WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cisco Technology Inc. v. Hidden Hidden, Open IT
Case No. D2018-0093
1. The Parties
The Complainant is Cisco Technology Inc. of San Jose, California, United States of America (“United States”), represented by Bird & Bird LLP, United Kingdom of Great Britain and Northern Ireland (“UK” or “United Kingdom”).
The Respondent is Hidden Hidden, Open IT of Stanstead, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <ukcisco.com> is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2018. On January 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2018.
The Center appointed Theda König Horowicz as the sole panelist in this matter on February 27, 2018. 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 is a multinational technology company and part of Cisco Systems, Inc. group of companies, which was founded in 1984.
The Complainant designs and markets a wide array of information and communication products, provides services and delivers integrated solutions to develop and connect networks around the world. The Complainant also offers industry-leading customer and support services, consulting and design services, as well as education, training and technology certification systems.
The Complainant has for many years been the owner of a large number of trademark registrations for CISCO (verbal and figurative) including:
- UK Trademark Registration Nr. UK00002192867, in classes 38 and 41, of October 1, 1999;
- UK Trademark Registration Nr. UK00002460941, in classes 9, 16, 35, 36, 38, 41, 42 and 45, of December 14, 2007;
- European Union Trademark Registration (EUTM) Nr.001115476, in classes 16, 38 and 41, of July 3, 2000.
The Complainant also owns several domain names containing CISCO including <cisco.com> (registered in May 1987) which is linked to its official website and <cisco.co.uk> (registered in February 1999) which re-directs to the latter.
The Complainant has used the CISCO marks to market and sell its products and services throughout the world, including the UK, for over the last 30 years.
The Complainant acquired a high level recognition for its brand in many countries, in particular in the United States and the United Kingdom.
The disputed domain name was registered on November 6, 2008. It is linked to a website which homepage states:
“Welcome to UKCISCO.com
All Cisco Certification training, including CCNA and CCNP.
As the U.K’s leading dedicated provider of Cisco training courses you can be confident that we can provide the skills you need to improve IT performance whether it is for your current job, a new career or just for personal gain using a Cisco Certification that’s right for you. You can enrol at any time and study in a classroom, or from the comfort of your own home at your own pace, with expert lecturers support on hand when you need it.
The most common issues raised amongst training providers is that skills learnt often don’t prepare you for the outside world nor how to build a career from your newly gained Cisco qualification. We recognise these issues so will help individuals with job placements with an aim to securing employment within a highly desired IT industry.
We are a UK based Learning Centre who have helped thousands of jobseekers and working professionals into IT training programmes every year. We have lecturers with years of experience who can provide one-on-one training support and progress reviews. They can give you an interview and offer invaluable guidance to a career with Cisco qualifications, as well as providing soft-skills training covering C.V Writing and Interview techniques. This support is free and is available even to people who have not registered.
We offer a wide range of Cisco courses from the very basic CCENT (for someone who only knows the basics of computing and wants to get into the Networking world) to the extremely popular CCNA - Routing and Switching for a jump start into the Networking world plus many more. Below is a breakdown of the courses we sell to try and help you choose the perfect course for you.”
The name “CISCO” is widely used on the website.
On February 7, 2017, the Complainant sent a warning letter to the Respondent asking for the transfer of the disputed domain name.
5. Parties’ Contentions
The Complainant mentions that the disputed domain name comprises the element “UK” and the trademark CISCO on which the Complainant has rights. Given that “UK” merely denotes the fact that the Respondent operates in the UK (and is therefore entirely non-distinctive), the trademark CISCO is the sole distinctive element of the disputed domain name. The disputed domain name must therefore be considered as identical or very confusingly similar to the Complainant’s CISCO mark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The fact that the Respondent offers “Cisco Certified” training courses is not a bona fide offering of goods because the training courses are in fact not certified by the Complainant and the disputed domain name website does not accurately and prominently disclose the Respondent’s relationship with the Complainant. Actually the disputed domain name and the website deliberately and misleadingly convey that the website is in fact operated by the Complainant itself. Indeed, there appears to be no reference to the Respondent’s true identity anywhere on the website.
The Complainant further indicates that the disputed domain name is used in bad faith because it refers to the Complainants CISCO marks as to the source, affiliation, certification and or authorization of the website and the services offered therein. This confusion is caused in two ways (i) by virtue of the disputed domain name itself and (ii) by virtue of the branding and content of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Delay in bringing the Complaint
The Complainant states that the disputed domain name was registered in 2008, fact which was confirmed by the Registrar. It raises the issue of whether the Complainant delayed bringing proceedings and whether this is matter that counts against it.
The time between the 2008 creation date of the disputed domain name and the filing of the Complaint in 2018 is obviously a significant period of time. The UDRP panels have recognized that the Policy contains no limitation period for making a claim and that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of: Billards Toulet v. Damon Nelson - Manager, Quantec LLC/Novo Point, LLC, WIPO Case No. 2016-2502. See also WIPO Overview of WIPO Panels Views on Selected UDRP Questions, Third Edition, section 4.17. The difficulty for a well-known brand such as CISCO to perform such systematic enforcement seems particularly understandable.
Under the above-mentioned circumstances and in the absence of any defence filed by the Respondent, the Panel has not drawn a negative inference from the delay in the filing of the Complaint.
B. Identical or Confusingly Similar
The Complainant showed that it has trademark rights in CISCO through several trademark registrations (with and without logo) in many countries, including the United States and the UK where the Respondent is based.
This trademark is reproduced in its entirety in the disputed domain name. As mentioned by the Complainant, the fact that the geographical designation “UK” is added to the word trademark CISCO is not significant.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interest in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods and services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it.
The Respondent uses the disputed domain name in relation to website which reproduces the CISCO trademark in a prominent way. In particular the Respondent offers services which it claims to be certified by the Complainant.
The Complainant alleges that the offer of “Cisco Certified” training courses by the Respondent is not a bona fide offering of goods/services because the training courses in question are in fact not certified by the Complainant and that the disputed domain name and the website deliberately and misleadingly convey that the website is in fact operated by the Complainant itself.
In this case, the Complainant has therefore made out a prima facie case against the Respondent.
The Respondent submitted no reply to the case against it. There is otherwise no evidence in the case file to suggest that the Respondent might have rights or legitimate interests in the disputed domain name.
The Panel in particular considers that the trademark CISCO is distinctive and well-known. Nothing in the case file shows that the Respondent would have genuine rights over the said CISCO mark or that it would be or would have been commercially related to the Complainant.
The website which is linked to the disputed domain name thus falsely suggests an affiliation with the trademark owner. Furthermore, it is not clear for Internet users visiting the Respondent’s website that it is not operated or sponsored by the Complainant.
For these reasons, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The third matter which the Complainant must provide is that the disputed domain name was registered and subsequently used in bad faith.
The Complainant has shown that its CISCO trademark has acquired a high level of recognition and that it can be considered as well-known in countries such as the United States and the United Kingdom, country in which the Respondent is based.
The disputed domain name could thus not have been registered in good faith by the Respondent.
Paragraph 4(b)(iv) of the Policy sets out one example of bad faith registration and use, where the Respondent “by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on its website or location”.
As already stated above, the Respondent uses the Complainant’s CISCO mark on the website which is linked to the disputed domain name. The Respondent provides services under the said disputed domain name (commercial use) and clearly gives the impression to be affiliated or sponsored by the Complainant which is not true. The Respondent does therefore obviously seek to cause confusion in the public’s mind.
The Panel notes that the Respondent has not evidenced the contrary and chose to remain silent within these proceedings.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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 <ukcisco.com> be transferred to the Complainant.
Theda König Horowicz
Date: March 19, 2018