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The Chartered Institute of Management Accountants v. Ashok Bhatia [2005] GENDND 1470 (5 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Chartered Institute of Management Accountants v. Ashok Bhatia

WIPO Case No. D2005-0578

1. The Parties

Complainant is The Chartered Institute of Management Accountants (“CIMA”), London, United Kingdom of Britain and Northern Ireland.

The Respondent is Ashok Bhatia, Manama, Bahrain.

2. The Domain Name and Registrar

The Domain Name in issue is <cimaglobal.org> (the “Domain Name”).

The registrar is Intercosmos Media Group, Inc., New Orleans, Louisiana, United States of America. (IMG).

3. Procedural History

The WIPO Arbitration and Mediation Center (the “Center”) received CIMA’s complaint via email on June 3, 2005, and in hard copy on June 6, 2005.

The Center contacted IMG on June 3, 2005, requesting verification of the Domain Name’s registration. On the same date, the Center received verification of the registration.

After verifying that the Complaint complied with the formal requirements of the Rules “the Rules”, Supplemental Rules “the Supplemental Rules”, and Policy “the Policy”, the Center notified the registrants and technical contacts on June 8, 2005, of the commencement of the administrative proceeding. It notified Respondent that Complainant had submitted a complaint as described above. Accordingly, the administrative proceeding commenced on June 8, 2005. Respondent was given notification of the consequences of a default, of the fact that Complainant elected a single member panel, of the fact that Respondent could instead request a three member panel, and of the identity and contact information of the Case Manager.

Having received no response to the notification by the deadline, the Center issued a Notification of Respondent Default on June 29, 2005. Shortly thereafter Respondent filed a Response. In its discretion, the panel will consider the late-filed Response.

The undersigned sole Panelist was appointed on July 14, 2005, and submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

4. Factual Background; Parties’ Contentions

a. Complainant

CIMA’s Complaint alleges, and it submits evidence, that it owns several national trademark registrations, and has several pending applications, for the mark CIMA in the United Kingdom and elsewhere, and that its mark has been used since 1987, in connection with the provision of goods and services related to accounting and auditing, management accountancy, and related training services.

CIMA further alleges that it registered <cimaglobal.com> as its primary domain name in October 1999, and subsequently developed the associated web site to promote and provide the goods and services of Complainant. At a later date, Respondent registered the <cimaglobal.org> domain name at which it operates a site which repeatedly references CIMA, offers related goods and services, and creates a likelihood of confusion with respect to source and/or association.

CIMA alleges that Respondent lacks rights or legitimate interests in the Domain Name and uses it to attract customers interested in training in this field by falsely creating the impression of an association between Complainant and Respondent and/or their respective goods and services.

b. Response

Respondent failed to timely respond, and was accordingly found in default. Nonetheless, the Panel, in its discretion, will overlook Respondent’s relatively short delay in providing a response, and will consider the Response on its merits.

Respondent acknowledges that Complainant owns trademark rights for the mark CIMA. Respondent contends that its web site acknowledges CIMA’s trademarks, does not intend to tarnish them, and is making legitimate and fair use of the Domain Name. Respondent asserts that his web site does not create confusion with respect to whether it is related to Complainant “other than as a CIMA course tuition provider via the Learning Through Partnership (LTP) status” which Respondent claims it formerly held as formerly noted on Complainant’s web site.

Respondent claims rights and legitimate interest in respect of the Domain Name arising from a history of association between Complainant and Respondent. Specifically, Respondent avers that he was a course provider approved by Complainant for many years, and was endorsed as an LTP Registered provider of CIMA courses which lead to CIMA qualification.

Respondent claims his Domain Name was registered and his site was created in 2001, to provide information on CIMA qualifications and how students from any geographical location may study towards these qualifications through supported distance learning.

Respondent further contends that he is not a competitor of Complainant, that the look and feel of his website does not infringe Complainant’s mark, and that he mitigates any harm or risk of confusion by providing links from his website to Complainant’s website as well as pages of information about Complainant.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to each Domain Name, each of the following:

(i) The Domain Name in issue is identical to CIMA’s trademark at issue here; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name was registered and is being used in bad faith.

(i) Domain Name Identical to Trademark

The Domain Name <cibaglobal.org> is identical to Complainant’s domain name <cibaglobal.com>, but for the replacement of the “.com” top-level domain (TLD) with the “.org” TLD – an immaterial difference. See College Summit, Inc. v. Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575 (January 17, 2001) (the TLD is properly ignored when considering similarity). Moreover, the Domain Name is identical to Complainant’s CIMA mark, but for the addition of the descriptive or generic term “global.” It is well established that the addition of a descriptive or generic word to a complainant’s trademark does not undermine a finding of confusing similarity. See, e.g., Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794 (December 20, 2004). Confusion is all the more likely where the descriptive term added to the mark (“global”) is identical to the one that Complainant itself added to its mark in selecting its own domain name.

For the above reasons, the Panel concludes that the Domain Name is identical or confusingly similar to CIMA’s trademark. Complainant has met the requirement of Paragraph 4(a)(i) of the Policy.

(ii) Whether Respondent Has Rights Or Legitimate Interest In the Domain Name.

Respondent contends that his company provides services related to distance education for students seeking CIMA qualification. He claims that for several years he was acknowledged by CIMA itself as a provider of services through CIMA’s LTP program.

CIMA, in a letter to Respondent, acknowledged that Respondent had been an LTP course provider, but argued that this did not constitute an assurance by CIMA about the quality of Respondent’s services but simply reflected payment of a fee to be on a CIMA course provider list. CIMA further notes that Respondent offers other distance learning services not affiliated with CIMA and accordingly, by designing its website in a manner that strongly suggests that it is operated by CIMA, can mislead consumers into believing that these non-CIMA programs are associated with CIMA.

This Panel need not reach or resolve the question of whether a provider of genuine trademarked goods or services has a legitimate interest in identifying itself by use of a domain name that contains that mark, used in a nominative or fair manner. Several panels have held that the truthful, nominative use of a trademark in connection with the sale of the goods or services that are properly identified by that trademark does not constitute bad faith under the Policy. See Adaptive Molecular Technologies, Inc. v. Woodward, D2000-0006 (February 28, 2000); Giddings & Lewis LLC v. McKean, WIPO Case No. D2000-1150 (March 14, 2001); Nicholas v. Magidson Fine Art, Inc., WIPO Case No. D2000-0673 (September 27, 2000); Kendall v. Meyer, WIPO Case No. D2000-0868 (October 26, 2000); The Kittinger Company, Inc. v. Kittinger Collector, AF-0107a,b (eRes May 8, 2000).

In this case, however, it appears from the record that Respondent’s use goes far beyond any such legitimate nominative fair use. Instead, as discussed further in part (iii) below, the use misleadingly suggests an association between Complainant and Respondent. Indeed, it suggests that they are one and the same entity. Accordingly, for reasons which overlap with those discussed in part (iii) below, the Panel is not persuaded that any prior legitimate association that may have existed between Respondent and Complainant renders Respondent’s confusingly similar use of Complainant’s mark “fair” or “nominative.”

(iii) Registration and Use in Bad Faith

The web site to which Respondent’s Domain Name resolves is highly likely to confuse visitors into believing that it is CIMA’s web site. The header on the home page of the site reads “Chartered Institute of Management Accountants (CIMA).” Under that line there is a second line which reads “by Distance Learning.” In the upper left hand corner of the home page is a logo which reads “CIMA” inside a red circle. Immediately below that logo is a list of links, the first one of which is likewise simply entitled “CIMA.” The next two links are entitled “The Team” and “About Us,” respectively. From this home page alone, a visitor would be likely to conclude that this was CIMA’s website.

The “Contact Us” link – typically a link that identifies the name and address of the owner or operator of the web site in question – takes visitors to a page which features, at the top of the page, Complainant’s address and contact information in the United Kingdom. Immediately thereafter, under the subheading “Middle East Regional Office,” Respondent’s contact information is provided. This usage is clearly intended to, and is highly likely to, lead visitors to believe that the site is operated by Complainant CIMA, and further that Respondent operates CIMA’s “Middle East Regional Office.”

These are but a few examples of the ways in which Respondent’s web site leads to a likelihood of confusion of ownership, sponsorship, or association between Complainant and Respondent. Such usage goes well beyond any legitimate nominative use of the CIMA trademark that may otherwise take place where a service provider offers a service that is in some legitimate way qualified or sanctioned by the owner of the mark.

Respondent’s selection of a domain name that is identical, but for the TLD, to Complainant’s domain name further suggests an intent to benefit from Complainant’s goodwill.

Finally, by offering non-CIMA distance education programs on the site, Respondent further engages in what has been deemed in numerous other cases to be bad faith registration and use. See Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319 (February 1, 2002) (“Registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Zwack Unicom Ltd v. Duna, WIPO Case No. D2000-0037 (March 10, 2000) (Respondent’s linking to complainant’s competitor held to constitute bad faith); Oly Holigan, L.P. v. Private, Case No. FA0011000095940 (N.A.F. December 4, 2000) (bad faith where respondent used the disputed domain name to “redirect the Complainant’s consumers and potential consumers to commercial web sites which are not affiliated with Complainant , leading consumers to believe that such sites are affiliated with, or otherwise sponsored or approved by Complainant.”); Marriott International, Inc. v. Kyznetsov, Case No. FA0009000095648 (N.A.F. October 24, 2000) (bad faith where respondent registered the domain name <marriottrewards.com> and used it to route internet traffic to another web site that “promotes travel and hotel services identical to the services offered by the Complainant”).

In sum, bad faith is shown in that the Domain Name appears to be used to attract, for commercial gain, Internet users interested in obtaining the relevant qualification who may be confused into believing that Respondent’s services are endorsed by, if not actually owned or provided directly by, Complainant.

6. Decision

In light of the above findings and analysis, the Panel decides that Complainant has met its burden of proving that: (1) the Domain Name is identical or confusingly similar to a mark belonging to the Complainant; (2) Respondent has no rights or legitimate interest in the Domain Name; and (3) the Domain Name has been registered and is being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that registration of the <cimaglobal.org> Domain Name be transferred to Complainant.

Michael Albert
Sole Panelist

Dated: August 5, 2005