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Generic Top Level Domain Name (gTLD) Decisions |
Institute of Certified Management
Accountants and Institute of Management Accountants
v. Michael Schemmann
Claim Number: FA0403000245958
PARTIES
Complainants
are Institute of Certified Management
Accountants and Institute of Management
Accountants (jointly referred to as “Complainants”), represented by John W. Hazard Jr., of Law Offices of Webster, Chamberlain & Bean, 1747 Pennsylvania Avenue NW,
Washington, DC 20006. Respondent is Michael Schemmann (“Respondent”), Q-4209 ABAC HuaMak,
Bangkok 10240, Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <iicma.com>,
registered with EasySpace and is
hereafter referred to as “the disputed domain name.”
PANEL
The
undersigned, David H Tatham, 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 16, 2004; pursuant to the
Uniform Domain Name Dispute
Resolution Policy (“the Policy”) of the Internet Corporation for Assigned Names
and Numbers (“ICANN”)
and the Rules of the Policy (“the Rules”). The Forum
received a hard copy of the Complaint on March 19, 2004.
On
March 26, 2004, EasySpace confirmed by e-mail to the Forum that the domain name
<iicma.com> is registered with
EasySpace and that the Respondent is the current registrant of the name. EasySpace has verified that Respondent is
bound by the EasySpace registration agreement and has thereby agreed to resolve
domain-name
disputes brought by third parties in accordance with the Policy.
On
March 26, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 15,
2004 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@iicma.com by e-mail.
A
timely Response was received and determined to be complete on April 9, 2004.
A
timely Additional Submission was received from Complainants and determined to
be complete on April 14, 2004.
On April 21, 2004, pursuant to Complainants’ request to
have the dispute decided by a single-member
Panel, the Forum appointed the undersigned,
David H Tatham, as Panelist.
On May 7, 2004 owing to exceptional circumstances, the
time period within which the Panel was required to render its Decision was
extended to May 14, 2004
RELIEF SOUGHT
Complainants
request that the domain name be transferred from Respondent to Complainants.
FACTUAL BACKGROUND
A. Complainants
Complainants
have supplied copies of a number of trademarks, some of them registered at the
United States Patent and Trademark Office
(“USPTO”) and some of them pending.
All of them are owned by one or other of the two Complainants.
Registered
CMA: No. 2,066,333 for “preparing, administering,
and scoring of standardized tests in the field of financial management,” in
International
Class 42.
INSTITUTE OF CERTIFIED MANAGEMENT ACCOUNTANTS 1972
CMA and Design: No. 1,895,368 for “educational services, namely providing
instruction
in the field of accounting; preparing, administering and scoring
tests of the skills of management accountants,” in International
Class 41.
CMA (Stylized): No. 1,795,312 for
“preparing, administrating, and scoring tests of the skills of management
accountants,” in International Class 42.
CFM.CMA INSTITUTE OF MANAGEMENT ACCOUNTANTS and
Design: No. 2,771,907 for “educational programs in the financial management
field,
namely, educational research, arranging and conducting educational
conferences, educational demonstrations, and educational testing,”
in
International Class 41 and association services, namely, promoting the
interests of management accountants; promoting public awareness
of the need for
management accountants and of the need for educational programs in the fields
of management accounting and financial
management,” in International Class 42.
Pending
CFM.CMA IMA INSTITUTE OF MANAGEMENT ACCOUNTANTS and
Design: Serial Nos. 76/488394 and
76/488395 for “association services, namely promoting the interests of
management accountants; promoting
public awareness of the need for management
accountants and of the need for educational programs in the fields of
management accounting
and financial management,” in International Class 35 and
“educational programs in the financial management field, namely educational
research, arranging and conducting educational conferences, educational
demonstrations and educational testing,” in International
Class 41.
CFM CMA IMA and Design: Serial No. 75/584773 for
“educational services, namely, conducting seminars in the field of financial
and
accounting management,” in International Class 41 and “association
services, namely, promoting the interests of financial and accounting
management,” in International Class 42.
CFM.CMA and Design: Serial No. 75/410235 for
“educational programs in the financial management field, namely, educational
research,
arranging and conducting educational conferences, educational
demonstrations, and educational testing,” in International Class 41
and
“association services, namely, promoting the interests of management
accountants; promoting public awareness of the need for
management accountants
and of the need for educational programs in the fields of management accounting
and financial management,”
in International Class 42.
Complainants also claim rights in the unregistered
common law trademark ICMA, which, they allege, has been used in connection with
educational services and a testing/credentialing program testing the skills of
management accountants.
The first
Complainant, Institute of Certified Management Accountants (“ICMA”), is a
wholly controlled subsidiary of the second Complainant,
Institute of Management
Accountants (“IMA”). Both ICMA and IMA
are non‑profit
organizations dedicated to promoting the interests of management accountants
and financial management professionals
as well as providing educational,
testing, certification and professional development programs for management
accountants and financial
management professionals. They conduct business throughout
the United States and worldwide and utilize the marks CMA, CERTIFIED MANAGEMENT
ACCOUNTANT, and ICMA
as service marks throughout the United States and
worldwide. Complainants have expended
considerable effort and expense in offering quality services under these marks
and promoting these services
via the Internet and print advertisements. At least as early as 1972,
Complainants first began using the marks CMA and CERTIFIED MANAGEMENT
ACCOUNTANT generally and in interstate
commerce. Since then, Complainants have administered a credentialing and
certification program in financial management and management accounting. To date, many thousands of financial
management and accounting professionals worldwide have, upon successful
completion of the program,
been authorized by Complainants to use the
designation "CMA" and “CERTIFIED MANAGEMENT ACCOUNTANT.”
B. Respondent
Respondent
did not supply any factual background about himself, but it can be gleaned from
one of the Exhibits to his Response, that
he is the President of the
International Institute of Management Accountants, Inc., which was established
on or about February 13,
2002 as an educational course. It was incorporated in
the State of Washington with its only nexus of operations located in the city
of Bangkok, in the Kingdom of Thailand. This nexus consists of live
instructional classes located and being taught only in Bangkok,
Thailand.
PARTIES’ CONTENTIONS
Complainants contend as follows:
1. That the disputed domain name wholly incorporates
Complainants’ marks CMA and ICMA and that the mere addition of two instances of
the letter “I” by Respondent does very little to vary the impression given by
its dominant feature i.e. “CMA,” especially because
of the connotation of the
letter “I” on the World Wide Web as standing for “Internet” or
“Interactive.” The meaning of the
letter “I” in Respondent’s domain name becomes readily apparent to visitors to
Respondent’s website as standing
for “International” and “Institute.”
2. That Respondent is using the disputed
domain name as more than a mere domain name, but as an indicator of
source. Since 1972, Complainants have
been administering the CMA (CERTIFIED MANAGEMENT ACCOUNTANT) test and
credentialing program for management
accountants and financial
professionals. Respondent has knowledge
of this fact (along with knowledge of Complainants’ registered trademarks), yet
launched his own CMA program
under the aegis of the International Institute of
Certified Management Accountants (IICMA), an organization of which Respondent
is
the moving, conscious, and dominant force, in an effort to unfairly profit
on the goodwill and reputation of Complainants’ CMA program. The website at the disputed domain name
intentionally misrepresents that both Respondent and Complainants are
responsible for the
administration of the legitimate CMA program stating “the
CMAs are organized through the IMA (domestic and in part international)
and the
IICMA (growing in importance in Asia and Europe).” Furthermore, Respondent more or less concedes that he established
his CMA program to compete with Complainants’ program and that the
Complainants
“would not formally recognize the IICMA by offering membership by
reciprocity.”
3. That Respondent is not making a
legitimate noncommercial or fair use of the disputed domain name. His intent, as clearly demonstrated by the
information on the website, is solely for commercial gain and to misleadingly
divert consumers
from Complainants.
Respondent does not have any legitimate right in and to the designation
“IICMA.” He has not registered the
designation in the United States Patent and Trademark Office, nor has he made
any attempt, to Complainants’
belief and knowledge, to register the IICMA designation
in any other regulatory body responsible for the registration of intellectual
property or business and trade names.
4. That Respondent is showing bad faith in
his registration of the disputed domain name because it was registered
primarily for the purpose
of disrupting the business of a competitor (i.e.
Complainants’) in contravention of paragraph 4(b)(iii) of the Policy. Respondent is a “competitor for purposes of the [Uniform] Policy . . . [because they
are] a person or entity in competition with [Complainant] for
the provision of
goods or services, and not merely [a] person or entity with an interest
oppositional to that of a mark holder.”
Britannia Building Soc’y v.
Britannia Fraud Prevention,
D2001-0505 (WIPO July 12, 2001). As were to the parties in the case of Schultz v. Leo, FA 94359 (Nat. Arb.
Forum Apr. 12, 2000), both Complainants and the Respondent are engaged in the
business of providing a testing
and credentialing program for management
accountants. Like the Respondent in the
Schultz case, Respondent registered the disputed name domain name in an effort
to disrupt Complainants’
business and divert consumers from Complainants’
testing and credentialing program.
5. That by using the disputed domain name,
Respondent intentionally attempts to attract, for commercial gain, Internet
users to Respondent’s
website and other on-line locations, by creating a
likelihood of confusion with the Complainants’ marks as to the source,
sponsorship,
affiliation, or endorsement of Respondent’s web site or location
or of a product or service on Respondent’s website or location in
contravention
of Policy ¶ 4(b)(iv). Upon typing in
the URL <iicma.com>, the user is directed to Respondent’s web page
which advertises Respondent’s CMA review course and provides a link to the June
2003
Edition of Strategic Finance, a print and online publication owned by the
Complainants. The wholesale
incorporation of Complainants’ CMA and ICMA marks into the domain name along
with the links to Complainants’ online
magazine and the use of Complainants’
service marks on the website create a likelihood of confusion as to the source
of the products
and services on Respondent’s website. These factors would also lead to the false assumption of the
existence of a commercial relationship between Complainants and
Respondent. Accordingly, there is a
strong inference that Respondent is deliberately attempting to attract and
siphon Internet users, who should
rightly be visiting Complainants’ website and
purchasing Complainants’ testing and credentialing services, for commercial gain.
6. That Respondent cannot claim that it is
making a bona fide use of a mark in connection with his services because he is
asserting a
relationship between Respondent and Claimants. There cannot be a defense of bona fide use
in connection with goods and/or services if a false connection is
asserted.
Respondent
filed a long, rambling, and repetitive Response, liberally illustrated with
frequent references to many UDRP and US court
decisions and with quotations
from learned articles. It also contained several examples of confusion between
the names ‘Respondent’
and ‘Complainant’, and a number of misspellings.
In
his response, Respondent makes, basically, the following contentions:
1. Laches
Complainants’ have either been, either
utterly disinterested, or recklessly negligent, in asserting their legal rights
claimed against
Respondent’s domain name and website with an unreasonable delay
of over two years, so that their very recent complaint is governed
by the
equitable doctrine of laches leading to estoppel leaving their unproven and
speculative losses lie where they have fallen,
referring to Saratoga Vichy Spring Co., Inc. v. Lehman,
[1980] USCA2 508; 625 F.2d 1037, 1041-42 (2d Cir. 1980).
Respondent goes on to say the following:
In all
justice and fairness, the Respondent cannot be expected to make good for the
Complainants’ disinterest and reckless negligence,
to loose (sic) his
corporation’s domain name and website which he has maintained for such a long
period of time, building first a
small and now growing reputation in Asia with
between 300 to 1,000 clicks per day on the disputed domain, concluding and
inviting
university cooperation agreements, student awareness, industry
recognition, testing and recognizing students and practitioners as
‘International
Certified Management Accountants.’
By means of the Draconian punishment requested by
the Complainants, for no wrong committed on Respondent’s part, Complainants
would
receive the entire benefits of the Respondent’s work which is largely
conducted on the world-wide-web, for no work, no contribution,
actually no
prior interest on Complainants’ part, except this one very recent complaint and
the small filing and arbitration fee.
2. That the earlier rights which Complainants have claimed are not valid
trademarks, service marks, or trade names
In this connection, Respondent makes the
following allegations:
a.
CMA is not indicated as being a trademark with either of the
usual symbols of TM or ® in any of the material submitted by the Complainants
in this dispute or in the material submitted in the lawsuit filed on February
13, 2004 by Complainants against Respondent for trademark
and copyright
infringement in the USA. Inst. of
Certified Mgmt. Accountants, Inc. v. Int’l Inst. of Certified Management
Accountants, Inc. No. C04-0321P (D. Wash. filed April 2, 2004) [hereinafter “the Legal
Proceedings”]; See, infra
Discussion and Findings.
b.
CERTIFIED MANAGEMENT ACCOUNTANT is not a trade name or
service mark in any of the Complainants’ submitted Exhibits; many institutes
use it as part of the current language worldwide.
c.
Trademark registration No. 1,895,368 for the mark INSTITUTE
OF CERTIFIED MANAGEMENT ACCOUNTANTS 1972 CMA contains the following disclaimer
“No claim is made to the exclusive right to use ‘INSTITUTE OF CERTIFIED
MANAGEMENT ACCOUNTANTS’ apart from the mark as shown.”
d.
ICMA is not a registered trademark. Respondent notes that
this is admitted by Complainants in their Complaint where they claim ‘common
law’ use. However he contends that their accompanying Exhibit 10 provides no
evidence thereof and that Complainants have submitted
no legal precedent in
support of this claim.
Respondent
further denies that ICMA is a trade name of Complainants, and he alleges that
the ICMA name only shows up on a Google search
(which is not exhibited) for the
first time on page 7, after many other entities also using the ICMA name.
Therefore he contends
that Complainants’ claim of owning and operating the
unregistered trade name ICMA may only be true because the name ICMA is part
of
the current language and so cannot be registered. As a result, Complainants are
not entitled to claim confusion with the disputed
domain name.
He also contends that in fact ICMA is the unregistered name
used by the “Institute of Certified Management Accountants” in Caulfield,
Australia, of whom Respondent is a “Certified Member.”
3. That complainants’ trademarks are neither identical nor confusingly
similar to the disputed domain name
Respondent denies that Complainants use the three characters
CMA as a trade name or service mark since neither on its website nor
in other
of Complainants’ literature where the characters “CMA” are used is there any
notice of the symbols TM or ® anywhere.
CERTIFIED MANAGEMENT ACCOUNTANT is not a trade name or
service mark in any of Complainants’ submitted Exhibits; it is used by many
institutes and is customary as part of the current language worldwide. In
support of this allegation, Respondent filed a copy of
an Affidavit which he
filed in the Legal Proceedings. In this Affidavit, Respondent refers to use of
CMA by the following:
Certified Institute of Management Accountants (Australia)
Certified Management Accountants of Ontario (Canada)
Certified Management Accountants of Alberta (Canada)
Certified Management Accountants of British Columbia
(Canada)
Certified Management Accountants of Nova Scotia (Canada)
CMA-Canada (Canada)
Society of Certified Management Accountants of Sri Lanka
(Sri Lanka)
A Russian organisation using, inter alia, the abbreviations CPA, CMA, CFM, and CIA on its website
(Russia)
IPMI Business School (Indonesia)
Queen’s Executive MBA Ottawa Program (Canada)
Langara College (Canada)
Respondent further contends that his use of CMA is
restricted to “International CMA” on his website.
Respondent denies that the disputed domain name is identical
or confusingly similar to any of the Complainants’ trademarks, trade
names or
service marks reproduced in the Complaint, as these names or marks are
exclusively in the form of logos between double-bars
or a globe that have no
resemblance, let alone identical or confusing similarity, with Respondent’s
domain name <iicma.com>.
The general rule does not apply which stipulates
that, when a domain name wholly incorporates a complainant’s mark and only adds
a generic word, that is
sufficient to establish confusing similarity for purposes of the Policy. Confusion may only occur when the generic word added by
Respondent is descriptive of the Complainant’s goods or services marketed
in
relation to the trademark, which in the present case it is not.
In this context, Respondent refers to Volvo
Trademark Holding AB v. Lost in Spac, SA, WIPO Case No. D2002-0445 (Aug. 1,
2002); Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo,
D2001-0020 (WIPO Mar. 22, 2001); and Arthur Guinness Son & Co.
(Dublin) Limited v. Tim Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and
contends that in the Volvo case, the disputed domain name
<volvoclub.com> wholly incorporated the trade name VOLVO; that in the
first Guinness
case, the disputed domain name <guinnessbeer.com> wholly
incorporated the trade name “guinness”; and that in the second Guinness
case,
the disputed domain names <guinnessguide.com>,
<guinnessirishstout.com>, <guinnesspubsoftheworld.com>,
<guinnessirishstout.com>,
<guinnesstours.com>,
<guinnessjazzfestival.com>, and
<guinnessirishpubs.com> wholly incorporated the trade name GUINNESS.
In the present case, the disputed domain name <iicma.com>
does not consist of words but of five characters that cannot be confusingly
similar to the trademark “cma.” The two characters “ii”
in from of “cma” are
not a generic word or words. A set of characters cannot rationally be divided
into components or parts, such
as the word “volvoclub” above which can
rationally be divided into “volvo” and “club.”
Even if similarity were to be established, wholly
incorporating the mark in a domain name is not, of itself, enough to satisfy
Policy
¶ 4(a)(i), which stipulates that the disputed domain must be “identical
or confusingly similar” (emphasis added).
Complainants have failed to present any actual
evidence of confusion; likelihood of confusion is not enough for Respondent to
suffer
the draconian punishment of losing his domain name. In this context,
Respondent refers to the <seiko-shop.co.uk> and <spoonwatchshop.co.uk>
decision. Seiko UK Ltd. v. Designer Time/Wanderweb, DRS 00248 (Nominet
UK Dispute Resolution Serv. Appeal Div., Nov. 26, 2002). He also refers to a
Legal & General Group Plc domain
name dispute in which the majority panel
addressed the subject of “confusion” in a “complaint site”, and declined to
transfer the
domain name to the Complainant. He also referred to, and quoted
from at length, an article by Miguel C.
Danielson (2001) entitled “Confusion, Illusion, and the Death of Trademark Law
in Domain Name Disputes.” 6 J.
Tech. L. & Poly. 220, at http://journal.law.ufl.edu/
~techlaw/vol6/Danielson.pdf.
Moreover, the Complainant’s word mark CMA, consisting of
only three characters, is extremely short. Extremely short domain names,
by
their brevity, provoke unintentional incorporation into other domain names, and
if it were to be the case that such names are
confusingly similar to earlier
trademarks, it would restrict and block a multitude of domain name choices that
are already in short
supply.
As a result, if the rule against wholly incorporating a
trademark alone were to establish a “confusing similarity” and if applied
blindly to a set of single characters (i.e., Respondent’s domain
“iicma” seen
as “ii” added to “cma”), the restriction would be overbroad, and potentially
more harmful than helpful to the public
by monopolizing any and all variations
of “CMA” (e.g, arcmain, cardiacmachine,
lilacman, placmat, sincman, abcmanager), simply
because they have other characters in front or behind the it, severely limiting
the use of already scarce domain names.
Such a result cannot be the purpose and intent of the rule
against a domain name’s wholly incorporating a complainant’s mark as is
alleged
by Complainants.
A search of the U.S. Patent and Trademark Office’s
trademarks for CMA marks apparently identifies 97 such listings, but no
evidence
of this was filed.
Complainants have failed to show that
they are known as “CMA.” Complainant’s website is found under <imanet.org> and there can be no confusion with the
Respondent’s name <iicma.com>.
The acronym CMA is a generic mark that
describes the professional certification one reaches after taking and passing
an exam for management
accountants. It
is similar the acronym CPA (which stands for certified public accountant). It is also generic in that the acronym “CMA”
is used by many different entities that provide similar exam review education
courses
in Australia, Canada, Sri Lanka, and many more countries. They all use some variation including the
acronym CMA in their title. Plaintiffs
are unfairly targeting Respondent as the only user of the CMA acronym.
In conclusion,
Respondent draws the Panel’s attention to Complainants’ U.S. Trademark
Registration No. 2,066,333 for the Word Mark:
“CMA” which is registered for
“preparing, administering, and scoring of standardized tests in the field of
financial management.” However
Respondent’s corporate name IICMA and its activities are in the field of
“management accounting,” which is separate and distinct
from financial
management.
Also, U.S.
Trademark Registration No. 2,771,907 is the Service Mark CFM.CMA INSTITUTE OF
MANAGEMENT ACCOUNTANTS, which shows a globe
surrounded by the letters “CFM” and
“CMA” and the words “Institute of Management Accountants.” The Goods and Services for this mark are
“educational programs in the financial management field” which is separate and
distinct from
the Respondent’s activity of “management accounting” as depicted
in its name International Institute of Certified Management Accountants
Incorporated, which is protected under the laws of the US State of
Washington.
4. That Respondent has legitimate rights to the disputed domain name
Respondent has a right to the use of his corporation’s legal
name “International Institute of Certified Management Accountants” and
to use
that name in the domain name <iicma.com> in the form of precise
abbreviations.
The disputed domain name or a name
corresponding to the domain name is used in connection with a bona fide
offering of goods or services
e.g. through its “University Cooperation
Agreements” which are now offered in Asia and Europe, as well as its two week
intensive
courses. None of these activities is carried out by Complainants.
Respondent,
through his International Institute of Certified Management Accountants (known
by its precise acronym IICMA), has been
commonly known by the domain name, and
is using the IICMA acronym on his website in the form of a logo, although
Respondent has not
acquired trademark or service mark rights under IICMA. This
website receives between 300-1000 hits per day.
Respondent has a right and a legitimate
interest in the domain name as he is the President and a founder and major
shareholder of
the International Institute of Certified Management Accountants,
and purchased the name and opened its website from EasySpace on
or about
January 25, 2002. Furthermore, this corporation was incorporated in the State
of Washington on or about February 13, 2002.
As noted above, there are many other CMA
Institutes in the world.
Respondent’s Institute is truly
international in character, serving a need outside the United States, and it is
distinguished from
Complainants’ institute, in that Respondent’s IICMA
accredits foreign university degrees without prior evaluation (Complainants
require
evaluation). The Respondent’s CMA requires a foreign language test
(Complainants only require English), entirely by multiple choice
questions
(Complainants require an essay test).
Contrary to Complainants’ arguments that
Respondent “is using the <iicma.com> domain name as more than a
mere domain name, but as an indicator of source” Complainants’ services are
different from those of the
IICMA.
Respondent is making a legitimate fair
use of the disputed domain name, without intent for commercial gain, to
misleadingly divert
consumers, or to tarnish the trademark or service marks of
Complainants.
Even Priscilla S Payne, Complainant’s own
vice president of testing, in her declaration filed during the Legal
Proceedings, has stated
more than once that the substance of IICMA’s CMA
program is different from the substance of the plaintiff’s program.
In registering the disputed domain name
and opening his website Respondent was using the letters of his corporation
which was allowed
by the State of Washington and he claims this has not been
disputed by Complainants.
Complainants do not compete with the
education classes of Respondent’s IICMA in Bangkok, Thailand. Respondent’s
Institute has acted
in good faith by going to extreme measures to avoid any
possibility of confusion between the two parties’ websites and service marks
by
providing important notices and disclosures on its website.
Because there is no likelihood of
confusion in assessing the qualifications between the two party’s services, the
public is not being
deceived. The
public’s interests are not served in allowing the plaintiff to use this forum as
a sword that may swipe at Respondent’s ability
to conduct an education
institution for purposes of gaining a future competitive advantage over
Respondent.
Both Respondent and Complainants service
customers in the accounting profession but operate in different markets and are
using different
methods. Respondent has even consistently refused educational
training applications from U.S. and Canadian residents, and there is
no
likelihood that any of Complainants’ members will ever switch to Respondent’s
education program, nor would he accept such enrollees.
Contrary to Complainant’s assertions,
Respondent has not exhibited any intent to select a mark of Complainants. In fact, Respondent has shown much
professional courtesy and respect for Complainants’ marks and has specifically
given notices on
the disputed website that he has no affiliation with
Complainants. This was done to avoid
confusing the public and to ensure public disclosure and distinguish between
Complainants’ and Respondent’s
services.
As a further good faith precaution to
avoid confusion, the Respondent’s second webpage states in column 1:
The ultimate career goal of the International CMA –
the International Certified Management Accountant – is CFO Chief Financial
Officer.
There are many institutes worldwide ready to help you accomplish that
goal. In the United States of America, the IMA Institute of
Management
Accountants in Montvale, New Jersey, is the dominant institute… CMA-Canada…
Other institutes operation in Australia, the
United Kingdom, India, Pakistan,
and Sri Lanka.
Respondent has posted other such
statements on the disputed website. For example, the website states:
The IICMA will
recognize CMS’s from other institutes … provided they are not resident in North
America where the CMA designation is
regulated by provincial law as in Canada,
or in the United States, out of respect of the IMA, which is the long
established and most
active professional organization.
And
further:
Important
Notice: As a matter of professional courtesy and respect, the IICMA does not
intend to operate (except by invitation or
agreement) let alone compete in
countries where national Management Accountant Institutes are already active
and have a strong presence,
e.g., in Australia, the British Isles, North
America, and the Indian subcontinent. The IICMA, incorporated under the laws of
Washington,
has no affiliation with the IMA incorporated in New Jersey, USA.
6. Other Assertions and Allegations
Respondent denies that Complainants’
EXHIBIT 12 (except for page 1) is/was found on the disputed website, but rather
comes from the
Assumption University of Thailand’s e-Learning website <ABACmba.com>.
Complainants
filed an equally long Additional Submission, of which the following are the
salient points.
The
doctrine of laches is not applicable to this proceeding and Respondent’s
arguments to the contrary have no basis in law or fact. There is no express time bar or “statute of
limitations” in the Policy.
Even
if the doctrine of laches were applicable in the UDRP process, it does not
apply to Complainants’ conduct. The
underlying policy advanced by the laches defense is that the law rewards the
vigilant and not those who procrastinate in enforcing
their rights. In a traditional trademark case, in order to
demonstrate the equitable defense of laches, one must show:
(1) that the plaintiff had actual of
constructive notice of adverse use;
(2) there was an inexcusable delay in
enforcing rights; and
(3) the delay is somehow prejudicial.
Complainants
did not delay in acting when they received notice of Respondent’s registration
of the disputed domain name. In January
2004, a member of the first Complainant discovered the Internet web site
located at <iicma.com> and
brought this to the attention of Priscilla S. Payne, Vice President of
Certifications and Examinations for the first Complainant.
A lawsuit was filed
in the United States District Court for the Western District of Washington only
a few weeks later on February
13, 2004. Complainants did not want to delay its
prosecution of this matter for fear that the International Institute of
Certified
Management Accountants was set up in the United States as a mere
“shell corporation” and would move its entire operation to Thailand
to evade
legal accountability in the United States as soon as it received any notice
that its activities were discovered by Complainants. Indeed, this was actually admitted by Respondent in the copy of
the Affidavit that he filed as an attachment to the Response. Complainants’
fears were subsequently confirmed when Respondent took various actions in an
effort to cut U.S. ties immediately after being served
with the U.S. District
Court Complaint.
Complainants
filed a UDRP Complaint some 3 weeks after the lawsuit, on March 4, 2004, but
this Complaint, FA 244075, was dismissed
without prejudice, but amended and
re-filed as the Complaint in the instant proceedings on March 16, 2004.
A
passage of 4 to 6 weeks from the time Complainants discovered Respondent’s registration
of the disputed domain name to the time
Complainants filed this present action
could hardly be considered as the type of delay that would warrant a finding of
laches.
2. Complainants
are the Owners of Valid Trademarks
Respondent states that CMA is not
a trade name or a service mark because it does not appear on Complainant’s web
site with either
a “TM” or “®” symbol. He also attacks the validity of
Complainants’ CMA and ICMA trademarks by arguing that the former is generic
and
the latter is unprotectable because it is not registered with the USPTO.
First, Complainants do use the ®
symbol in connection with the CMA mark, and they refer to their website at <imanet.org>, a copy of
which was exhibited to the Complaint.
Furthermore, Complainants own United States trademark registrations for
its CMA marks and according to paragraph 7b of the Lanham
Act, Certificates of registration are “prima facie evidence of the validity of
the registered mark and of the registration of the mark, of the registrant’s
ownership of
the mark, and of the registrant’s exclusive right to use the
registered mark in commerce on or in connection with the goods or services
specified in the certificate, subject to any conditions or limitations stated
in the certificate.” 15 U.S.C. § 1057(b) (2004). Registration
on the Principal Register at the USPTO serves as constructive notice of
Complainants’ claim to the CMA mark and the use
of a “TM” or “®” notice symbol
is immaterial. It cannot be said that Complainants do not use the CMA mark as
an indicator of source. First, federal
registration of this mark constitutes prima facie evidence of use, and
secondly, the use of the CMA mark on Complainant’s
web site suggests otherwise.
As to the ICMA mark, Complainants
claim common law trademark rights for this particular mark, which it has been
using since 1972,
and Complainants quote from that bible of US trademark law
and practice, McCarthy on Trademarks & Unfair
Competition: “Apart from the concept of constructive
use, it is not registration, but only actual use of a designation as a mark
that creates rights
and priorities over others.” and “At common law, ownership
of a trademark or trade dress rights . . . is obtained by actual use of
a
symbol to identify the goods and services of one seller and distinguish them
from those offered by others.” J.
Thomas McCarthy, 2 McCarthy on Trademarks
& Unfair Competition 16:18
(4th ed. 2004).
Complainants contend that
Respondent did not come across the ICMA and CMA marks by mere happenstance but,
being in the same sphere
of business as Complainants, and with the intent to
divert customers away from Complainants unfairly, Respondent incorporated the
CMA and ICMA marks into the disputed domain name. Moreover he did so with
actual and constructive notice of Complainants’ claims
to the CMA and ICMA
marks, and even acknowledges as much on his website:
The
CMA Certified Management Accountant designation] was created by way of an
examination first offered in or about 1972 by the National
Association of Cost
Accountants (founded in 1919) who are presently known as the IMA Institute of
Management Accountants of Montvale,
New Jersey.
Complainants point out, in this connection, that The
National Association of Cost Accountants became the Institute of Certified
Management
Accountants (“ICMA”) in 1972.
Respondent’s argument that CMA is
a generic term and may thus be freely incorporated into his domain name is off
base. Respondent specifically
acknowledged that the CMA mark and program was created by the Complainants’
predecessor. Complainants’ CMA mark is
not generic because it does not refer generally to a service, but rather refers
to a particular brand of
services, i.e. Complainants’ CMA educational and
testing services. Complainants have
further cemented their connection with the CMA mark as a result of their
marketing efforts and extensive use for
more than 30 years. Currently, more
than 25,751 accountants and financial professionals have successfully completed
Complainants’
CMA program.
Lastly, Respondent’s argument
that the CMA mark is generic because it is used by others does not have any
merit. The Australian group referred to
by Respondent is a small organization that does not offer an independent CMA
certification program,
but has a membership category called “Certified
Management Accountant” that is based upon years in the field. In fact, because of its small size, this
Australian organization purchases Complainants’ monthly journal for
distribution to its membership.
Furthermore, the groups referred to by Respondent appear to be chapters
or affiliates of CMA Canada, a respected organization with
whom Complainants
have had a long working relationship.
3. Respondent and
Complainants are in Same Sphere of Business
Respondent and Complainants are
competitors. Respondent, in bad faith,
intentionally selected and currently uses the disputed domain name in an
attempt to attract, for commercial
gain, Internet users to its web site and
thereby creates a likelihood of confusion with the Complainants’ marks as to
the source,
sponsorship, affiliation, or endorsement of Respondent’s web site
and/or products and services on Respondent’s web site. Respondent’s assertions that no confusion
exists because the parties operate in different business spheres are erroneous. In particular, Respondent attempts to
mislead the Panel by referring to only one of Complainants’ trademark
registrations to support
its claim that the parties services differ because
Respondent services the field of “management accounting” while Complainants
service
the field of “financial management.”
There is no such distinction.
What Respondent does not
acknowledge is Complainants’ trademark registrations:
a. No. 1,795,312
for CMA (stylized) for “preparing, administering, and scoring tests of the
skills of management accountants;”
b. No. 1,895,368
for CMA INSTITUTE OF CERTIFIED MANAGEMENT ACCOUNTANTS 1972 and design for
“educational services, namely providing instruction
in the field of accounting;
preparing, administering and scoring tests of the skills of management
accountants;” and
c. No. 2,771,907
for CFM, CMA INSTITUTE OF MANAGEMENT ACCOUNTANTS and design for amongst other
services, “association services, namely
promoting the interest of management
accountants and of the need for educational programs in the fields of management
accounting and financial management” (emphasis in original).
It is also clear, from visiting
Complainants’ website, that Complainants offer educational programs and provide
association services
geared towards management accountants. Lastly, by virtue of Complainants’ corporate
names, i.e., Institute of Certified Management Accountants and Institute
of Management
Accountants, it is abundantly clear that Complainants function in the field of
“management accounting” (emphasis in original).
Respondent’s sole motivation for
selecting the disputed domain name was a bad faith attempt to attract, for
commercial gain, management
accountants seeking to complete the CMA program – a
program proprietary to Complainants.
4.
Respondent
is Not Acting in Good Faith.
Respondent’s
protestations of good faith merely demonstrate that he had actual knowledge of
Complainants and their marks when he registered
the disputed domain name and
began to promote his own CMA program on the website associated with the domain
name. Any alleged “notices and
disclosures” by Respondent do not negate a likelihood of confusion and bad
faith intent in registering the
disputed domain name. In fact, the need for such “notices and disclosures” only bolster
the fact that confusion is likely.
Complainants
also note that Respondent’s “notice” purporting to disclaim any affiliation
with Complainants appears at the very bottom
of Respondent’s home page in much
smaller type than the other information on the web site. The printout supplied
as part of the Response
is of a very recent re-design of Respondent’s home page
and Complainants allege that when these proceedings were initiated,
Respondent’s
home page was the one depicted in the printout submitted as
Exhibit 12 to the Complaint. In an
effort to evade liability both in this Forum and in the United States District
Court, Respondent has been making changes to
its website, namely deleting
certain web documents relied upon by Complainants in their complaint (e.g. IICMA
History and Organization)
or burying documents deeper into its web site (e.g.
the original ICMA Home Page).
5. Respondent’s Reliance on Volvo and
Guinness Decisions is Misplaced
Respondent’s
reliance on the Volvo and
Guinness cases for the proposition that there is no likelihood of
confusion as between Complainants' marks and the disputed domain name is
entirely
misplaced. Volvo Trademark Holding AB v. Lost in Spac, SA, WIPO Case No. D2002-0445 (Aug. 1, 2002); Arthur
Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, D2001-0020 (WIPO
Mar. 22, 2001); and Arthur Guinness Son & Co. (Dublin) Limited
v. Tim Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001). In the Volvo decision, the
panel held for the Complainant citing the rule applied by numerous panels, i.e.,
“when a domain name wholly incorporates a complainant’s registered mark,
that is sufficient to establish confusing similarity for purposes
of the
policy.” And “That is especially the
case where the word that is added to Complainant’s trademark is not distinctive,
as is the case in the
present matter (addition of ‘club’).” Volvo Trademark Holding AB v. Lost in Spac, SA, WIPO Case No. D2002-0445 (Aug. 1, 2002) In the Guinness case it was held that the domain name
<guinessbeer.com> is confusingly similar to the GUINNESS trademark
because the mere addition
of the word “beer” and the deletion of letter “N” did
not serve to obviate confusion. Arthur Guinness Son & Co. (Dublin) Ltd v. Steel
Vertigogo, D2001-0020 (WIPO
Mar. 22, 2001); and Arthur Guinness Son & Co. (Dublin) Limited
v. Tim Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001).
The
domain name complained of wholly incorporates Complainants’ CMA and ICMA
marks. Respondents mere addition of the
indistinctive letter “I” does very little to vary the impression of the
dominant feature of the URL,
i.e. “CMA.” In particular, the letter “I” in
relation to the Internet does not have distinctive qualities because of its’
connotation
on the World Wide Web as standing for “Internet” or “Interactive.” Furthermore, the meaning of the letter “I”
in Respondent’s domain name becomes readily apparent to visitors of
Respondent’s web site
as standing for “International” and “Institute.” As stated by the Vice President for
Certifications & Examinations of the first Complainant, Priscilla S. Payne,
and as confirmed
by Respondent in the Affidavit that was attached to the
Response, Complainants do have an international presence.
It
is entirely foreseeable that visitors would access the Respondent’s website
under the mistaken belief that the “I” stands for “International”
and that
Respondent and his organization function as the Complainants’ international
division or affiliate. The wholesale
incorporation of Complainants CMA and ICMA trademarks into Respondent’s domain
name increases the likelihood that people
will be confused into false notions
of source or affiliation.
DISCUSSION AND FINDINGS
1. Legal Proceedings
Complainants filed, on February 13, 2004,
in the United States District Court for the Western District of Washington, a
lawsuit against
International Institute of Certified Management Accountants,
Inc. for Trademark Infringement, Statutory Unfair Competition, Common
Law
Unfair Competition, and Copyright Infringement. In accordance with Rules ¶¶
3(b)(xi) and 5(b)(vi), both parties have drawn the
Panel’s attention to this
lawsuit. Complainants filed a copy of the lawsuit and both parties have filed
copies of miscellaneous Affidavits
and evidence filed therein, although mostly
this has been done to support their respective contentions.
The present dispute is of course
mandatory upon the Respondent by virtue of the dispute resolution provision in
his registration agreement,
but Policy ¶ 4(k) of the Policy either party has
the option, at its sole discretion, of “submitting the dispute to a court of
competent jurisdiction for independent resolution before such mandatory
proceedings is commenced
or after such proceeding is concluded.”
The Panel has discretion, under Rules ¶
18(a), to decide whether to suspend or terminate the present proceedings as a
result of any
legal proceedings initiated prior to or during a dispute. In
general, Panels have declined to exercise this discretion, unless the
legal
proceedings have specifically referred to the domain name in dispute.
Moreover, as
the Panel reads the Complaint, the relief which the Complainant seeks, which is
predicated on allegations of federal
trademark infringement and unfair
competition under federal and state law, does not specifically include the
relief sought through
this proceeding; namely, cancellation of the contested
domain name. . . . Moreover, since both the Complaint and Response have been
filed in this proceeding, hence providing the Panel with the documents
necessary for it to proceed, the Panel has decided, in accordance
with the
discretion granted it under Rules ¶ 18(a) to: (a) deny the Respondent’s request
to dismiss the proceeding, and, as such
(b) consider these filings and proceed
to decision in this matter.
Cognigen Networks, Inc. v. Pharmaceutical Outcomes
Research, D2001-1094
(WIPO Dec. 18, 2001).
It would seem from the documents filed by
Complainants that, as in the case referred to above, the relief which they seek
in their
lawsuit goes far beyond those issues which the Panel can consider, and
indeed does not specifically include the specific relief sought
by these
proceedings, namely the transfer of the disputed domain name.
Consequently this Panel has decided in
the circumstances not to exercise its discretion under Rules ¶ 18(a) and will
not suspend or
terminate these proceedings.
2. Laches
Respondent has asserted that the
equitable defence of laches applies in this case, saying that the disputed
domain name was registered
over 2 years before the Complaint was brought.
Laches is not a defence under the Policy, but delay can certainly be a relevant
factor
in determining whether it has allowed a Respondent to build up rights in
a domain name. See Square Peg
Interactive, Inc. v. Naim Interactive, Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003). However in the present case, there has been no delay.
Complainants allege that they first heard of the disputed domain name in
January
2004, that they filed the lawsuit referred to above on February 13,
2004, and that they filed a Complaint on March 4, 2004 (which
was, for
undisclosed reasons, not proceeded with). This Complaint was filed on March 16,
2004.
In the opinion of the Panel, these
timings show a remarkable speed in the circumstances, and they are perfectly
reasonable. The Respondent’s
claim to laches is a complete red herring and it
is denied.
Required
Elements
Under Rules ¶ 15(a) a Panel must “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.”
Policy
¶ 4(a) requires that the Complainant must prove each of the following three
elements in order 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.
The
Panel will now consider each of these three requirements but, contrary to usual
practice, in reverse order.
Under Policy ¶ 4(b), there are a number
of different circumstances that can be evidence that a domain name has been
registered in
bad faith. Complainants contend that two of them apply in this
case:
·
that it was
registered primarily for the purpose of disrupting the business of a
competitor; and
·
that
Respondent is using the name intentionally to attract users to its website for
commercial gain by creating a likelihood of confusion.
There is no doubt that Respondent is a
competitor of Complainants. Respondent argues that the services of his
International Institute
of Certified Management Accountants are not the same as
those of Complainants because it operates in different markets, and uses
different methods. He also says that
his Institute is involved in Management Accounting, while Complainants are not,
they are involved in Financial Management.
However this is a complete
misinterpretation, whether deliberate or not, of Complainants’ activities. It
is clearly stated on their
website that they offer training and qualification
in management accounting and financial management and their trademark
registrations
cover both activities.
Respondent further claims to operate only
in Thailand and to offer his services only in Asia and Europe, but yet the word
‘International’
appears in the title of the Institute, which implies a global
scope, consistent with the fact that Respondent has chosen to adopt
a ‘.com’
domain name and to advertise his services through a website that is available
to anyone anywhere in the world. It is true
that on the Institute’s website
only the flags of certain Asian countries and of the European Union are
displayed, but on the other
hand Respondent’s Institute is incorporated in the
USA, while on a page of his website there appears the following statement: “The Institute has deep roots in the CPA
Review Course of Seattle, Washington, USA.”
Respondent cannot have it both ways.
At the end of the day, both parties are
doing the same thing, namely offering a qualification to members of the
accounting profession.
Therefore by choosing a name and acronym that are only
one word and one letter different from the name and acronym of the first
Complainant,
and by operating a website which not only imitates that of
Complainants but also refers to Complainants and its trademarks, as well
as
reproducing one of its publications, it is impossible to escape the conclusion
that Respondent has deliberately set out to disrupt
Complainant’s business and to create a likelihood of
confusion between his Institute and Complainants.
There must be some doubt over
whether Respondent has any legitimate right to use the disputed domain name.
Policy ¶ 4(c) sets out 3
circumstances, any one of which could serve to demonstrate that a Respondent
has a legitimate right to use
a disputed domain name. In this case, Respondent
claims all 3 of them and, as Complainants have made out a bona fide case, the onus falls on him to prove them.
Bona Fide Use
Respondent is indeed making
an offering of services under the disputed domain name, but is it bona fide? Complainants
assert not,
because they were first in the field with a similar offering.
Respondent
knew of Complainants and of their trademarks, yet he proceeded to set up the
International Institute of Certified Management
Accountants and to launch his
own CMA program. It seems to the Panel that he could only have done so in order
to profit unfairly
on the goodwill and reputation of Complainants’ CMA
program.
The disclaimers on
Respondent’s website clearly indicate that he was fully aware of Complainants
and their activities and therefore
that his website might in some way be
accessed by persons actually seeking information about them rather than his
Institute. Attracting
users in this manner, and only then including a
disclaimer is, “tantamount to committing
a tortious act but then seeking to avoid liability after the event. It is only
by unauthorized use of the
trademark that the potential customer is brought to
the website (containing the disclaimer) in the first place.” Viacom
Int’l Inc. v. Jackson, D2003-0755
(WIPO Dec. 8, 2003).
Also, in the case of Ciccione v. Parisi,
D2000-0847 (WIPO Oct. 16, 2000) the Panel held: “First, the disclaimer may be ignored or misunderstood by Internet
users and, second, that a disclaimer does nothing to dispel initial
interest
confusion that is inevitable from Respondent’s actions. Such confusion is a
basis for finding a violation of Complainants’
rights.”
Respondent refers to no less
than 3 disclaimers on his site, but none of them appear in a prominent
position. Accordingly, and following
the decision in the Viacom case referred to above, the Panel does not view Respondent’s
disclaimers as providing an effective defence.
Respondent commonly known by
the disputed domain name
It could be said that the
Respondent has been commonly known since at least January/February 2002 when
his Institute was incorporated
and he acquired the disputed domain name. But it
is interesting that he provides no figures for the number of persons to whom he
has awarded the CMA qualification since then. There are many different reasons
for accessing a website and just because the disputed
domain name has been
‘hit’ over 300 times a day on average, does not mean that every ‘hit’ was a
genuine enquiry.
Respondent contends that he
has a right to use his corporation’s full legal name, and of course an “own
name” defence is enshrined
in trademark law and practice in many countries of
the world. But this gives no right to use an acronym thereof.
Therefore, the Panel
concludes that Respondent is not, and never has been known as IICMA.
Legitimate noncommercial and
fair use
Respondent claims to be using
the disputed domain name without intent for commercial gain. The Panel finds
this both astonishing and
wrong, given that the course fees of his Institute
are $1450. It is also open to doubt whether his use is fair, given the very
real
possibility for confusion between the name and acronym of his Institute
and the name and acronym of the first Complainant.
Accordingly, the Panel finds that Respondent has no rights or
legitimate interest in the disputed domain name.
There are a number of different factors
to consider under this heading.
Do all of Complainants claimed trademarks
need to be considered?
Complainants between them own a number of
registered and pending US trademarks, as well as an unregistered trademark. The
pending
applications all claim a date of first use in 1998, with one exception,
which claims no date at all. They therefore demonstrate that
Complainants are
claiming certain rights in the marks and logos, which they cover, and although
there is no guarantee that these
applications will ever proceed to
registration, it could be said that they fall into the same category as
Complainants’ unregistered
trademark.
With the single exception of the
registration of the trademark CMA (No. 2,066,333), all of Complainants’
trademarks consist of figurative
logos and, in the opinion of the Panel, and
applying the standard rules for comparison which are enlarged upon below, there
is no
similarity between the disputed domain name and the dominant components
of 5 of Complainants’ trademarks, namely –
·
INSTITUTE OF CERTIFIED MANAGEMENT ACCOUNTANTS
1972 CMA and Design Registration No. 1,895,368,
·
CFM.CMA IMA INSTITUTE OF MANAGEMENT
ACCOUNTANTS and Design Serial Nos.
76/488394 and 76/488395,
·
CFM.CMA INSTITUTE OF MANAGEMENT ACCOUNTANTS and Design
Serial No. 75/410236, and
·
CFM.CMA and Design Serial No. 75/410235.
This therefore leaves the disputed domain
name to be considered for similarity against the remaining 4 of Complainants’
trademarks
– CMA No. 2066333, CMA (Stylized) No. 1,795,312, IMA and Design Serial No.
75/584773, and the unregistered trademark ICMA.
Respondents allege that the trademark CMA
is not valid because it was never indicated as such in the material submitted
by Complainants,
However, as Complainants point out, this is not true. On at
least one page of their website the ® symbol appears. Complainants also
contend
that an indication that a word or a device is a trademark is not necessary and,
furthermore, that under the Lanham Act a
registration is, in itself, prima
facie evidence of validity. The Panel therefore finds that all of Complainants’
4 registrations
are valid, and this includes the two registration of CMA.
Do Complainants have rights in an
unregistered trademark?
Respondent also argues that Complainants
cannot rely on an unregistered trademark. Complainants dispute this and assert
that their
unregistered trademark ICMA has been used since 1972.
There is no doubt that the use of a
trademark does, in the USA, create rights in that name in respect of the goods
or services on
which it has been used. (The Panel believes that the same
actually also applies in Respondent’s home country of Thailand.) However
Complainants’ evidence of the use of ICMA as a trademark is so sparse as to be
almost non-existent.
Respondent contends that the
letters ICMA do not refer only to the first Complainant. In particular they are
also used by an Australian
organisation of the same name, which is in the same
line of business. If true, this could serve to weaken any global exclusivity,
which Complainants might possess in the acronym ICMA. However Complainants
responded to this charge by saying that the Australian
organisation is small,
and that it does not offer an independent CMA certification program but it has
a membership category that
is based on the number of years in the field.
Respondent also alleges that
the abbreviation ICMA is so common as to be unregistrable, and indeed there is
some truth in this since
a simple internet search conducted by the Panel
revealed that there are many organisations both in the US and elsewhere who use
this
acronym. Specifically the International City/County Management Association
(which owns the domain name <icma.org>) and the
International Card
Manufacturers Association (which owns the domain name <icma.com>).
In the USA, trademark
registration is not an absolute requirement for a claim to be made to have
trademark rights, but in the opinion
of the Panel, Complainants have not
provided sufficient evidence that ICMA is being used as a trademark. A
trademark must be used
in respect of goods or services. Complainants’ trademark
CMA is clearly being used in respect of the services for which it is
registered,
but ICMA appears to be used only as an acronym. The only evidence supplied by
Complainants that ICMA is an unregistered trademark is contained in their
Exhibit 10. This consists
of two documents taken from the website of the second
Complainant, the Institute of Certified Management Accountants, entitled
“Certification
FAQs/Discussion” and “Students Education.” Throughout these
documents the letters ICMA are used as an abbreviation for the name Institute
of Certified Management Accountants and not, as one might expect from a
trademark, to qualify specific goods or services. In itself
this is not a
barrier to a claim for trademark protection, as the letters IMA are used
similarly in the documents and they are registered as the dominant part
of a trademark in the US. However the Panel notes that the acronym ICMA is not
used in any of Complainants’
advertisements, that the only trademarks given
prominence on the Home Page of Complainants’ website are CFM and CMA, and that
nowhere
in any of the papers filed as part of the Legal Proceedings referred to
above is ICMA referred to as being a trademark.
From all of this, and in the
absence of any other evidence, the Panel concludes that if Complainants do
indeed have unregistered trademark
rights in the ICMA, they make no effort to
use them. What they do do however is to use the acronym ICMA as an abbreviation
of the
name of the first Complainant. Thus they can only have common law rights
in the name ICMA, but this is not sufficient for Policy ¶ 4(a)(i), which
talks only of rights in a trademark or service mark. See Interactive Television Corp. v. Noname.com,
D2000-0358 (WIPO June 26 2000) (“serious questions as to whether Complainant
has any proprietary rights require us to reject Complainants’ claim. The
ultimate decision
as to whether Complainant does or does not have proprietary
rights is better left to a court or trademark office tribunal.”).
Is the disputed domain name
identical or confusingly similar to Complainants’ valid trademarks?
Clearly none of Complainants
trademarks is identical to the disputed domain name. Respondent has come up
with a number of rather muddled
arguments to say that none of them is
confusingly similar either.
He says, for example, that
Complainants’ trademarks are exclusively in the form of logos. The Panel has
dealt with the figurative
marks above and concluded that they are not similar
to the disputed domain name. However one of Complainants’ trademarks, No.
1,795,312,
does have two thick bars above the letters CMA. In the opinion of
the Panel these bars do not detract from the fact that the mark
is the letters
CMA. In any case, even if it were to be ruled out of contention, there is
another registration for the letters CMA
by themselves.
Next, Respondent argues that
there is no evidence of actual confusion, but that is not necessary for a
Complainant to succeed under
Policy ¶ 4(a)(i) of the Policy – despite
Respondent’s lengthy submissions in this regard. In fact he totally
misunderstands the finding
in the Seiko case in the UK (in which this
Panelist served as Chairman of the Appeal Panel). See Seiko UK Ltd.
v. Designer Time/Wanderweb, DRS 00248 (Nominet UK Dispute Resolution Serv.
Appeal Div., Nov. 26, 2002).
Respondent’s argument that
Complainants’ trademark CMA co-exists on the register with other CMA marks is
irrelevant in this context,
as is his assertion that CMA is generic and used by
other organisations. If full documentary proof of this alleged co-existence and
genericness had been provided (which it was not) it would, in the opinion of
the Panel, only have served to cast doubts on the exclusiveness
of this
trademark, not on its invalidity.
Finally, Respondent contends
that because he is involved in management accounting and Complainants are
involved in financial management,
there can be no confusion. However firstly
these two activities are not mutually exclusive and in any case it is
irrelevant to a
finding of similarity. The goods or services of actual use are
not an issue. Policy ¶ 4(a)(i) asks only for there to be a similarity
between
the mark and the domain name, not also of their respective goods or services.
Conclusion
Turning at last to a
comparison between Complainants’ trademark rights and the disputed domain name
and, having dismissed Complainants’
claim to have rights in ICMA as a trademark
and decided that the disputed domain name is not similar to Complainants’
figurative
trademarks, the disputed domain name falls to be considered for
similarity against Complainants’ remaining valid trademarks CMA and
IMA
When comparing trademarks for similarity
in a European context, the general approach was summed up by the European Court
of Justice. In paragraph 22 it was said
that the likelihood of confusion depends on numerous elements, but in paragraph
23 it was said that “The
global appreciation of the visual, aural, or
conceptual similarity of the marks in question must be based on the overall
impression
given by the marks, bearing in mind their distinctive and dominant
components.” Case C-251/95, Sabel BV
v. Puma AG, Rudolf Dassler Sport, 1 C.M.L.R 445 (1998).
The distinctive and dominant
features of Complainants’ trademarks are – CMA and IMA and in the opinion of
the Panel, these marks have
some visual similarity with the disputed domain
name, they have rather more phonetic similarity, and conceptually they are
identical.
This, coupled with the identicality of their respective services,
would, in the opinion of the Panel, lead any European trademark
authority to
hold that they are confusingly similar.
The Panel is less familiar
with US practice in this area, but finds some assistance from
Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico D2000-0477 (WIPO July 25, 2000):
The question
whether a domain name and a trademark are confusingly similar involves the
application of a multifactored test exemplified
in the decision of the U.S.
Court of Appeals for the Ninth Circuit in AMF Inc. v. Sleekcraft
Boats, [1979] USCA9 691; 599 F.2d 341 (9th Cir. 1979). The Sleekcraft factors are
directed to whether there is a "likelihood of confusion" between two
marks. While developed in the context
of comparing two trademarks, the Sleekcraft factors have
more recently been employed by the federal courts to compare domain names to
trademarks, and domain names to domain
names. The Sleekcraft factors were,
for example, employed by the federal district court in Bally
Total Fitness . . . The Sleekcraft factors were
relied upon by the Court of Appeals for the Ninth Circuit in Brookfield
Communications v. West Coast Entertainment, [1999] USCA9 225; 174 F.3d 1036, 1053-61 (9th
Cir. 1999).
In Sleekcraft, the Court of
Appeals for the Ninth Circuit enumerated eight factors to be weighed on the
question of likelihood of confusion. These
are: (1) strength of the mark; (2)
proximity of the goods; (3) similarity of the marks; (4) evidence of actual
confusion; (5) marketing
channels used; (6) type of goods and the degree of
care likely to be exercised by the purchaser; (7) defendant's intent in
selecting
the mark; and (8) likelihood of expansion of the product lines.
In
this case, in applying the Sleekcraft
test, despite its deficiencies when transposing it to a dispute involving a
domain name and a trademark, the Panel concludes as follows:
1. As regards the strength of the
trademarks, CMA has been registered since 1993 or 1997 and used since 1984,
while IMA has been registered
and used since 1998. The registrations are valid
and at least one of them is incontestable. 20 years’ use is a long time but the
same initials have also been used by third parties – although it seems always
with the connivance of Complainants. CMA and IMA are
therefore strong marks.
2. The services for which the trademarks and
the domain name are used are identical.
3. The dominant portion of each of
Complainants’ trademarks (CMA or IMA) is included in its entirety within the
disputed domain name.
The essential difference lies in the fact that the latter
is preceded by the letters ‘ii’. These letters are not particularly distinctive
and, in an internet context, could be abbreviations of certain non-distinctive
and commonly used words such as ‘interactive’, or
‘internet’. In fact they
stand for the equally non-distinctive words ‘international’ and ‘institute’.
4. No evidence of actual confusion has been
put in evidence.
5. The marketing channels for both
Complainants and Respondent are identical.
6. The services offered by both parties are
identical. Their most likely ‘purchaser’ will be someone seeking a CMA
qualification. It
is true that users of the internet do exercise a degree of
care when using the it or when typing in a domain name, and it seems to
the
Panel that anyone seeking a CMA qualification and finding Respondent’s site
instead of Complainants’ site might be momentarily
confused, but not for long.
7. The Panel has already found that
Respondent had no bona fides when he
selected the disputed domain name.
8. There is no evidence of any likely
expansion of the product lines of either party.
The Panel is satisfied that
Complainants have made out a prima facie
case for confusion, and does not accept Respondent’s counter-argument that in
this case it would be wrong to apply a rule that,
when a domain name wholly
incorporates a Complainant’s trademark, then if a generic word is added to
this, that is sufficient for
a finding that the two are confusingly similar.
In two recent Decisions both
involving UGG Holdings, Inc. v. Barclay,
FA 217320 (Nat. Arb Forum Feb. 4, 2004) and UGG Holdings, Inc. v. Barclay,
FA 216873 (Nat. Arb. Forum Feb. 6, 2004) it was held that Complainants’
trademark UGG was confusingly similar to the following lengthy
list of domain
names, some of which were arguably some way removed from the trademark itself:
<ugboots.us>,
<ugg.us>, <uggboots.us>, <uggs.us>, <aussieugboots.com>, <australianugs.com>, <aussieugg.com>, <discountuggboots.com>, <aussieuggboots.com>, <rousuggs.com>, <aussie-uggs.com>, <sheepskinsuggboots.com>, <aussieuggs.com>, <snuggboots.com>, <aussieughs.com>, <ugaustralia.com>, <aussieugs.com>, <ugboots.com>, <australianugboots.com>, <uggbootsonline.com>, <australianugg.com>, <uggbootstore.com>, <australianuggboots.com>, <uggsaustralia.com>, <australianuggs.com>, <uggsnrugs.com>, and <australianughs.com>.
This was
on the basis that the disputed domain names appropriated the Complainant’s
trademark, or a phonetically identical variation
thereof, and added generic or
descriptive terms to the mark. It was further held that the addition of generic
or descriptive terms
to a registered trademark fails to differentiate
sufficiently the domain names from the mark under Policy ¶ 4(a)(i), especially
when
the added terms have a significant relationship to the goods or services
offered under the mark. Reference was made to Sony Kabushiki Kaisha v. Kil,
D2000-1409 (WIPO Dec. 13, 2000) (“Neither
the addition of an ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant
part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) was
satisfied); as well as 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).
Respondent
has argued strongly that the letters ‘ii’ do not constitute a generic term, and
if this is the fact, then the above decisions
are not relevant, but these
letters do have a fairly obvious descriptive meaning, as pointed out under (3)
above and a significant
relationship to the services offered by Respondent.
Therefore,
taking all of the above premises into consideration, and coupled both with
Respondent’s blatant behaviour in aping the
name of the first Complainant plus
the above findings of bad faith and a lack of rights or legitimate interest,
the Panel has concluded
that there is similarity between the disputed domain
name and Complainants’ trademarks CMA or IMA.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED and orders that the domain name <iicma.com>
be TRANSFERRED.
In the Complaint, it is simply requested that “The domain-name registration be transferred
to Complainants.” However
there are two Complainants and, whilst the second Complainant, the Institute of
Management Accountants, is the parent of the
first Complainant, the Institute
of Certified Management Accountants, and therefore the most senior of the two,
it is the latter
which has a name and acronym which is closest to the disputed
domain name. Therefore the Panel orders that the domain name <iicma.com> to be transferred from
Respondent to the first Complainant. If this is wrong, then the second
Complainant is at liberty to effect
a subsequent transfer.
David H Tatham, Panelist
Dated: May 15, 2004
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