ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Cisco Technology, Inc. v. Mohammad Malik Case No. D2024-2127 1. The Parties Complainant is Cisco Technology, Inc., United States of America (“United States” or “U.S.”), represented by Fenwick & West, LLP, United States. Respondent is Mohammad Malik, United States. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2024. On May 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2024, 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 initially named Respondent (Customers of Domains by Proxy, LLC, Registration Private) and contact information in the Complaint. The Center sent an email communication to Complainant on May 28, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 31, 2024. 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 Respondent of the Complaint, and the proceedings commenced on June 3, 2024. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2024. Respondent did not submit a formal response. On June 23, 2024, the Center received an email communication from an email address associated with Respondent which stated in part, “Please consider this my initial response”, followed by a list of contentions and Respondent’s request “that the complaint be dismissed on these grounds.” On June 24, 2024, the Center confirmed
page 2 receipt of Respondent’s communication and treatment as its Response and instructed the Parties on submitting panelist preferences for the appointment of the three-member panel requested by Complainant. On August 1, 2024, Complainant filed the supplemental filing in reply to Respondent’s Response communication. The Center appointed Scott R. Austin, Brian J. Winterfeldt, and Kimberley Chen Nobles as panelists in this matter on August 13, 2024. The Panel finds that it was properly constituted. Each member of 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 Without contest by Respondent, Complainant asserts in its Complaint as amended, and its Annexes attached provide evidence sufficient to support that: Cisco Systems, Inc., a Delaware corporation, and its affiliate, Cisco Technology, Inc., a California corporation (collectively “Complainant”) since 1984 has provided a broad spectrum of products and services, including networking and communications equipment, software, and related technology goods and services under the trademark CISCO (the “CISCO Mark”). Complainant asserts through such longstanding use, promotion, and advertising worldwide, the CISCO Mark has become recognized as internationally famous and well known. Complainant has more than 75,000 employees in countries throughout the world. Since at least as early as 1998 in the United States, Complainant has also established trademark rights in connection with its training platform and provides a wide range of educational services for networking, including testing and certification services for determining professional skills in the field of networking equipment, software, and computer systems under the trademark CISCO NETWORKING ACADEMY (the “CISCO NETWORKING ACADEMY Mark”). Complainant holds numerous trademark registrations for the CISCO Mark and the CISCO NETWORKING ACADEMY Mark in the U.S. and around the world including: 1. U.S. Registration No. 1542339, CISCO, filed on June 13, 1988, registered on June 6, 1989, for “computer hardware for interconnecting local area networks, namely gateways and parts therefor,” in International Class 9 and claiming a first use date of December 27, 1984. 2. U.S. Registration No. 2314702, CISCO, filed on March 18, 1999, registered on, February 1, 2000, for “Educational services, namely, conferences, training courses, testing, workshops and distributing course materials in connection therewith, all in the fields of network communications, managing, operating and using local, wide and global area networks,” in International Class 41 and claiming a first use date of April 1, 1992. 3. U.S. Registration No. 4266900, CISCO NETWORKING ACADEMY, filed on November 16, 2011, registered on January 1, 2013, for “Providing career information; providing testing to determine employment skills for professionals in the fields of computer networking and computer network architecture” in International Classes 35 and 41, and claiming a first use date of January 9, 1998. Complainant has also registered numerous domain names that incorporate the CISCO Mark, including , used to access the official CISCO website (the “Official CICSO Mark Website”) where it promotes its networking and communications products and training services in connection with the CISCO Mark, as well as owning , , , and others. The disputed domain name was created on May 24, 2002, and as of the date of the filing of the Complaint, May 24, 2024, was inactive, resolving to a blank page with no content. Evidence submitted by Complainant from the publicly-available Internet Archive, however, as well as independent investigation by the Panel
page 3 showed historical bad faith activity by Respondent purportedly implying an affiliation with Complainant and exploiting its CISCO Marks, including resolving to a Respondent website providing services in competition with Complainant’s services: “CyberNet Technologies”, an “Internet Service Provider offering a wide range of user-oriented services including dialup access from various points throughout Los Angeles, as well as direct Internet connections to anywhere in the United States,” and additional bad faith uses more specifically set forth in Section 6.D below. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark. Complainant contends it has well established registered and incontestable trademark rights in the CISCO Mark and the CISCO NETWORKING ACADEMY Mark and the disputed domain name is confusingly similar because it incorporates the CISCO Mark in its entirety. The addition of the term “academy” in the disputed domain name does not prevent confusing similarity with Complainant’s Mark under the Policy. Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name because Respondent has no commercial relationship with Complainant or license to use the disputed domain name or Mark, is not commonly known by the disputed domain name or the CISCO Mark, and Respondent currently makes no use of the disputed domain name, resolving to a blank page. Further, Respondent cannot claim rights or legitimate interests in the disputed domain name because in the past Respondent has used it for illegitimate purposes to impersonate Complainant and/or redirect users to Respondent’s website for Respondent’s commercial gain. Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith based on the unauthorized use of Complainant’s internationally famous and well-known CISCO Mark in the disputed domain name in order to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant and its CISCO Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Further, Respondent has added “academy” to amplify this false association, and to fraudulently imply that Respondent and its disputed domain name is affiliated with Complainant and its training and certification services. Combining Respondent’s configuration of its disputed domain name in using the CISCO Mark in its entirety to imply affiliation with Complainant to pursue the illegitimate purposes for which the disputed domain name has been used as listed in Section 6.D below is sufficient to show bad faith registration and use under the Policy. B. Respondent Respondent did not submit a formal response to Complainant’s contentions. In its email communication of June 23, 2024, which Respondent characterized as its Response, and the Center accepted as the Response, Respondent contended as follows: 1. The disputed domain name currently hosts no active website, product, service, or training. There is no content available on the site that relates to Cisco Systems, its products, services, or training programs. Therefore, it is not possible for any visitor to be misled into believing the disputed domain name is associated with Cisco Systems. 2. A current search on search engines for the disputed domain name does not return any relevant content or links associated with the disputed domain name and that this “further supports the fact that the domain is not being used to attract or mislead visitors.”
page 4 3. The disputed domain name was registered 22 years ago. Since its registration, all dues have been paid consistently. The long-term registration of this disputed domain name indicates a legitimate interest in maintaining the disputed domain name, rather than any intent to exploit or mislead. 4. Respondent next contends that because “Cisco” is a name shared by multiple cities in the United States, including California, the use of the term “cisco” in the disputed domain name “can be reasonably associated with geographical locations rather than solely with [Complainant] Cisco Systems, Inc.” 5. Respondent contends that while Complainant holds trademarks for CISCO and CISCO NETWORK[ING] ACADEMY, the existence of these trademarks does not preclude the legitimate use of the term “cisco” in all contexts. Given the geographical significance and the absence of any active content related to Cisco Systems on the disputed domain name, the use of the disputed domain name does not constitute an infringement or misuse of these trademarks. 6. The printouts of Internet archive records for the disputed domain name provided in Annexes I and J are almost 22 years old. Even those records do not reference Cisco brand/trademarks, products, or services of any kind. Additionally, any content from that time may have been the result of a default web-hosting configuration. 7. The information shown in Annex K pertains to a different domain name, . The relevance of this information to the current dispute is unclear. The domain name is not related to the domain name in question and should not be considered in the context of this dispute. In summary, Respondent contends that the disputed domain name is not being used in bad faith. There is no content on the site that could mislead visitors into associating it with Complainant, nor is there any evidence of intent to exploit Complainant’s trademarks. 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that: 1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and 2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and 3. the disputed domain name has been registered and is being used in bad faith. The Panel will deal with each of these requirements in turn.
page 5 A. Preliminary Matter: Complainant’s Unsolicited Supplemental Filing As a preliminary matter, the Panel notes that Complainant submitted an unsolicited supplemental filing after receipt of the informal Response and prior to the appointment of the Panel as a reply to the informal Response, which Complainant states “is necessary because Respondent denies that the [disputed domain name] is being used in bad faith, relying primarily on the fact there is no content currently at the site, and there is no evidence of intent to exploit Complainant’s trademark.” Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447. In the present case, Complainant’s unsolicited supplemental filing provides information about its Annexes questioned by Respondent in the informal Response and seeks to rebut statements in the informal Response. While the Panel finds that much of Complainant’s supplemental filing is reiterative of Complainant’s original arguments, the Panel has decided to accept it for the sake of completeness and additional facts relating to clarification on relevance of Complainant’s Annex evidence of website screenshots attributed to Respondent prior to the creation date of the disputed domain name. B. Identical or Confusingly Similar To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. It is evident that Complainant possesses substantial and internationally recognized rights to the CISCO Mark. Complainant has been utilizing the CISCO Mark since 1984, promoting a broad spectrum of products and services, including networking and communications equipment, software, and training and certification services. Complainant’s rights extend to its training and certification services under the CISCO NETWORKING ACADEMY Mark. This mark, in continuous use for over two decades, is protected by U.S. federal registration and various international registrations, thereby solidifying Complainant’s exclusive rights. Sufficient evidence has been submitted in the form of electronic copies of valid and subsisting international trademark registration documents in the name of Complainant and therefore, Complainant has demonstrated it has rights in the CISCO Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. Further, the global fame of the CISCO Mark is well-documented in the decisions of prior UDRP panels cited by Complainant. See, e.g., Cisco Technology, Inc. v. Ross Mueller, WIPO Case No. D2007-1575; and Cisco Technology, Inc. v. Matthew Archer, International Computer Purchasing Ltd, WIPO Case No. D2012-0563. With Complainant’s rights in the CISCO Mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s CISCO Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. Prior UDRP panels have held the fact that a domain name which wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. WIPO Overview 3.0, section 1.8 (“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”); see also, BNP Paribas v. Ronan Laster, WIPO Case No. D2017-2167.
page 6 The disputed domain name incorporates Complainant’s CISCO Mark in its entirety and adds the term “academy”. Respondent’s addition to Complainant’s Mark of this term to form the disputed domain name would not prevent a finding of confusing similarity as noted in the UDRP precedents cited above. Complainant also contends Respondent’s selection of this term is to amplify the likelihood of confusion among consumers, particularly given Complainant’s established “Cisco Networking Academy” services, but this is an issue more appropriately considered under the second and third elements of the Policy. The addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v. thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11.1. Based on the above, the Panel finds that the added term “academy” does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s CISCO Mark. Complainant’s well-known CISCO Mark remains fully recognizable as incorporated in its entirety into the disputed domain name and the appended term is found in Complainant’s registered and distinctive CISCO NETWORKING ACADEMY Mark. The similarity in domain names is consistent with previous UDRP decisions, where even slight deviations or additions to a well-known trademark have not been deemed sufficient to avoid confusing similarity. See, e.g., Cisco Technology, Inc. v. Maksim Gorbacevich, WIPO Case No. D2023-5414; and Cisco Technology, Inc. v. Jose Quihue Cusi, WIPO Case No. D2023-4438. Accordingly, the Panel finds the disputed domain name is confusingly similar to the CISCO Mark in which Complainant has rights. Complainant has satisfied its burden under Paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests Under the second element of the Policy, the complainant has to make out a prima facie case that the respondent does not have rights to or legitimate interests in the disputed domain name, and if successful the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights to or legitimate interests in the disputed domain name. If the respondent fails to come forward with such evidence, a complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069. Paragraph 4(a)(ii) of the Policy also directs an examination of the facts to determine whether a respondent has rights or legitimate interests in a domain name. Paragraph 4(c) lists a number of ways in which a respondent may demonstrate that it does have such rights or legitimate interests. The first example, under paragraph 4(c)(i), is where “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”. Here, the annexes to the Complaint show that the disputed domain name is currently inactive; it resolves to a blank page with no content. Respondent admits in his informal Response that the disputed domain name is inactive, that it “currently hosts no active website, product, service, or training.” Respondent has failed to adduce any evidence with his informal Response of preparations to use the disputed domain name for any bona fide offering of goods or services. Prior UDRP panels have held Respondent’s current use of the disputed domain name to resolve to a blank page lacking content is not evidence of a bona fide service or offering of goods under the Policy. See Pet Plan Ltd v. Marc Castonguay, WIPO Case No. D2015-2116. Complainant further contends that good faith use by Respondent is implausible here as Complainant has submitted historical evidence of the disputed domain name previously resolving to websites featuring content showing bad faith uses, configured to create confusion and attract and redirect Internet users seeking Complainant’s training and certification services to Respondent’s website providing services in competition with those of Complainant. Complainant also contends the fact that Respondent continues to renew the disputed domain name and has taken multiple opportunities to falsely associate the disputed domain name
page 7 with Complainant as described in more detail in Section 6.D. below provides further evidence of the implausibility of Respondent ever using the disputed domain name in good faith. Respondent asserts in response to Complainant’s claim of bad faith use by Respondent that the disputed domain name currently hosts no active website, product, service, or training, and, therefore, because there is no content on Respondent’s website that relates to Complainant or its products, services, or training programs, it is not possible for any visitor to be misled into believing the disputed domain name is associated with Complainant. Respondent further asserts that because he has consistently paid the “dues” to maintain and renew the disputed domain name since it was registered 22 years ago, such long-term registration “indicates a legitimate interest in maintaining the domain name, rather than any intent to exploit or mislead”. Unfortunately for Respondent, under the Policy, registering and paying the annual fees to maintain the registration for a domain name that is confusingly similar to an internationally famous trademark, even if now inactive but previously used to direct others to its website does not transform the disputed domain name into a legitimate interest. The ongoing renewal and maintenance of the disputed domain name, despite its inactive state, suggests that Respondent’s intention is to misappropriate Complainant’s trademark rather than engage in legitimate use. See Pet Plan Ltd v. Marc Castonguay, supra; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Prior UDRP panels have held that the use of disputed domain names to confuse and attract Internet users through misuse of a well-known trademark, and the provision of content which promotes goods and services impersonating and competitive to Complainant as Respondent has done in the past, can never be considered use in connection with a bona fide offering of goods or services under Paragraph 4(c)(i). See The Clorox Company v. WhoisGuard Protected, WhoisGuard, Inc. / Enos Villanueva, Melissa Rosenberg, Yang Ming, WIPO Case No. D2021-0603. Applying the foregoing decisions to these facts, this Panel finds the disputed domain name is not being used in connection with a bona fide offering of goods or services sufficient to demonstrate Respondent has any rights or legitimate interests in the disputed domain name under the factors specified by paragraph 4(c)(i) of the Policy. Contrary to Respondent’s assertions, and as further assessed below, inactivity and passive holding of a domain name does not preclude a finding of Respondent’s registration and use of the disputed domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The second example, under paragraph 4(c)(ii), is a scenario in which a respondent is commonly known by the domain name. Complainant states that Respondent is not related in any way to Complainant, does not carry out any activity for, nor have any business with Respondent. Neither has Complainant granted any license or authorization to Respondent to make any use of Complainant’s CISCO Mark, CISCO NETWORKING ACADEMY Mark, or apply for registration of the disputed domain name. Complainant has never authorized Respondent to use the CISCO Mark, or any marks confusingly similar thereto for any purpose, including as a domain name. Prior UDRP panels have found a lack of rights or legitimate interests under the second element of the Policy based on such circumstances. See, e.g., Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX, WIPO Case No. D2005-0179; Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494. Complainant also shows that Respondent is not commonly known by the disputed domain name because the original Respondent listed in the WhoIs record submitted with the initial Complaint displayed “Privacy service provided by Domains by Proxy, LLC Registration Private”. The Registrar identified the underlying registrant in its verification process, “Mohammad Malik” of the United States, who has been substituted in the amended Complaint as Respondent. Neither bears any resemblance to the disputed domain name whatsoever. Respondent has not challenged Complainant’s contention or submitted evidence showing it is commonly known by the disputed domain name. Thus, there is no evidence in this case to suggest that Respondent is commonly known by the disputed domain name, that it is licensed or otherwise authorized to use Complainant’s trademark, or that it has acquired any trademark rights relevant thereto. As such, the Panel finds this sub-section of the Policy is of no help to Respondent and the facts presented here support a
page 8 lack of rights or legitimate interests in the disputed domain name. See Expedia, Inc. v. Dot Liban, Hanna El Hinn, WIPO Case No. D2002-0433. Respondent has failed to adduce any evidence to support the bare assertions in the informal Response. There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent’s contentions regarding Respondent’s payment for 22 years of maintenance of the inactive disputed domain name as evidence of legitimate use of the disputed domain name is unconvincing. Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Finally, Complainant must prove, by a preponderance of the evidence, that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. See, e.g., Hallmark Licensing, LLC v. EWebMall, Inc., WIPO Case No. D2015-2202. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of a respondent. The panel may, however, consider the totality of the circumstances when analyzing bad faith under Policy, paragraph 4(a)(iii) and may make a finding of bad faith that is not limited to the enumerated factors in Policy, paragraph 4(b). See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. First, Complainant shows that prior UDRP panels have found the CISCO Mark is a famous and well-known trademark. See e.g., Cisco Technology, Inc. v. Ross Mueller, supra; and Cisco Technology, Inc. v. Matthew Archer, International Computer Purchasing Ltd, supra. Based on the fame of Complainant’s Mark established by these prior decisions, Complainant further contends that as has been found by prior UDRP panels under similar facts involving famous marks, its CISCO Mark “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.” See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Prior UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. The Panel finds that Respondent’s configuration of the disputed domain name without Complainant’s authorization, to incorporate the CISCO Mark in its entirety and the predominant portion of the CISCO NETWORKING ACADEMY Mark, shows both Respondent’s actual knowledge of the CISCO Mark and the Mark’s widespread recognition, especially in the United States where Respondent is located, and where the CISCO Mark has been in use for at least 18 years before Respondent registered the disputed domain name. Prior UDRP panels have found that where, as here, it would be implausible to believe that Respondent selected and was using the disputed domain name for any other purpose than to trade on Complainant’s trademark rights and reputation, establishes a fact pattern that repeatedly has been held to constitute bad faith registration and use. See Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211; see also Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946. Prior UDRP panels have also held that a respondent’s selection of a disputed domain name that comprises the complainant’s mark in its entirety demonstrates a respondent’s actual knowledge to support a finding of bad faith in registering and using the domain name. See, e.g., Lloyds Bank Plc v. Marc Wiese, WIPO Case No. D2015-0914; see also, Heineken Brouwerijen B.V. v Mark Lott, WIPO Case No. D2000-1487.
page 9 Complainant also contends as noted in Section 6.B above, the disputed domain name, which Respondent has intentionally configured to enhance confusing similarity to Complainant’s CISCO Mark by incorporating CISCO in its entirety and adding “academy”, a descriptive term common to Complainant’s training and certification services industry, and on multiple occasions using the disputed domain name to direct or redirect consumers to Respondent’s website displaying, according to historical Internet Archive evidence submitted, network or training services in competition with Complainant’s services as noted in the following examples: 1) in 2002, shortly after registration of the disputed domain name, listing the disputed domain name for sale with instructions for submitting bids, that included accepting cash and stock options in exchange for the disputed domain name; 2) on or about August 2002, resolving to a website providing services in competition with Complainant’s services for Respondent’s commercial gain, featuring “CyberNet Technologies”, an “Internet Service Provider offering a wide range of user-oriented services including dialup access from various points throughout Los Angeles, as well as direct Internet connections to anywhere in the United States;” 3) As of February 2000, resolving to a website that referenced an “IT Academy”, leading Internet users to believe there was an affiliation with Complainant and purportedly confuse Internet users into assuming Respondent was offering services competing with Complainant’s education, training and certification services; 4) As of April 2001, redirecting to the domain name , which accessed a website that displayed the following: “Welcome to IT Academy Home of the World’s Best Cisco and Microsoft accelerated training programs. Get into the game. Get certified now.” Internet Archive records submitted in Complainant’s annexes show these past redirections and misuse that align with bad faith practices, reinforcing the argument that Respondent’s use of the disputed domain name has been and remains in bad faith. Prior UDRP panels have found these facts demonstrate a clear indication that respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s CISCO Mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website, and, therefore, evidence of registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy. See, e.g., Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644; Royal Bank of Canada v. China Capital Investment Limited, WIPO Case No. D2017-1025; and Travelscape, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Irwin Periola, WIPO Case No. D2020-2741. Lastly, while the disputed domain name may no longer resolve or redirect to an active website, such inactivity does not prevent a finding of bad faith under the doctrine of passive holding: i.e., given the fame of Complainant’s marks, the confusion generating composition of the disputed domain name making it implausible of being put to any good faith use, and the above examples of prior bad faith uses to which the disputed domain name has been put. See WIPO Overview 3.0, section 3.3; see also Telstra Corporation Limited v. Nuclear Marshmallows, supra. Accordingly, Respondent’s passive holding of the disputed domain name does not impact the Panel’s findings above and does not prevent a finding of bad faith under the Policy. The Panel finds Complainant’s arguments and evidence persuasive and Respondent’s arguments, submitted with no evidence to support them, are insufficient to outweigh the arguments with evidence presented by Complainant. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy.
page 10 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. /Scott R. Austin/ Scott R. Austin Presiding Panelist /Brian J. Winterfeldt/ Brian J. Winterfeldt Panelist /Kimberley Chen Nobles/ Kimberley Chen Nobles Panelist Date: September 2, 2024
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