The Complainant is Cisco Technology of San Jose, California, United States of America (“USA” or “United States”), represented by Fenwick & West, LLP, USA.
The Respondent is Klever Boateng of Samara, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, 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 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2019.
The Center appointed Sir Ian Barker as the sole panelist in this matter on March 6, 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 is an associated company of Cisco System Inc., a Californian corporation which is the primary licensee of trademarks held on its behalf by the Complainant. The Panel will refer to both the Complainant and Cisco System Inc. as “Cisco”.
Cisco has a world-wide technology business providing a wide array of products and services including telephone systems, video conferencing facilities, collaboration products and services, retail stores, training and certification products and blogs. Cisco is a public company, traded on NASDAQ with some 75,000 employees world-wide. It has marketed its wares under the CISCO mark since 1984.
The Complainant owns exclusive rights to the CCNA mark and name for use in connection with a wide range of testing services to determine professional skills in the field of networking equipment and computers systems, and to market related educational services. Cisco has offered certification services in the United States since 1993. The CCNA (or “Cisco Certified Network Associate”) certification is part of a series of well-known, network certification and training programs, specifically adapted for those that need the foundation level of networking certification. The Complainant’s rights in its CCNA mark date back at least as early as 1999 in the United States. It owns United States registrations for the CCNA mark as follows:
Registration No.
Class
Goods and Services
Registration Date
2,532,542
16
Instructional books and manuals, printed guides for teachers and printed materials, namely, test booklets, all in the field of internetworking
January 22, 2002
2,446,891
41
Educational services, namely, conducting seminars, courses, and workshops in the field of networking equipment and computer systems
April 24, 2001
2,449,757
42
Providing testing to determine professional skills in the field of networking equipment and computer systems
May 8, 2001
The trademarks are registered in many jurisdictions.
Cisco also owns registered domain names for CCNA. For more than 20 years it has advertised its CCNA goods and services under the CCNA brand. A CCNA certification serves as an indicator of a recipient's professional skill in the information and technology field.
On the site accessed by the Disputed Domain Name, the Respondent offers, without authorization, Cisco's unpublished, proprietary and copyrighted certification program and examination materials. The site hosts pay-per-click advertisements to third party websites which link to other free downloads of Cisco's materials. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to Cisco’s registered trademarks. The whole trademark is reproduced with the simple addition of the numeral “5”. This addition lacks distinctiveness and does not give the Disputed Domain Name an individual meaning. Rather, it may give the impression that there is a fifth edition of Cisco’s programs and materials. Numerous cases under the Policy were cited which affirmed the submissions.
Rights or Legitimate Interests
Cisco gave no authority to the Respondent to use its trademarks and therefore Cisco has discharged the burden of proof of its criterion under the Policy. None of the situations under paragraph 4(c) of the Policy can apply to the Respondent.
Registered and used in Bad Faith
Bad faith registration and use is clearly established by the Respondent’s conduct in registering the Disputed Domain Name which accesses free and unfettered ability to download CCNA’s certification and examination material which is not publicly available. The “click through” facility endorses the impression of bad faith. The Respondent is using the Disputed Domain Name in bad faith to attract Internet users for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
To be successful, the Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present (paragraph 4(a) of the Policy). A. Identical or Confusingly Similar
There can be no doubt that the Disputed Domain Name is confusingly similar to the Complainant’s registered trademarks. The Disputed Domain Name incorporates the trademarked CCNA with the addition of the number “5”. The addition of the number does not prevent the finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” Paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority of any sort to reflect its trademarks in a domain name.
Paragraph 4(c) of the Policy could have applied to the registration of the Disputed Domain Name, had one of its three provisions been demonstrated in this case. However, the Respondent has chosen not to invoke paragraph 4(c), and the Complainant has met its burden. The Complainant’s claim that it gave the Respondent no authority is not challenged by the Respondent.
The Panel finds that the Complainant has established a prima facie case and the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Disputed Domain Name. Therefore, paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The content of the website which reverts to pirated material belonging to Cisco clearly gives rise to the inevitable inference that the Disputed Domain Name was registered and is being used in bad faith. Cisco and its systems and certification procedures have been well-known globally for many years. Obviously, the Respondent, through the “click through”, is attracting Internet users to the website for commercial gain. Any user would conclude that the Disputed Domain Name was operated by Cisco or somebody authorized by Cisco. Therefore, paragraph 4(a)(iii) of the Policy is satisfied. 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.
Sir Ian Barker
Sole Panelist
Date: Mach 19, 2019
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