WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Construction Skills Certification Scheme Limited v. SEO Website Designers (trading as Business Power UK)
Case No. D2011-1856
1. The Parties
The Complainant is Construction Skills Certification Scheme Limited of West Sussex, the United Kingdom of Great Britain and Northern Ireland, represented by Fasken Martineau LLP, United States of America.
The Respondent is SEO Website Designers (trading as Business Power UK) of London, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <testcscs.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2011. On October 27, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On November 3, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on November 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2011. The Response was filed with the Center on November 22, 20111.
On November 24, 2011, the Complainant enquired to the Center about making a Supplemental Filing, and was referred by the Center to paragraphs 10 and 12 of the Rules in reply. A Supplemental Filing, comprising a brief email, was received by the Center on November 29, 2011, and forwarded with the Case File to the Panel.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 30, 2011. 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.
On December 2, 2011, the Respondent submitted a Supplemental Filing in reply to that of the Complainant, which was also referred to the Panel.
4. Factual Background
The Complainant says that the Construction Skills Certification Scheme (also known by the acronym “CSCS”), established in 1995, certifies workers as to competency in various construction-related skills and prerequisites. Persons who pass CSCS tests, and meet the necessary requirements, qualify to receive CSCS certification and a CSCS Card. Over 1,600,000 CSCS Cards have been issued. A network of accredited centres exists to advise and prepare workers for the relevant tests.
The CSCS sign is the subject of the following trademarks, registered at the United Kingdom (“U.K.”) Intellectual Property Office (“IPO”):
CSCS, logo (certification mark), U.K. Trademark No. 2190060, application filed February 24, 1999, registration date January 26, 2001, class 41;
CSCS, word mark, U.K. Trademark No. 2520953, application filed on July 14, 2009, registration date November 20, 2009, classes 9, 16, 35, 37, 41.
The Respondent is the registrant of the disputed domain name, which was apparently registered in the name of “C&S Consultancy Services Limited” on February 18, 2010, and changed to “SEO Website Designers t/a Business Power UK”, being the Respondent, on October 11, 2011. The Respondent says it is a professional, high-end designer that produces websites for clients. The website to which the disputed domain name resolves was designed for a client company, directed predominantly by two persons with surnames commencing with C and S, and known correspondingly as C&S Consultancy Services Ltd. The Respondent says that C&S offers training for the CSCS card.
Lawyers for the Complainant contacted the Respondent in July 2011, asserting trademark rights and making certain demands including the transfer of the disputed domain name at cost, and offering certain concessions in return for compliance, such as no further action. The Respondent has adhered to an asking price of GBP 2,995.00.
5. Parties’ Contentions
The Complainant has produced copies of on-line documents from the IPO in support of its claim to have rights in the trademark CSCS.
The Complainant contends that the disputed domain name, whilst not identical to a trademark in which it has rights, is confusingly similar, since it contains “CSCS” and the relevant word “test”. There is a likelihood that the public will be confused into believing that the disputed domain name refers to, or is related to, the Complainant's certification scheme or an accredited testing centre.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that it was registered and is being used in bad faith.
The disputed domain name automatically forwards viewers to a web page operated by the Respondent where the disputed domain name is offered for sale for GBP 2,995.00. The website states, inter alia:
"Welcome to Test CSCS - Test CSCS is available for sale for £2995. The web url can be used for the websearch keywords Test CSCS and CSCS Test. The website receives over 14236 hits per annum (10/10/2010 - 10/10/2011) of which 6504 are for the keyword Test CSCS.
The current Google Pay Per Click for Test CSCS is £3.13 Per Click. Test CSCS is genericaly [sic] ranked Page 1 rank 2nd, 1st and 1st on Google, Bing and Yahoo for Test CSCS. The website also appears on Page 1 on Bing and Yahoo for CSCS Test.
SEO Website Designers - Search Engine Optimised Website Design. Our UK based SEO website designers produce high end custom website designs."
The Respondent is not authorised by the Complainant to use its trademarks. There is no connection between the Respondent and the Complainant’s trademarks or with certification services for the construction industry. The disputed domain name is offered for sale without any requirement that a buyer is associated with the CSCS certification scheme.
Thus, it is contended that the Respondent is not using the disputed domain name for company purposes and does not have any legitimate interest in it. A search of the online databases of the Office for Harmonization in the Internal Market (OHIM) and the IPO revealed no trademark for CSCS registered in the name of the Respondent.
It is contended that the Respondent has no discernible connection with the trademarks or signs CSCS or “Test CSCS” and there is no indication that the Respondent has been commonly known by these marks. The disputed domain name is not used for a legitimate noncommercial purpose.
The Complainant says it understands that the Respondent obtained the disputed domain name on behalf of “C&S Consultancy Services Limited” but it was transferred and registered to the Respondent on or about October 11, 2011. C&S Consultancy Services Limited is a company registered in England and Wales but a notice of strike off has been issued against it by Companies House. Until recently, C&S Consultancy Services Limited provided a conduit service between web customers seeking to obtain CSCS certification and an accredited testing centre, using the disputed domain name and without the Complainant's consent. The Complainant notified C&S Consultancy Services Limited on July 26, 2011, August 30, 2011, and September 28, 2011, that it was infringing the Complainant’s trademark by using the disputed domain name and requested that C&S Consultancy Services Limited discontinue using the disputed domain name, remove the Complainant's logo from its web pages and agree to its transfer into the name of the Complainant.
On October 12, 2011, the Complainant was notified on behalf of the Respondent that the Respondent was responsible for the disputed domain name. C&S Consultancy Services Limited had ceased using it but the Respondent would use it to direct web traffic to other websites until at least the end of the registration period (February 18, 2012) and/or would sell it unless the Complainant purchased it for GBP 2,995.00. The disputed domain name now redirects web users to the Respondent's webpage where it is advertised the sale for GBP 2,995.00. The Respondent has declined to discontinue using it unless the Complainant pays this price. It is contended that the disputed domain name was therefore registered and is used in bad faith by the Respondent.
The Complainant requests the transfer to it of the disputed domain name.
The Respondent denies the Complaint and has responded in the form of email letters.
The Respondent says that the disputed domain name was acquired on behalf of C&S Consultancy Services Ltd., which is named after the surnames of its two main directors. The Respondent was responsible for building and launching the corresponding website for C&S Consultancy Services Limited in February 2010. The website was removed in September 2011, and the Respondent owns the disputed domain name.
The Respondent relates that C&S Consultancy Services Limited acts as a training and test centre for many different qualifications. The Respondent states its belief that although C&S Consultancy Services Limited offered training for the CSCS Card, it was never done with the intention of infringing the Complainant’s copyright.
The cease and desist letter from the Complainant to C&S Consultancy Services Limited in August 2011, was discussed with the Respondent, following which C&S Consultancy Services Limited moved its website to a different URL. The Respondent is now the registrant of the disputed domain name.
The Respondent submits calculations as to the value of the disputed domain name. The website “www.testcscs.com” received over 14,236 hits in a one-year period of which 6504 were for the keyword “Test CSCS”. The website “www.testcscs.com” is stated to be rank 1, page 1, on both Yahoo and Bing in response to the search term “Test CSCS” and appears on the first page for both search engines in response to the search term “CSCS Test”. It is contended that for another domain name to achieve 1st page ranking on Google would cost GBP 3.13 per click and that 6504 hits would cost GBP 20,357.52.
The Respondent says therefore the disputed domain name is a valuable asset that it was willing to sell to the Complainant for GBP 2,995.00. There was no sale and the website was converted to a landing page and advertised there for sale.
The Respondent contends that it has no interest in the Construction Skills Certification Scheme, its qualification cards or anything related, and that the disputed domain name is merely for sale. The registration may be allowed to expire in February 2012.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. The Complainant's email of November 29, 2011, and the Respondent’s email of December 2, 2011 are taken to be unsolicited Supplemental Filings. Having reviewed them, the Panel finds that they contribute nothing sufficient to justify a departure from the expectation that the Parties will have presented their best case in the Complaint and Response. The Supplemental Filings are not admitted to this proceeding in accordance with paragraphs 10 and 12 of the Rules.
The Panel notes that the Respondent and registrant of the disputed domain name is SEO Website Designers (trading as Business Power UK), and all references to the Respondent that follow are to this entity. A number of the Respondent’s assertions purport to represent the position and intentions of its client C&S Consultancy Services Limited. In so far as C&S Consultancy Services Limited is not presently a party to this proceeding and has not been called as a witness, the Panel is alert to the hearsay status of evidence attributed to C&S Consultancy Services Limited.
A. Identical or Confusingly Similar
The Panel is satisfied on the evidence of registration documents that the Complainant holds rights in the registered trademark CSCS.
The disputed domain name <testcscs.com> comprises the common generic word “test” and the string “cscs” that is identical to the Complainant’s trademark. Whilst numerous entities may be legitimate potential users of the abbreviation “cscs”, the question to be decided under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark CSCS. In the context of the Complainant’s role and authority in the field of competency tests, the string “cscs” in the disputed domain name is found to have been elevated by the governing word “test” to a status of confusing similarity to the Complainant’s trademark. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The onus is upon the Complainant to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has stated that it has no connection with the Respondent and has not authorized it to use the trademark CSCS in any way.
The Complainant has made out a prima facie case to the effect that the Respondent does not have rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case in any way that may satisfy the Panel, of which the following are illustrative examples:
(i) before any notice to you of the dispute, your [the Respondent’s] use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel can find no evidence in the record that the Respondent is using or has used the disputed domain name for a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. There is no evidence that the Respondent, as distinct from C&S Consultancy Services Limited, has been known by the disputed domain name or by any similar name. Since the use of the disputed domain name on the Internet by the Respondent amounts to its being offered for sale with an asking price of GBP 2,995.00, there is no evidence of a noncommercial or fair use within the contemplation of paragraph 4(c)(iii) of the Policy.
Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name by a Respondent in bad faith, namely:
“(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are not exclusive and bad faith registration and use may be found otherwise.
The Respondent’s account of its date of acquisition of the disputed domain name is unclear. The Respondent’s account reads in part as follows:
“I purchased the web url: www.testcscs.com on behalf of a client who was operating under the trading name C&S Consultancy Services Ltd.”
On July 26, 2011, August 30, 2011, and September 28, 2011, counsel for the Complainant, acting on the registration details as they were at the time, sent cease and desist letters about the disputed domain name to C&S Consultancy Services Limited at a Kent address, different from the present Respondent’s name and London address. The address was valid since C&S Consultancy Services Limited replied on August 2, 2011, and at least one of the Complainant’s letters was referred by C&S Consultancy Services Limited to the Respondent in September, 2011. In its Response dated October 27, 2011, with reference to the cease and desist letter sent to C&S Consultancy Services Limited, the Respondent says:
“It was raised to my attention in September and after consulting C&S Consultancy Services the decision was made by them to change the web url and move there [sic] site to that new domain.
However I still own the website name www.testcscs.com [...] and was responsible for building and launching the site for C&S Consultancy Services Ltd”.
The Panel finds the reasonable interpretation of the Respondent’s account of events is that from the registration date of February 18, 2010, until the registration record was updated on October 11, 2011, C&S Consultancy Services Limited at its Kent address was the beneficial owner of the disputed domain name that the Respondent had registered on its behalf. C&S Consultancy Services Limited subsequently abandoned its plans for the disputed domain name and on October 11, 2011, the name and address of the registrant were changed to those of the Respondent as the new beneficial owner. For the purposes of paragraph 4(a)(iii) of the Policy therefore the Panel finds that the disputed domain name was acquired by the Respondent on October 11, 2011 and not on February 18, 2010.
After discussion of the monetary value of the website, the Respondent continues:
“As you can see from the figures above the site name is a valuable asset. I was willing to sell the name and transfer the domain registration to Construction Skills Certification Scheme Ltd for the price of £2,995.00, a figure that is a lot less they would have to pay Google to appear in the same position, however they are were not happy to accept and I converted the website to a landing page to advertise the domain name for sale.”
The evidence of a screen capture shows that by October 25, 2011, being a date two weeks later than the Respondent’s acquisition of the disputed domain name, the registration was on public offer for sale for GBP 2,995.00. The Respondent has clearly asserted that it has no interest in the Construction Skills Certification Scheme and has no intentions for the disputed domain name other than to sell it or allow it to lapse. The Panel finds on the evidence that the Respondent has used the disputed domain name primarily for the purpose of sale to either the Complainant, of which it has demonstrated prior knowledge through a working relationship, or to a competitor, which term is widely defined within the meaning of the Policy. (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279: “The natural meaning of the word “competitor” is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor”).
Given the short period of time between its acquisition by the Respondent on October 11, 2011, its being offered for sale to the Complainant, and its subsequent advertisement for sale on the Internet no later than October 25, 2011, the disputed domain name is found by the Panel to have been registered in bad faith for the purpose of profitable sale.
The Panel accordingly finds the Respondent to have registered and used the disputed domain name in bad faith in the manner contemplated by paragraph 4(b)(i) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <testcscs.com> be transferred to the Complainant.
Clive N.A. Trotman
Dated: December 14, 2011
1 Several email communications had been received by the Center prior to the Commencement of the Proceedings, which the Respondent confirmed on November 22, 2011, were to be viewed as the Response.