DECISION

Commission on Graduates of Foreign Nursing Schools v. Techindia Infoway Pvt Ltd.

Claim Number:  FA0303000152122

PARTIES

Complainant is Commission on Graduates of Foreign Nursing Schools, Philadelphia, PA, USA (“Complainant”) represented by John B. Berryhill. Respondent is Techindia Infoway Pvt Ltd., Chennai TN, INDIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cgfnstraining.com>, registered with Network Solutions, Inc.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 26, 2003; the Forum received a hard copy of the Complaint on March 26, 2003.

On March 28, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <cgfnstraining.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 21, 2003 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@cgfnstraining.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.

On April 27, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <cgfnstraining.com> domain name is confusingly similar to Complainant’s CGFNS common law mark.

2. Respondent does not have any rights or legitimate interests in the <cgfnstraining.com> domain name.

3. Respondent registered and used the <cgfnstraining.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Commission on Graduates of Foreign Nursing Schools, is known by the acronym CGFNS. Complainant is a corporate entity founded in response to a 1975 decision by the U.S. Department of Health Education and Welfare that authorized 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. Complainant’s examination is known as the “CGFNS Examination.” Passage of the CGFNS Examination, and certification resulting from such achievement, is required for entry into the United States under 8 Code of Federal Regulations (“C.F.R”)  212 of the Immigration and Naturalization Service regulations, as noted by the Immigration and Naturalization Service in a 1999 Federal Register notice of an amendment to 8 C.F.R. 212:

The Service finds that CGFNS has an established track record in issuing certificates because it has experience in administering the examination that predicted success of foreign-trained educated nurses under the previous H-1A visa category.

Additionally, the U.S. Department of Labor, under 20 C.F.R. 656.10, requires completion of the CGFNS Examination as a condition for issuing labor certification to aliens seeking employment in the nursing profession.

Complainant operates its official website from the <cgfns.com> domain name, which provides information about Complainant’s products and services.

Respondent, Techindia Infoway Pvt Ltd., registered the <cgfnstraining.com> domain name on January 23, 2002. Complainant’s investigation of Respondent reveals that Respondent is currently not using the domain name for any purpose, or in connection with any services or goods. However, Complainant’s “archive copy” of a previous website connected to the disputed domain name indicates that Respondent’s domain name initially forwarded Internet users to a website located at <rscons.com/nurse_requirements.htm>. The website prominently used the term “CGFNS’ in its title and elsewhere in the content on the website. Text on the website suggests, “If you are a foreign nurse seeking employment in the United States PLEASE CONTACT US.”

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 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 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 Respondent 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 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 rights in the CGFNS common law mark through continuous use of the mark in connection with its foreign nurse accreditation exams since at least 1975. The Policy does not require that Complainant’s mark be registered with a government authority for protectable rights to exist, especially where there is evidence indicating that Complainant’s mark has acquired significant secondary source identification. The Panel finds that Complainant has provided sufficient evidence in order to support a finding of common law rights in the CGFNS mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000) (The ICANN dispute resolution 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). 

Respondent’s <cgfnstraining.com> domain name is confusingly similar to Complainant’s CGFNS mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and merely adds the word “training,” which describes Complainant’s specialty service. Respondent’s domain name conveys the impression that it is an online presence or representation of Complainant. The CGFNS acronym has no meaning or significance apart from Complainant’s trademark, and the presence of an additional term fails to alter the impression that Respondent’s domain name is confusingly similar to Complainant’s mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”).

Additionally, because top-level domains are a required feature in a domain name registration, their presence is inconsequential when determining “confusing similarity” or “identicality” under the Policy. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not respond to Complainant’s submission, thereby failing to fulfill its burden of demonstrating rights or legitimate interests in the subject domain name. Respondent’s failure to submit a Response allows all reasonable inferences made by Complainant to be regarded as true, unless clearly contradicted by the evidence. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Moreover, Respondent’s failure to submit evidence of circumstances that may support a finding of rights or legitimate interests in the disputed domain name corroborates Complainant’s assertions that Respondent has none. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

Respondent is not currently using the domain name. However, uncontested circumstances indicate that Respondent has previously used the <cgfnstraining.com> domain name in connection with a commercial website that infringed on Complainant’s services. Respondent’s initial website made unauthorized use of Complainant’s CGFNS mark in its content, and suggested, “If you are a foreign nurse seeking employment in the United States PLEASE CONTACT US.” Respondent’s opportunistic use of Complainant’s CGFNS mark in its domain name to divert Internet users to its commercial website fails to establish rights in the domain name under Policy ¶¶ 4(c)(i) or (iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

No evidence before the Panel suggests that Respondent is commonly known by the <cgfnstraining.com> domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS administrative contact is recorded as “R, kumar.” Additionally, Respondent’s initial purpose for the subject domain name was to redirect users to another URL, circumstances that suggest Respondent lacks rights in the domain name under the Policy. See  Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.  

 

Registration and Use in Bad Faith

Policy paragraph 4(b) is a non-exhaustive listing of bad faith criteria. When deciding whether Respondent registered or used the domain name in bad faith it is proper for the Panel to consider the “totality of circumstances” surrounding the dispute. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy do not constitute an exhaustive listing of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Circumstances suggest Respondent had knowledge of Complainant’s rights in the CGFNS mark prior to its registration of the infringing domain name. Specifically, Respondent’s <cgfnstraining.com> domain name was selected for conveying the impression that Respondent’s website was endorsed or affiliated with Complainant. Respondent’s registration of the subject domain name, despite knowledge of Complainant’s rights, evidences bad faith registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Respondent appears to have derived commercial gain by offering its purported training service under the guise of Complainant’s CGFNS mark and accreditation. Therefore, evidence indicates Respondent has intentionally attempted to attract Internet users to its website, for commercial gain, by opportunistically using Complainant’s mark in the domain name. Such actions constitute bad faith use under the Policy. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

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

DECISION

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

Accordingly, it is Ordered that the <cgfnstraining.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch , Panelist

Dated:  May 6, 2003

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