DECISION

Commission on Graduates of Foreign Nursing Schools v. Yiyouixng

Claim Number:  FA0406000282510

PARTIES

Complainant is Commission on Graduates of Foreign Nursing Schools (“Complainant”), represented by Roger W. Herrell, 1601 Market St., Suite 2400, Philadelphia, PA 19103.  Respondent is Yiyouixng (“Respondent”), Beijing 100024, China.

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 1, 2004; the Forum received a hard copy of the Complaint on June 2, 2004.

On June 2, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <chinacgfns.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 June 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 28, 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@chinacgfns.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 July 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <chinacgfns.com> domain name is confusingly similar to Complainant’s CGFNS mark.

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

3. Respondent registered and used the <chinacgfns.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 (“CGFNS”), 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 (“CGFNS Examination”) of graduates of foreign nursing schools who wish to seek entry into the U.S. for employment.  The U.S. requires foreign-trained nurses to pass the CGFNS Examination to be eligible for a visa under 8 CFR 212 of the regulations of the Immigration and Naturalization Service.  Similarly, the U.S. Department of Labor requires aliens seeking employment in the nursing profession to pass the CGFNS Examination under 20 CFR 656.10. 

Complainant administers the CGFNS Examination in China.  Complainant administers the CGFNS exam through The National Educational Examination Authority (NEEA) in Beijing.

Complainant registered the CGFNS mark on September 9, 2003 with the U.S. Patent and Trademark Office (“USPTO”) (Reg. No. 2,760,986).  Complaint first filed for registration with the USPTO on April 1, 2002.

Respondent registered the <chinacgfns.com> domain name on January 29, 3003.  Respondent is using the disputed domain name to offer resources and training for taking the CGFNS Examination and immigration to the United States.

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 rights in the CGFNS mark as established with its filing of a trademark registration with the USPTO on April 1, 2002..  See J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) for the holding that registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration; see also FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office.

Respondent’s <chinacgfns.com> domain name is confusingly similar to Complainant’s mark.  The only difference is the addition of the word “China,” which is merely a geographic term.  Adding a geographic term to another’s mark to create a domain name does not significantly distinguish the domain name from the mark.  See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark and that "[T]he combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"; see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark.

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not filed a Response.  In the absence of a Response, the Panel may construe all reasonable facts in the Complaint as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence; see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

           

Respondent is using the <chinacgfns.com> domain name to sell exam preparation services for Complainant’s CGFNS Examination.  Using another’s mark to sell products and services related to Complainant is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services; see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services.

There is not evidence in the record, including Respondent’s domain name registration, that Respondent is otherwise known by the <chinacgfns.com> domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain name, pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark.

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is selling goods and services in relation to Complainant’s business.  Selling competing goods and services through a domain name that incorporates Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  The Panel infers that Respondent is using the domain name to disrupt Complainant’s business.  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area; see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business.

The Panel also finds that Respondent’s use of the confusingly similar <chinacgfns.com> domain name is in bad faith because Respondent intends to create confusion as to the source of the disputed domain name for commercial gain, pursuant to Policy ¶ 4(b)(iv)..  See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant.

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

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

Sandra Franklin, Panelist

Dated:  July 21, 2004

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