Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA

Certified Financial Planner

Board of Standards, Inc.,

Complainant

vs.

Randal Brown,

Respondent

Case Number: FA0003000094315

DOMAIN NAME DISPUTE DECISION

An administrative hearing was held on the merits of the above styled case on April 12, 2000 before Tyrus R. Atkinson, Jr., Arbitrator, on the Complaint filed by Certified Financial Planner Board of Standards, Inc., hereafter "Complainant", against Randal Brown, hereafter "Respondent". Complainant is represented by Christopher P. Beall, 2500 Republic Plaza, 370 Seventeenth Street, Denver, Colorado 80202-4004. Respondent is represented by Randal Brown, 16032 Springdale Street, Suite 10, Huntington Beach, California 92649. Based upon the written record submitted to the Arbitrator, a decision and findings are made as follows:

PROCEDURAL FINDINGS

An administrative proceeding was commenced by Complainant against Respondent pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

A Complaint was received by the National Arbitration Forum on March 15, 2000. Complainant certified that it served Respondent with the Complaint on March 14, 2000. An Amended Complaint was thereafter filed and served upon Respondent. On March 15, 2000 the National Arbitration Forum served the Complaint Notification Instructions and Complaint on Respondent. The Commencement of Administrative Proceedings began on March 17, 2000. Respondent filed an undated Response which was accepted by the National Arbitration Forum and made part of the record. On April 5, 2000 Complainant filed a "Complainant's Reply" with the National Arbitration Forum.

The National Arbitration Forum notified Network Solution, Inc, of the Commencement and Complaint.

Network Solutions, Inc. reported that the domain name "certifiedfinancialplanner.com" had been registered on November 11, 1999 and that the Registrant was Randal Brown, 16032 Springdale St., Suite 10, Huntington Beach, Ca 92649.

The Registrant of "certifiedfinancialplanner.com" is bound by the Domain Name Registration Agreement of Melbourne IT.

The National Arbitration Forum complied in this case with the procedural requirements set out in the Policy and Rules adopted by ICANN.

STATEMENT OF THE CASE

Complainant, a Colorado non-profit corporation, contends that it operates a certification program for financial planning practitioners. Complainant contends that it grants a license to applicants to use and display the various trademarks held by Complainant. Complainant contends that one of the marks is "CERTIFIED FINANCIAL PLANNER". It is contended that this mark has been used since February, 1970. It is contended that Complainant has pending the mark in a number of foreign countries. Complainant contends that it attempted to register the domain name "certifiedfinancialplanner.com" with Network Solutions, Inc. during the year 1999. It is further contended that Respondent registered the domain name thereafter with Melbourne IT. Complainant contends that Respondent lacks a valid right to use the service mark "CERTIFIED FINANCIAL PLANNER" in the domain name "certifiedfinancialplanner.com". Complainant contends that Respondent's registration of the domain name is in bad faith and fraudulent, that it would infringe its rights and dilute the distinctiveness of the service mark.

Respondent denies that adequate proof is advanced by Complainant in order for Complainant to prevail. Respondent contends that Complainant should not be able to register a ".com or .net" domain name. Respondent contends that the domain name is not identical or similar to the Internet community and the service mark for educational materials. Respondent contends that his registration is intended for an online professional directory website for use by business and the public in looking for a certified financial planner, and other services to finance.

FINDINGS OF FACT

1. Complainant holds from the United States Patent and Trademark Office the Service Mark "CERTIFIED FINANCIAL PLANNER". The mark was registered on January 6, 1987. The first use of the name in commerce was February, 1970.

2. Complainant holds International Trademark Registrations for the mark "CERTIFIED FINANCIAL PLANNER" in Argentina, Benelux, Canada, Chile, Denmark, France, Germany and Indonesia, Italy, Japan, Mexico and South Africa. These Registrations were granted prior to date upon which Respondent registered the domain name "CERTIFIEDFINANCIALPLANNER.COM"

3. Complainant has applied for International Trademark Registrations in twelve other countries and the European Community for the mark "CERTIFIED FINANCIAL PLANNER". The applications are dated prior to the registration of the domain name by Respondent.

4. During the year 1999, Complainant sought to register the domain name "certifiedfinancialplanner.com" through Network Solutions, Inc. The last attempt to register was in November, 1999. Network Solutions, Inc. rejected the attempted registration on each occasion on the basis of its policy of not registering a domain name of more than 26 characters.

5. On November 25, 1999 Respondent registered the domain name "certifiedfinancialplanner.com" with Melbourne IT.

6. Melbourne IT is an accredited Registrar of Internet Corporation For Assigned Names and Numbers ("ICANN"). Respondent, as Registrant, agreed as a condition to submitting the Registration Agreement, that Registrant is bound by Melbourne IT's dispute policy which are the Policy and Rules of ICANN.

7. Complainant operates a certification program for financial planning practitioners, requiring applicants to meet certain training, annual continuing education and certification. Upon successful completion Complainant grants a license to use and display the service marks of Complainant including "CERTIFIED FINANCIAL PLANNER".

8. Under the provisions of Complainant's license agreement with the licensees, a licensee is not permitted to use Complainant's marks in any web site of the licensee.

9. Respondent is not, and has never been, a licensee of Complainant.

10. Respondent is not entitled to use the mark "CERTIFIED FINANCIAL PLANNER" under any agreement, rule or provision made with the Complainant.

11. Complainant and the organizations of which it is successor in interest have used the name "certified financial planner" since the year 1970 to promote its activities and identify its activities. Complainant has an important financial interest in this name and in the service marks it has registered and used. Complainant has used these marks continually and extensively for many years.

12. There is no evidence in the record that Respondent has used the domain name "CERTIFIEDFINALCIALPLANNER" in a commercial or other manner since it was acquired.

13. Respondent's stated purpose of using the domain name at some time in the future to contain a list of persons which can be reviewed by one desiring financial planning services would constitute a conflict with Complainant's rightful use of its Service Mark and could lead others to believe that those on the list have the training required by Complainant to obtain the license to use and display the Service Mark. There is a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of any use of a web site by Respondent under the domain name.

14. Respondent knew or should have known of the Service Mark and use of the name "CERTIFIED FINANCIAL PLANNER" by Complainant at the time Respondent registered the domain name.

15. There is no evidence in the record of any use Respondent could make of the domain name which would not damage the rights and privileges of Complainant in the use of its Service Mark.

17. The domain name "CERTIFIEDFINANCIALPLANNER.COM" is identical to the Service Mark held by Complainant.

18. In registering the domain name "CERTIFIEDFINANCIALPLANNER.COM" Respondent has interfered with the ability of Complainant to obtain the domain name.

20. There is no evidence in the record to support the proposition that Respondent has commonly been know by the domain name, that Respondent is making a legitimate non-commercial use of the domain name, without intent for commercial gain, or that Respondent has ever used the domain name in the bona fide offering of goods or services.

CONCLUSIONS

1. The domain name "CERTIFIEDFINANCIALPLANNER.COM" registered by Respondent is so close as to be identical or confusingly similar to Complainant's "CERTIFIED FINANCIAL PLANNER" Service Mark, to which Complainant has legal rights and to which Respondent has failed to show a legitimate right or interest.

2. Respondent registered and acquired the domain name "CERTIFIEDFINANCIALPLANNER" in bad faith.

DECISION

THE DOMAIN NAME "CERTIFIEDFINANCIALPLANNER.COM" REGISTERED BY RESPONDENT, RANDAL BROWN, BE TRANSFERRED TO COMPLAINANT, CERTIFIED FINANCIAL PLANNER BOARD OF STANDARDS, INC.

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this case. The undersigned certifies that he was impartial and decided the case on the written record presented for decision.

This 12 day of April, 2000.

____________________

Tyrus R. Atkinson Jr