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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CPA Australia Ltd v. Domain Admin, E-Promote

Case No. D2017-0373

1. The Parties

The Complainant is CPA Australia Ltd of Southbank, Victoria, Australia, internally represented.

The Respondent is Domain Admin, E-Promote of Las Vegas, Nevada, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cpaaustralia.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2017. On February 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2017, 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 March 2, 2017 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 March 2, 2017.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 28, 2017.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 31, 2017. 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.

4. Factual Background

The Complainant in this proceeding is CPA Australia Ltd, it was established in 1886, and (according to the Complainant) is one of the largest professional accounting membership bodies in the world. The Complainant's core services include accounting education, accreditation, training, technical support and advocacy. The Complainant accredits and administers the globally recognized CPA (Certified Practicing Accountant) professional accounting designation in Australia, New Zealand, United Kingdom of Great Britain and Northern Ireland, China, Hong Kong, China, Indonesia, Malaysia, Singapore and Vietnam. The Complainant adopted the name CPA Australia in March 2000.

The Complainant has proven to be the owner of the CPA AUSTRALIA mark.

The Complainant is inter alia the owner of the following trademarks:

CPA AUSTRALIA (word), Hong Kong, China trademark registration no. 2004B02573, filed on December 20, 2000, class 35;

CPA AUSTRALIA (word), Brunei trademark registration no. 034497, filed on December 27, 2001.

The disputed domain name <cpaaustralia.com> was registered on May 21, 2002.

The Complainant's trademark registrations predate the registration of the disputed domain name.

The Complainant's primary domain name is <cpaaustralia.com.au>.

The disputed domain name <cpaaustralia.com> resolves to a landing page containing a number of hyperlinks that relate to the Complainant's trademark and services.

5. Parties' Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant's registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

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

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

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

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark CPA AUSTRALIA.

UDRP panels have generally disregarded the generic Top-Level Domain ("gTLD") suffix under the confusing similarity test for purposes of the Policy.

If the gTLD suffix from the disputed domain name is removed, the Panel finds that the disputed domain name <cpaaustralia.com> is identical to the Complainant's CPA AUSTRALIA trademark.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the CPA AUSTRALIA trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. Indeed, the disputed domain name is used to display hyperlinks related to the Complainant's trademark and services, as well as a message informing that the domain name is for sale. Owing to the fact that the Respondent does not appear to be commonly known by the name "CPA Australia" or by a similar name, that it has no connection or affiliation with the Complainant, and that the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark, the Panel can think of no possible legitimate justification for this use, and the Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. In fact, the Respondent has not replied to the Complainant's contentions, alleging any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant's contentions that the disputed domain name was registered in bad faith and that it is being used in bad faith.

Indeed, the Complainant gives several reasons for its contention that the disputed domain name was registered in bad faith and that it is being used in bad faith.

Particularly relevant are the Complainant's unchallenged assertions (which the Panel accepts) that the Respondent is using the disputed domain name in order to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website; the fact that it is unlikely that the Respondent was not aware of the Complainant's rights in the trademark CPA AUSTRALIA when registering the disputed domain name; the fact that the disputed domain name is for sale, the fact that if the Respondent had legitimate purposes in registering and using the disputed domain name it would have filed a Response in these proceeding, and that the Respondent has taken active steps to conceal its identity by using a WhoIs privacy protect service when it registered the disputed domain name.

In view of all of these circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

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, <cpaaustralia.com>, be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: April 13, 2017

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