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Generic Top Level Domain Name (gTLD) Decisions |
Commission on Graduates of Foreign
Nursing Schools v. Free Speech Alliance a/k/a Wilson Martinez
Claim Number: FA0204000109364
PARTIES
Complainant
is Commission on Graduates of Foreign
Nursing Schools, Philadelphia, PA (“Complainant”) represented by John B. Berryhill. Respondent is Free Speech Alliance a/k/a Wilson Martinez, Los Angeles, CA
(“Respondent”) represented by Wilson Martinez.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <cgfns.com>
and <cgfns.net>, registered
with BulkRegister.com.
PANEL
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.
Daniel
B. Banks, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 8, 2002; the Forum received
a hard copy of the
Complaint on April 8, 2002.
On
April 8, 2002, BulkRegister.com confirmed by e-mail to the Forum that the
domain names <cgfns.com> and <cgfns.net> are registered with BulkRegister.com
and that the Respondent is the current registrant of the names. BulkRegister.com has verified that
Respondent is bound by the BulkRegister.com 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 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 29,
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@cgfns.com and postmaster@cgfns.net by e-mail.
A
timely Response was received and determined to be complete on April 29, 2002.
On
April 30, 2002, the parties jointly requested a stay of this proceeding, which
was granted by the Forum on May 1, 2002.
Pursuant
to Complainant’s request, the proceeding was reinstated on May 14, 2002.
On
May 20, 2002, Respondent submitted an “amended response” to the Forum, which
was not in compliance with Forum Supplemental Rule
5.
Complainant
submitted an e-mail to the Forum on May 20, 2002, which did not comply with
Forum Supplemental Rule 7, in response to
Respondent’s “amended response.” Respondent responded with another e-mail on
May 21, 2002, which also failed to comply with Forum Supplemental Rule 7.
The
Panel considered the Respondent's amended response because of the confusion
concerning receipt of the Complaint and attached Exhibits. The Panel did not consider the e-mails of
Complainant and Respondent that did not comply with Forum Supplemental Rule 7.
On May 30, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Daniel B. Banks,
Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant:
Complainant is a non-profit corporation
formed in response to a 1975 decision of the U.S. Department of Health
Education and Welfare
to authorize a private non-profit corporation 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. This exam is known as the
"CGFNS Examination". Passage
of this exam and certification thereof is required for entry into the United
States under 8 CFR 212 of the regulations of
the Immigration and Naturalization
Service. Also, the United States
Department of Labor, under 20 CFR 656.10 requires certification of passage of
the CGFNS Exam as a condition
for issuing labor certification for aliens
seeking employment in the nursing profession.
Complainant has operated a website at
<cgfns.org> which has been registered to Complainant since 1996. At that time, it was considered proper for
non-profit organizations to register only in the ".org" TLD. This website provides information about Complainant's
products and services.
"CGFNS" is used by Complainant as a mark indicating the source
or origin of these services.
Complainant also engages in the sale of study and information materials
under the "CGFNS" mark, as shown in the "cgfns
storefront"
catalog. Complainant advertises and
promotes its services worldwide through the website at <cgfns.org> and
through printed materials
such as brochures and other advertisements. Complainant is well known as the sole and
exclusive source of the "CGFNS Examination" wherein "CGFNS"
serves as
a designator of source or origin.
The disputed domain names
<cgfns.com> and <cgfns.net> each incorporate the Complainant's
CGFNS mark in its entirety. The letters
"CGFNS" have no meaning or significance apart from Complainant's
trademark and thus, the registered second-level
domain names are identical to
the Complainant's mark.
Respondent has no rights or legitimate
interests in the Complainant's mark.
Respondent is not licensed or authorized by Complainant to use the
mark. Until being contacted concerning
this dispute, the domain names were registered to "Advent Home
Health". Both names resolved to a
website at <Domainhouse.com> at which the names were offered for sale on
a "make an offer"
basis.
Domainhouse.com trades in domain names and has been the subject of a
prior dispute under this Policy. As of
April 2, 2002, while Complainant's representative was corresponding with
Respondent, the registrant data was changed to "Free
Speech Alliance"
having an address at 2501 Colorado Ave., Suite G in the Eagle Rock area of Los
Angeles. A declaration from Brett
Fausett and a photograph reveal that the address is occupied by "Good Life
Home Health Services". On
information and belief, "Good Life Home Health Services" is a home
health care agency which likely employs nurses or
home health workers of
foreign origin. By this evidence, it is
clear that Respondent is connected with a health care business of some kind and
therefore is surely aware
of the reputation and significance of the
"CGFNS" mark in the health care profession.
The domain names were registered and are
being used in bad faith. Respondent has
obviously registered both names as a pattern to prevent Complainant from using
them and to offer the names for sale
to Complainant or a competitor. Also, manipulation of the registration data
from Advent Home Health to Free Speech Alliance is evidence of bad faith domain
name registration
and use. The address,
phone number and administrative contact remain the same. It is apparent that there is a connection to
a health care service and that Respondent is familiar with the significance of
the CGFNS
mark in that field.
Domainhouse.com has registered at least one other domain name consisting
of the coined name of a non-profit health organization, namely
<masscare.com>.
B. Respondent:
Respondent is an individual that
provides a bona fide offering of goods and services on the internet through
DomainHouse.com, Inc.,
a global computer network-based domain name
exchange. Respondent registers domain
names for identification of users on a global computer network, develops
websites and hosts the web sites
of others on a computer server for a global
computer network.
Complainant is acting inequitably
and is attempting to use its common law trademark to secure rights beyond those
granted by law and
in a way contrary to the public policy underlying the grant
of a trademark. The fact that someone
has secured a domain name that happens to be, or resembles another party's
trademark is not cause for concern,
absent some real likelihood of confusion in
the relevant market or evidence of dilution of a famous mark. In this case, the domain name holder is not
in competition with the trademark owner and the mark is not shown to be a
"famous"
mark.
Respondent has rights or legitimate
interests to use the domain names at issue.
Respondent has paid registration and renewal fees and had been using the
domain names continuously for almost three years without
objection from
Complainant. The domain names are not
being used as a "trademark or service mark" to identify a source of
goods or services but to identify
a numeric address on Respondent's
website. Respondent bona fide offering
of goods and services is the offering of the domain names for sale and the
hosting of domain names offered
to the public.
The domain names were not registered
in bad faith. It was never intended
that the domain names be offered to Complainant. Respondent was using Advent Home Health in the contact information
because it was the only organization by Respondent existing at
the time the
domain names were registered. Contact
information was immediately changed and the domain names removed from the
database of domain names for sale when Respondent
received the cease and desist
letter from Complainant.
With respect to the registration of
<masscare.com>, this domain name has expired and is available for
registration at the time
of the filing of this Complaint. Respondent has thousands of domain names,
which are mostly generic and common words.
Respondent does not dispute the fact
that the domain names in question are similar to the marks of the Complainant
and that the Complainant
has valid and legitimate rights over their marks. However, Complainant has not acted promptly
and sufficiently to protect its marks.
B. Additional Submissions:
The
amended submission of Respondent was considered and incorporated into the
foregoing paragraph. Subsequent email submissions were not
considered.
FINDINGS:
1 - The disputed domain names are identical or
confusingly similar to Complainant's marks.
2 - The Respondent has
no rights or legitimate interests in the disputed domain names.
3 - The disputed domain
names were registered and used in bad faith.
DISCUSSION:
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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;
(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 trademark rights in the CGFNS mark through continuous and widespread use as
the designator of source or origin of
the CGFNS Examination. See Comm’n on Graduates of Foreign
Nursing Sch. v. Kumar a/k/a Jaikumar, FA 106123 (Nat. Arb. Forum May 9,
2002) (finding that Complainant has enforceable rights in the CGFNS mark
pursuant to Policy ¶
4(a)(i)).
The
disputed domain names are identical to Complainant's CGFNS mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO
Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical
to Complainant’s registered ROBOHELP
trademark, and that the "addition of
.com is not a distinguishing difference").
Rights or Legitimate Interests
Respondent registered the disputed domain
names with knowledge of Complainant’s mark and rights therein, and with the
intent to sell
the domain names for profit.
Such intentions demonstrate
Respondent’s lack of rights and interests in the domain names. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where the Respondent registered the domain
name with the intention of selling
it); see also Cruzeiro
Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding
that rights or legitimate interests do not exist when one holds a domain name
primarily
for the purpose of marketing it to the owner of a corresponding
trademark).
The disputed domain names were registered
nearly three years ago, with no actual use having been made. Respondent’s passive holding of the names
demonstrates its lack of rights or interests therein. See Bloomberg L.P.
v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights
or legitimate interest can be found when Respondent fails to use
disputed
domain names in any way); see also J.
Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum
Sept. 7, 2000) (finding rights or legitimate interests do not exist when one
has made no use of the websites
that are located at the domain names at issue,
other than to sell the domain names for profit).
Registration and Use in Bad Faith
Respondent’s
posted offer to sell the disputed domain names evidences bad faith registration
and use pursuant to Policy ¶ 4(b)(i). See
Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded,
are evidence of bad faith”); see also Booz-Allen & Hamilton Inc. v.
Servability Ltd, D2001-0243 (WIPO
Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer,
rejected Complainant’s nominal offer of
the domain in lieu of greater
consideration).
It
also appears that Respondent registered the two nearly identical domain names
for the purpose of preventing Complainant from obtaining
domain names that
reflect its mark. Complainant contends
that this, along with Respondent’s registration of <masscare.com>
demonstrates a pattern of such conduct
pursuant to Policy ¶ 4(b)(ii). See 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); see also Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain
names which infringe upon
others’ famous and registered trademarks).
It
also appears that Respondent has provided false information to the domain name
registrar, and that such behavior also demonstrates
bad faith under the
Policy. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11,
2000) (finding that providing false or misleading information in connection
with the registration of
the domain name is evidence of bad faith); see also
Video Direct Distrib. Inc. v. Video
Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that
Respondent acted in bad faith by providing incorrect information to the
registrar
regarding the owner of the registered name).
Finally,
it clearly appears from the evidence that Respondent is familiar with the
non-profit health care industry, and that as such,
it was aware of or should have
been aware of Complainant's rights in the CGFNS mark. In fact, there is no significance to the CGFNS letters other than
Complainant's use of them as its mark.
Registration with such actual or constructive knowledge has been held to
be evidence of bad faith. See
Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum apr. 17, 2000)
(finding that evidence of bad faith includes actual or constructive knowledge
of a commonly
known mark at the time of registration).
REVERSE
DOMAIN NAME HIJACKING:
This
panelist, having found in favor of the Complainant, finds that there is no
reverse domain name hijacking in this case.
A decision favoring Complainant necessarily precludes a finding of
reverse domain name hijacking. See
World Wrestling Fed'n Entm't, Inc. v. Ringside Collectibles, D2000-1306
(WIPO Jan. 24, 2001).
DECISION
It is ordered that the disputed domain
names <CGFNS.COM> and <CGFNS.NET> be transferred
to Complainant.
Daniel B.
Banks, Jr., Panelist
Dated: June 12, 2002
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