
Halvor Manshaus
Sole Panelist
Date: March 15, 2019
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