WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Construction Skills Certification Scheme Limited v. Global Domain Privacy / Umer Mansoor
Case No. D2013-1400
1. The Parties
The Complainant is Construction Skills Certification Scheme Limited of London, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Fasken Martineau LLP, UK.
The Respondent is Global Domain Privacy of Bergamo, Italy / Umer Mansoor of London, UK, self-represented.
2. The Domain Name and Registrar
The disputed domain name <cscs-cards.com> is registered with Register.IT SPA (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2013. On August 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2013, the Registrar 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 the Complainant on August 12, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 16, 2013.
The Center verified that the Complaint together with the amendment to 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 August 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2013. The Center received a communication from the Respondent on September 6, 2013. The Center informed the Complainant about the possibility to suspend the proceedings to explore a possible settlement between the parties until September 12, 2013. On September 11, 2013, the Complainant requested the Center to continue with the proceedings and submitted at the same time Supplemental Filings in response to the Respondent’s communication.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on September 19, 2013. 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.
The Panel has considered the supplemental filing of a Reply to Response submitted by the Complainant on September 11, 2013. The Rules, as pointed out by the Center to the Complainant, do not make express provision for supplemental filing by either party except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of Supplemental Filings received from either party. The Panel has considered the Complainant’s Reply but has decided that given a full Complaint from the Complainant and the correspondence received from the Respondent it is not necessary for it to take into account the Reply in order to determine the Complaint. Accordingly the Panel proceeds to determine the Complaint on the basis of the Complaint as filed and the correspondence received in response from the Respondent.
4. Factual Background
The Complainant is a company based in the United Kingdom that set up and administers a scheme by which works in the construction industry can be assessed and certified for occupational competency and health and safety awareness. If they meet the required standards, including passing a health, and safety test, they are issued with cards as proof of that competency and awareness. The scheme’s full name is the Construction Skills Certification Scheme but it is generally known and referred to by its acronym CSCS. The test taken by workers and the cards issued under the scheme are almost exclusively known and referred to as “CSCS Tests” and “CSCS Cards” respectively and the process of obtaining a “CSCS Card” is referred to as “CSCS certification”. Over 1.8 million CSCS Cards have been issued to date.
CSCS was established in 1995 and since that time has become the industry standard competency card scheme for construction, not least because it covers the many hundreds of occupations which are found within the construction. By way of example some of the occupations covered are listed by the Complainant including:-
(i) Craft and operative occupations, e.g. antenna installers, bricklayers, carpenters and joiners, craft masons, drillers, fencer installers, glaziers, landscape operatives, painters and decorators, plasterers, stone masons, tunnelers, upholsterers.
(ii) Technical supervisory and management occupations, e.g. architects, building control officers, building site managers, conservation consultants, construction health and safety managers, demolition engineers, highways maintenance managers, quantity surveyors.
(iii) Construction related occupations, e.g. acoustic consulting engineers, blacksmiths, catering equipment installers, computer systems installers, diving and underwater engineers, haulers, land surveyors, locksmiths, miners etc.
Because of its comprehensive nature and because it provides a simple way for construction workers, supervisors and managers to prove their competence in a consistent manner, most major trade associations, professional institutions, clients and contractors on construction projects support CSCS. Further the UK government makes it a requirement in all government construction contracts that the workforces of the contractor hold a CSCS Card or equivalent. By way of example the Olympic Delivery Authority committed to ensuring every worker on one of its sites held a CSCS Card. At annex 4 to the Complaint is a print-out of an on-line report on the Olympic Delivery Authority’s health and safety policy.
A network of accredited centers has also been established throughout the UK which advise on and prepare workers for the relevant health and safety test. As mentioned above once a worker has passed a prescribed test, he or she can be issued with a CSCS Card.
The Complainant has taken steps to protect the CSCS sign as a registered trademark. It produces in evidence details of the following marks:
(i) UK trademark number 2190060 (certification mark; CSCS logo) – filed on February 24, 1999 and registered on January 26, 2001.
(ii) UK trademark number 2520953 (CSCS word) – application filed on July 14, 2009 and registered on November 20, 2009.
(iii) Community trademark number 6347868 for (“CSCS” word) – application filed on November 1, 2007 and registered on November 4, 2009.
Register entries for the marks are exhibited at annex 5 to the Complaint. The marks cover a range of goods and services of particular relevance to the Complainant’s activities including classes 41, 16, 9 and 35.
The Complainant submits that it has built up a substantial reputation and goodwill in the mark and sign CSCS both within the United Kingdom and internationally. Whilst the scheme currently only operates in the UK it is known internationally due to the cross-border nature of the construction industry. UK led construction projects are carried out all over the world and many construction workers particularly from Eastern European countries and Ireland, migrate to the UK to work on construction sites within the country and accordingly require CSCS certification. As well as the 1.8 million plus CSCS Cards issued to date the Complainant’s reputation and goodwill in the mark and sign CSCS is evidenced by the fact that it receives over 150,000 different visitors to the website located at “www.cscs.uk.com” for its scheme every month. The mark and sign CSCS is of significant commercial value to the Complainant as designating against certification scheme.
The Complainant points out that it has made efforts to enforce its rights so as to protect the substantial reputation and goodwill it has developed in the mark and sign in particular it refers to five previous UDRP complaints filed with the Center in which the Complainant has been successful.
In the absence of evidence to the contrary from the Respondent the Panel accepts the above evidence adduced by the Complainant to be true and in particular finds that it owns the registered trademarks referred to above and that it has built up and registered rights in the marks and sign CSCS within the United Kingdom and internationally as asserted above.
The history of the dispute starts with a letter from the lawyers representing the Complainant, Fasken Martineau LLP, dated May 14, 2012 to Construction Helpline Limited of London, UK. The letter complains of the alleged use of the disputed domain name <cscs-cards.com> by Construction Help Line Limited. It points out that the disputed domain name was registered on December 31, 2010 and that some time later Construction Help Line Limited launched a website using the disputed domain name which urged the public to book health and safety tests for CSCS Cards and purchase CSCS Cards through Construction Help Line Limited rather than the Complainant. The letter seeks appropriate undertakings. There does not appear to have been a response to that letter and a further letter was sent by Fasken Martineau LLP dated June 11, 2012, requesting undertakings. No response appears to have been received but on August 3, 2012 Fasken Martineau LLP wrote indicating that the Complainant is grateful that Construction Help Line Limited appears to have discontinued using the disputed domain name. On August 7, 2013 the present Complaint was filed.
The Registrar confirmed that the registrant is Umer Mansoor of London, UK.
Email correspondence was subsequently received from Mr. Mansoor which the Panel has considered beginning with an email of September 6, 2013 to the Center in which he stated that “I or any company associated with domain <cscs-cards.com> has not breached any Intellectual Property rights”. He went on to state that if the Complainant was interested in purchasing the disputed domain name then they were interested in selling it. On September 6, 2013 the Center indicated that it would treat the email of the same date as the Response to the Complaint, unless advised otherwise by the Respondent. There does not appear to be any further correspondence from Mr. Mansoor.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to the trademark CSCS in which the Complainant has rights.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of authorisation or licensing by the Complainant to use the marks and there is no evidence of any connection between the marks and the Respondent.
The disputed domain name was registered and is being used in bad faith. In particular the Respondent’s continued unauthorised use of CSCS gives the “incorrect impression” to web users that the Respondent is the proprietor of the scheme and/or connected to the Complainant.
The Panel has taken into account the correspondence from the Respondent to the effect that it denies infringing the Complainant’s intellectual property rights and is prepared to sell the disputed domain name. There are no other submissions in response.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel has already accepted the evidence as to the Complainant’s trademark rights. The Complainant has rights in the mark and sign CSCS and also in the logo CSCS. The disputed domain name <cscs-cards.com> is not identical to those marks, but the dominant part of the disputed domain name is the word CSCS followed by the descriptive term cards and in those circumstances the Panel finds that the disputed domain name is confusingly similar to the trademarks owned by the Complainant. The Panel also accepts the force of the submission by the Complainant that as the Complainant uses the CSCS mark to identify its UK certification scheme and the cards that are a key feature of it, the use of “cards” in the disputed domain name will create confusion, as it increases the likelihood that the public will understand the disputed domain name to refer to or be related to the Complainant scheme or an accredited testing center.
Accordingly the Panel finds for the Complainant in respect of this element.
B. Rights or Legitimate Interests
The Complainant submits that there is no evidence that the Respondent is authorised or licensed by the Complainant to use the marks or sign CSCS. It points out that there is no evidence that the Respondent has any discernible connection with the marks or sign CSCS, nor is there an indication that the Respondent is being commonly known by those signs.
The evidence of use of the disputed domain name by the Respondent shows that it appears to participate in pay-per-click advertising schemes, such as Google’s AdSense and Double Click advertising networks as evidenced by the appearance of the “Ad Choices” symbol on the Respondent’s website. In the Complainant’s submission using the disputed domain name to display pay-to-click advertising links is not sufficient to establish use and connection with a bona fide offering of goods or services. Even though the Respondent’s website includes general information about CSCS testing and CSCS cards, the disputed domain name does not appear to be used solely for noncommercial, fair-use purposes, nor in connection with a business plan or operated by the Respondent.
The Complainant also refers to the use of the disputed domain name by Construction Help Line Limited, which was the recipient of the initial demand letter from Fasken Martineau LLP.
In these circumstances and taking into account the absence of any concrete submissions by the Respondent, the Panel finds the disputed domain name is not being used in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in respect of the disputed domain name, within paragraph 4(c) of the Policy or otherwise.
C. Registered and Used in Bad Faith
The disputed domain name directs web users to the Respondent’s website which provides general information about the CSCS scheme and through which the Respondent displays third party advertising. The Respondent has no connection with CSCS and is not accredited or authorised by CSCS in any way and is not in fact offering CSCS tests. On this basis the Complainant admits that the disputed domain name was registered and is being used in bad faith, since it takes unfair advantage of the Complainant’s legitimate rights.
In the Complainant’s view, this would constitute both passing off and trademark infringement under United Kingdom law.
The Complainant further submits that the continued unauthorised use of CSCS gives the incorrect impression to web users that the Respondent is the proprietor of the scheme and/or connected to the Complainant. This is incorrect and constitutes a misrepresentation. The Complainant submits that it is therefore likely that the choice of the disputed domain name was made with the deliberate intention of taking advantage of the Complainant’s reputation in the CSCS mark. This, in the Complainant’s view, is not only unfair towards the Complainant, which has invested considerably to build its reputation in the mark, but also towards third party users of the website. Moreover it leads web users away from the Complainant’s own website and thus puts the Complainant’s reputation at risk of damage. The Complainant submits that it is reasonable to infer that this was done to take advantage of the Complainant’s well-known mark and to attract Internet users to the Respondent’s website. The Panel, in the absence of a concrete submission from the Respondent accepts these submissions and finds registration and use in bad faith by the Respondent.
The Panel has also considered the correspondence received by Mr. Mansoor, which he indicates that he is willing to sell the disputed domain name. In the Panel’s view, this is further evidence of bad faith.
Accordingly, the Panel finds for the Complainant in respect of each element.
For 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 <cscs-cards.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: October 1, 2013