DECISION

Commission on Graduates of Foreign Nursing Schools v. Jai Kumar a/k/a Jaikumar

Claim Number: FA0203000106123

PARTIES

Complainant is Commission on Graduates of Foreign Nursing Schools, Philadelphia, PA (“Complainant”) represented by John B. Berryhill.  Respondent is Jai Kumar a/k/a Jaikumar, Mumbai, INDIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <cgfnsonline.com> and <navtam-cgfns.com>, registered with DomainPeople, Inc.

PANEL

On May 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 27, 2002; the Forum received a hard copy of the Complaint on March 29, 2002.

On April 1, 2002, DomainPeople, Inc. confirmed by e-mail to the Forum that the domain names <cgfnsonline.com> and <navtam-cgfns.com> are registered with DomainPeople, Inc. and that Respondent is the current registrant of the names.  DomainPeople, Inc. has verified that Respondent is bound by the DomainPeople, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 23, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@cgfnsonline.com, postmaster@navtam-cgfns.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <cgfnsonline.com> and <navtam-cgfns.com> domain names are confusingly similar to Complainant's CGFNS mark.

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

No Response was received.

FINDINGS

Complainant is a non-profit organization founded in 1975.  Its function is to certify the competence of foreign-educated nurses.  Complainant administers an examination to graduates of foreign nursing schools seeking entry into the United States for employment in the nursing field.  The examination is known as the “CGFNS Examination.”  The United States Department of Labor requires the passage of this examination as a condition for issuing labor certification for aliens seeking employment in the nursing profession.

Complainant operates its official website at <cgfns.org>.  The website provides information about Complainant’s products and services.  The Complainant uses the CGFNS mark to indicate the source of its services.  Complainant also engages in the sale of study and informational materials under the CGFNS mark.  Complainant also has testing centers on almost every continent, and therefore the CGFNS mark is known nationally and internationally to identify Complainant’s examination and certification services.

Respondent registered the disputed domain names on November 28, 2001.  Respondent is operating a website at <cgfnsonline.com> that states, “Welcome to our Commission on Graduates of Foreign Nursing Schools Crash Course Programme,” conveying the impression that the website is authorized by Complainant.  There is only a very small disclaimer at the bottom of the page.  The <navtam-cgfns.com> domain name does not currently display a website.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established that it has rights to the CGFNS mark through continuous and extensive use.  The Policy does not require that Complainant have a registered mark to claim rights.  The ICANN Policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).

Respondent’s domain names are confusingly similar to Complainant’s mark because they incorporate the entirety of Complainant’s mark and merely add the generic term “online,” and the unidentifiable prefix “NAVTAM.”  The addition of these terms to Complainant’s well-known mark is not enough to overcome a claim of confusing similarity.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant). 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent registered two confusingly similar domain names and is offering services that are similar to Complainant’s services.  The use of a confusingly similar domain name for a similar service that competes with Complainant’s business is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), and therefore does not create legitimate rights and interests in the disputed domain names.  See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[i]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).

Respondent has not presented any evidence that it is commonly known as CGFNS therefore it has no rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s use of <cgfnsonline.com> to offer services that are similar to Complainant’s is an attempt to divert Internet users to Respondent’s website and create Internet user confusion as to the source, sponsorship, and affiliation of Respondent’s website.  This type of use is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding bad faith where Respondent linked the domain names, which contained the YAHOO! mark, to several of YAHOO!’s own websites).

Furthermore, Respondent’s registration of <cgfnsonline.com> and <navtam-cgfns.com>, two confusingly similar domain names at the same time is evidence of a pattern of infringing registration.  Engaging in a pattern of registering infringing domain names is evidence of bad faith pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the <cgfnsonline.com> and <navtam-cgfns.com> domain names be transferred from Respondent to Complainant.

 James P. Buchele, Panelist

Dated: May 9, 2002

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