Complainant is IFRS Foundation of United Kingdom, represented by Fidus Law Chambers, India.
Respondent is Varun Taneja, Dharam Taneja Associates of India. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 21, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 30, 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
Complainant IFRS Foundation (“IFRS” or “Complainant”) is a not-for-profit charitable foundation, responsible for setting globally accepted accounting standards or the International Financial Reporting Standards (IFRS Standards). Complainant operates its business under the trademark IFRS (the “IFRS Mark”). Complainant owns valid and subsisting registrations for the IFRS Marks, used in commerce in the European Union and the United States since 2001, and in India since 2010, as reflected in Indian Registration Number 1928457 (registered February 26, 2010). Complainant operates its primary website from the domain name .
The disputed domain name, , was registered December 28, 2009, and at the time of Complainant’s filing, resolved to a website for Dharam Taneja Associates, a website for chartered accountants. 5. Parties’ Contentions A. Complainant
Complainant asserts the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant contends the disputed domain name subsumes Complainant’s registered trademark IFRS. Complainant further asserts the disputed domain name creates an impression or association with Complainant’s online services, by incorporating the entire second level domain name. Complainant asserts the addition of “ca” in the disputed domain name is a descriptive and generic acronym for “chartered accountant,” furthering the likelihood of confusion by creating an association between Complainant and Respondent. Complainant asserts Respondent has no affiliation and is not authorized or licensed to use the IFRS Mark. Complainant further asserts the unwary general public are likely to believe Respondent’s services are authorized, endorsed, or affiliated with Complainant. Complainant contends Respondent is interconnected with Complainant because of Respondent’s offering of financial and accounting consultancy services based on the standards that are formulated by Complainant. Complainant finally asserts the IFRS Mark is a unique acronym that is distinctive and exclusive to Complainant.
Complainant asserts Respondent has no rights or legitimate interests in respect to the disputed domain name. Complainant asserts Respondent has not been permitted or granted a license to use the IFRS Mark in any manner. Complainant asserts Respondent is illegally using the IFRS Mark as the dominant part of the disputed domain name with the descriptive acronym with the intention of baiting users to visit Respondent’s website. Complainant contends that there is no other reasonable explanation as to why Respondent would adopt Complainant’s trademark as part of Respondent’s disputed domain name.
Complainant asserts the disputed domain name was registered and is being used in bad faith. Complainant asserts Respondent is involved with auditing services pertaining to Complainant’s proprietary standards, making it evident Respondent is aware of the IFRS Mark. Complainant asserts that a previously registered domain name, , was identical in content and form to the disputed domain name, indicating a nexus between the registrants of both domain names. Complainant notes its prior success in acquiring the domain name , and therefore further asserts Respondent or those it is acting in concert with, is likely a habitual offender in terms of registering domain names targeting Complainant’s IFRS Mark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the IFRS Mark. With Complainant’s rights in the IFRS mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered, in this case, “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B&H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2019-0842.
Here, the disputed domain name is confusingly similar to Complainant’s IFRS Mark, because the IFRS mark is fully incorporated into the disputed domain name at the second level, and the addition of the letters “ca” appended to the mark does not prevent a finding of confusing similarity. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its right in the IFRS Mark, and showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the IFRS Mark, and does not have any rights or legitimate interests in the Mark, and by extension, the disputed domain name. Respondent is not an authorized licensee or otherwise permitted to use Complainant’s IFRS Mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use in relation to the IFRS Mark. In addition, there is no evidence that Respondent might be commonly known by the disputed domain name. Rather, the evidence demonstrates that Respondent used the disputed domain name to associate itself with Complainant. See WIPO Overview 3.0, sections 2.5.3 (“[A] respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests”).
Respondent failed to submit any evidence demonstrating rights or legitimate interests in the disputed domain name, and therefore this Panel finds Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In this instant proceeding, the record reflects that Respondent was aware of Complainant’s trademark rights when it registered the disputed domain name, given Complainant ownership of the IFRS Mark numerous jurisdictions around the world and specifically in India, where Respondent is located. Complainant sets the industry standards that Respondent’s purported chartered accounting business adheres to. Furthermore, Respondent failed to respond to Complainant’s two cease and desist letters. This suggests Respondent had specifically targeted Complainant’s IFRS Mark in its registration of the disputed domain name and was seeking to avoid answering for its actions. See, e.g., IFRS Foundation v. Daya Nand, Dharam Raj & Co.,WIPO Case No. D2018-2941 (finding a similar holding for the domain name and transferring the domain name to the Complainant).
Furthermore, this Panel finds Respondent obtained the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on its website, within the meaning of Policy paragraph 4(b)(iv). Respondent is attempting to garner business by creating a false association between itself and Complainant in order to confuse consumers.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) of the Policy. 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 Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: June 26, 2019
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