World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ICAEW (Institute of Chartered Accountants in England & Wales) v. PrivacyProtect.org / Tech Domain Services Private Limited

Case No. D2010-1122

1. The Parties

Complainant is ICAEW (Institute of Chartered Accountants in England & Wales) of London United Kingdom of Great Britain and Northern Ireland, represented internally.

Respondent is PrivacyProtect.org / Tech Domain Services Private Limited of Moergestel, The Netherlands and Mumbai, Maharashtra, India.

2. The Domain Name and Registrar

The disputed domain name <icaewfirms.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2010. On July 7, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On July 13, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 13, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 14, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 5, 2010.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on August 17, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Upon reviewing the pleadings, the Panel issued Procedural Order No. 1 on August 23, 2010, requesting Complainant to provide supplementary documents and information to support some of the assertions contained in the Complaint. Respondent was permitted a further opportunity to file a Response after receipt of Complainant’s submission. To accommodate the Panel Order, the Panel extended the due date for submission of its decision in the present case to September 8, 2010.

Complainant made its submissions to the Center on August 25, 2010. Respondent filed no submissions with the Center.

4. Factual Background

Complainant, Institute of Chartered Accountants in England & Wales (“ICAEW”) is the owner of United Kingdom Registration No. 2,022,297, issued October 31, 1997 in connection with accountancy services and related services in International Classes 35, 36 and 42. ICAEW also owns the domain name <icaewfirms.co.uk>, which resolves to a website serving as Complainant’s member directory.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is one of the largest accountancy bodies in the world, with over 130,000 members worldwide. Complainant asserts that it uses the domain name <icaewfirms.co.uk> for the promotion of the accountancy services of ICAEW members. Because of the standing of ICAEW, the association is extremely well-known and its website receives very large volumes of traffic.

Complainant’s ICAEW trademark has been registered since 1997 while the disputed domain name was created in 2007. Complainant asserts that the disputed domain name <icaewfirms.com> is identical or confusingly similar to a service mark in which Complainant has rights, because the domain name incorporates in its entirety Complainant’s ICAEW trademark, and is identical to the URL of Complainant’s own domain name <icaewfirms.co.uk>, changing only the country code and second level domain “.co”.

Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name because the domain name <icaewfirms.com> is not connected with any bona fide offering of goods or services, but rather is used to host advertisements, the majority of which are related to accountancy and accounting services.

Complainant asserts that the disputed domain name was registered and is being used in bad faith because Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website <icaewfirms.com> by creating a likelihood of confusion with Complainant’s mark ICAEW as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Complainant asserts that the domain name was registered as a means to make money from visitors to Respondent’s website who would come to the site believing it was in some way connected to Complainant and then click on the paid links contained in the site, all of which use accountancy-related terms.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Applicable Policy Provisions

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) the domain name has been registered and is being used in bad faith.

In order to prevail in a proceeding under the Policy, a complainant must typically prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.

However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

Policy, paragraph 4(b). These circumstances are non-exclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith.

Where, as here, a respondent is in default, the Panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).

B. Identical or Confusingly Similar

The Panel agrees that the domain name <icaewfirms.com> is confusingly similar to Complainant’s registered trademark ICAEW as it contains Complainant’s registered mark in its entirety. Addition of descriptive material such as (accountancy) “firms” fails to distinguish the domain name from Complainant’s trademark for purposes of determining whether they are identical or confusingly similar. Advanced Micro Devices, Inc. v. Dmitry, WIPO Case No. D2000-0530; Keller Williams Realty, Inc. v. Advantage Realtor, WIPO Case No. D2002-0123. Tellingly, Respondent has used the same descriptive word “firms” with ICAEW that Complainant uses in its own domain name. The Panel finds that Complainant has provided sufficient evidence to establish element 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Complainant asserts, and Respondent has failed to rebut, that Complainant has not authorized, licensed or consented to Respondent’s registration and use of the disputed domain name, and that Respondent is not commonly known by the name “ICAEW firms”. Combined with the inferences this Panel may make as a result of Respondent’s default herein, this Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name, which showing Respondent has failed to rebut. See Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 and cases cited therein. As a result, Complainant has established element 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

In this Panel’s view, Complainant’s Complaint could be characterized as providing only a minimum of evidence. Indeed, without the additional information Complainant provided in response to the Panel’s Procedural Order No. 1, the Panel would not have been able to ascertain whether the domain name had been registered and was being used in bad faith. However, the documentation Complainant submitted in response to the Panel’s Order No. 1 was sufficient to satisfy paragraph 4(b)(iv) of the Policy, namely that by using the disputed domain name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

In addition to the inferences to be drawn from Respondent’s default in this proceeding, and its failure to respond to the Panel’s Procedural Order No. 1, the Panel draws an inference that Respondent was aware of Complainant’s trademark and website at the time it registered the disputed domain name from the fact Respondent’s domain name contains the same descriptive word “firms” which is part of Complainant’s legitimate domain name, and that Respondent’s website contains click-through advertisements for accountancy firms. See Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216; Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <icaewfirms.com> be transferred to Complainant.

Jordan S. Weinstein
Sole Panelist
Dated: September 8, 2010

 

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