Cisco Technology, Inc. v. Nicholas Strecha, E-Careers LTD
Case No. D2010-0391
1. The Parties
Complainant is Cisco Technology, Inc. of San Jose, California, United States of America, represented by Fenwick & West LLP, United States of America.
Respondent is Nicholas Strecha, E-Careers LTD of Stansted, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ciscouk.com> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010. On March 15, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On March 16, 2010, 1&1 Internet AG transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on March 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2010. The due date for Response was extended to April 13, 2010 on Respondent's request. The Response was filed with the Center on April 9, 2010.
Both Complainant and Respondent submitted supplemental filings after the Response. Respondent's first supplemental filing was made on April 14, 2010, consisting of an exhibit to the Response. Complainant filed an unsolicited Reply to Respondent's Response on April 16, 2010 (with accompanying declaration of counsel); Respondent filed a Request for Complainant's Supplemental Filing to be declined, with accompanying argument, on April 22, 2010. On April 23, 2010, Complainant submitted a letter in reply to Respondent's April 22, 2010 Supplemental Filing. The content and significance of the Supplemental Filings is considered below.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on April 23, 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.
4. Factual Background
Complainant is a well-known publicly traded technology company providing a wide array of products and services, including networking and communications equipment and software. Complainant owns numerous registrations for trademarks and service marks throughout the world, including, for example, the CISCO mark in (1) the United Kingdom, Registration No. 001115476 in International Classes 16, 38 and 41 (including educational, instructional and training services), registered August 14, 2000 and (2) the United States, Registration No. 1,542,339 in International Class 9, registered June 6, 1989 and Registration No. 2,314,702 in International Class 41 (including educational services and training courses), registered February 1, 2000.
The disputed domain name was registered on July 5, 2005. The webpage to which the disputed domain name routes promote Respondent's training courses in Cisco-related technology. The webpage also contains links to Respondent's training courses for training related to Microsoft Corporation and Computer Technology Industry Association.
5. Parties' Contentions
A. Complainant
Complainant contends that it first learned of Respondent's registration of the disputed domain name in January 2010 and notes that the name is used to promote educational and training courses in competition with Complainant's. Complainant details, however, that it had previously contacted Respondent respecting the use of other domain names and logos incorporating the CISCO marks. On August 17, 2009, Complainant explains, Complainant sent Respondent a letter respecting Complainant's trademark rights, requesting that Respondent cease use with Respondent's websites of Complainant's marks and logo. The letter also requested transfer of any CISCO-related domain names to Complainant.
Complainant contends that Respondent refused to cooperate with Complainant's requests.
Confusingly Similar
Complainant contends that the disputed domain name <ciscouk.com> is identical to Complainant's famous CISCO mark, since it fully incorporates the CISCO mark, and because the addition of the geographic designation “uk” and inclusion of the gTLD “.com” are insufficient to avoid confusing similarity.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because (1) Respondent is not commonly known by the name “Cisco,” (2) Respondent is using the disputed domain name to divert Internet traffic to a commercial website, and (3) Complainant has not authorized or licensed Respondent to use its trademarks.
Registration and Use and Bad Faith
Complainant contends that Respondent registered and uses the disputed domain name in bad faith to attract Internet users to its website for commercial gain. Complainant alleges that (1) Respondent registered the disputed domain name despite actual or constructive notice of Complainant's rights in the CISCO mark; (2) the disputed domain name fully incorporates the CISCO mark without authorization; (3) Respondent uses the CISCO mark “without permission at the Domain Name”[sic]; (4) Respondent uses the disputed domain name for a website that sells training courses that are related to Complainant's products and services and that compete with Complainant's services; and (5) Respondent's domain name registration prevents Complainant from using the disputed domain name <ciscouk.com> for Complainant's legitimate purposes.
On the basis of the above allegations, Complainant requests transfer.
B. Respondent
Respondent avers that it has offered online training since October 2002, including technical certification training for Microsoft, Comp TIA, Oracle, Cisco, Novell, and ECDL/ICDL.
Confusing Similarity
Respondent disputes that Complainant only became aware of Respondent's ownership of the disputed domain name in January 2010, highlighting correspondence from August 2009, and other communications between the parties from 2005. Respondent adds that “[t]he claimant only registered the International trademark on the 3rd of July 2007.”
Respondent avers that “In good faith we have been complying with Cisco since 2005 and have altered our website on several occasions to satisfy [Complainant's] demands. Even today our ciscouk.com website has the Cisco requested disclaimer: ‘This website is a training portal for learners looking to gain a Cisco qualification only'. Since our correspondence in 2005 Cisco have left E-Careers LTD to invest further into Cioscouk.com. After over 5 years of hard work and great investments in website enhancement and optimization, Ciscouk.com is highly visible. This domain is used to offer IT Training to help students understand and use Cisco technologies. Ciscouk.com does not in any way attempt to confuse visitors as to the course suppliers.”
Rights or Legitimate Interests
Respondent states that “We offer over 1000 courseware modules across a multitude of technologies including Microsoft, Cisco, Oracle, to name just a few. The main purpose of E-Careers is to offer interactive online training. (See our main site “www.e-careers.co.uk”) As we have such an extensive range of courses, we have found that on occasion learners can become uncertain as to the page location of our few Cisco training courses. To clarify this for our shoppers we purchased various domains that only offer a small number of specific specialist courses.”
Registration and Use in Bad Faith
Respondent states: “E-Careers purchased this domain in July 2005 (Annex B) to supplement our range of domain names that are used to offer specialist IT training courses. As we offer specialist Cisco training, we decided that it would make sense to build a specialist website that offers Cisco courses. . . . We offer specialist Cisco training primarily to UK citizens. Therefore the domain CiscoUK.com simply mirrors these facts and in no way pretends to be Cisco itself. In fact in good faith we have placed a disclaimer on every webpage of the CiscoUK.com website.”
Earlier Correspondence
Respondent also noted that a law firm representing Respondent wrote to Complainant in November 2009, explaining that Respondent was “a legitimate provider of training services in relation to [Complainant's] products”; that “it is well established that downstream suppliers are entitled to use trading styles which reflect services that they offer which may incorporate or otherwise reflect the name of the company in relation to whose products the services are provided”; that Respondent “registered the domain name in 2005 and has used it since then exclusively to offer its services in relation to [Complainant's] products”; and that “our client's use of the domain name and the website to which it resolves has at all times been bona fide and at no stage has our client used the domain name or the website to advertise any other products or services whatsoever.”
The law firm also contended that following earlier correspondence related to Complainant's trademark rights, Complainant had “clearly acquiesced” to Respondent's continued use of the disputed domain name, and that Respondent had expended considerable sums developing the website.
6. Discussion and Findings
A. Unsolicited Supplementary Submissions by the Parties
Whether a panel should consider the matters raised in the parties' unsolicited supplementary submissions to the Center filed after the filing of the Response is left to the discretion of the Panel under Rules, paragraphs 10 and 12. Here, as explained below, the Panel elects to consider the supplemental submissions.
It has been noted that “Rule 12 . . . unambiguously provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules for a party to file an additional submission without leave of the Panel. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.”
Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,
WIPO Case No. D2001-1447. Whether to accept supplemental filings requires determination on a case by case basis. E.g., id., (citing Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905).
Under most circumstances, this Panel believes, supplemental submissions should be discouraged under the Rules. However, in addition to the parties using their supplemental submissions to bolster prior arguments, the submissions also address the defense of acquiescence raised by Respondent in its Response. Some of the specific facts upon which Respondent's claim that Complainant acquiesced to use of the disputed domain name did not appear in either party's initial filings, but first surfaced in the May 16, 2010 Reply to Response, to which Respondent added more information in its filing of May 22, 2010.
Under the present circumstances, the Panel believes that consideration of the supplemental submissions serves the interest of fairness. Weighed against the need for due expedition, the Panel finds such consideration to be warranted – especially since the unsolicited supplementary submissions were all filed before the case was assigned to this Panel.
B. Applicable Standards
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
C. Identical or Confusingly Similar
Although the disputed domain names are not identical to Complainant's CISCO trademark, the Panel agrees with Complainant and concludes that the disputed domain name is confusingly similar to Complainant's trademark.1
The disputed domain name <ciscouk.com> is made up of the simple combination of Complainant's trademark and the widely used abbreviation for the United Kingdom.
Many cases have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. Gopan P.K.,WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”). Moreover, UDRP panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. Vat.com,
WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,
WIPO Case No. D2006-1315.
The Panel finds that the addition of the term “uk” to Complainant's trademark does not alter the confusion with Complainant's marks that Internet users would experience; it follows that the disputed domain name is confusingly similar to Complainant's trademark.
Therefore, the Panel concludes that the Complaint makes the required showing under Policy, paragraph 4(a)(i).
D. 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 interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once the complainant has made a prima facie showing, the burden to come forward with evidence establishing rights or legitimate interests shifts to the respondent. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270 cited in Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield,WIPO Case No. D2008-0754.
The Complaint alleges that Respondent did not have legitimate interests because Respondent is not commonly known by the name “Cisco,” not authorized to use Complainant's trademarks and that Respondent uses the disputed domain name to divert Internet traffic to a commercial website.
Respondent appears to concede that Respondent is not commonly known by the disputed domain name.
Respondent does not dispute that it uses the disputed domain name commercially; Respondent concedes that the domain name resolves to a website which promotes the training courses that Respondent offers. That site also includes links to Respondent's primary website. The Panel finds, therefore, that Respondent is not making a noncommercial or fair use of the disputed domain name.
The Panel also finds that Respondent is not making a bona fide use of the disputed domain name.
Respondent avers that the disputed domain name is used only in connection with Respondent's training courses related to Complainant's products. The evidence, however, proves otherwise. Exhibits submitted by both parties in the form of screen prints of the webpages to which the disputed domain name resolves show that Respondent's webpage displays links to training courses on platforms of Complainant's major competitors, Microsoft Corporation and Computer Technology Industry Association.
Even if Respondent were an authorized distributor or reseller, Respondent would not be able to prove bona fide use because of its commercial offerings in competition with Complainant. It is commonly held that “[a] reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods . . . .” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Para. 2.3 (emphasis supplied).
From the record, it appears that Respondent's offering of training on Cisco technology itself is in competition with Complainant's products and services, in addition to displaying links to training on technologies that compete with Complainant's products and services. Respondent is not actually offering Complainant's services. Therefore, the Panel rules that Respondent is not making a bona fide offering of goods and services limited to the trademarked goods under the disputed domain name.
Potential Defense of Acquiesence
The Response to the Complaint and the parties' supplemental submissions also raise the question of acquiescence by Complainant to Respondent's use of the disputed domain name. However, as explained below, the Panel concludes that any potential defense of acquiescence is thwarted by the nature of Respondent's actual offerings, including those that compete with Complainant's trademarked goods and services.
The supplemental filings show that in 2005 and 2006, Respondent sent correspondence to Complainant's trademark counsel which disclosed Respondent's use of the disputed domain name. Respondent avers that it made considerable investment in the website associated with the disputed domain name since 2005 in reliance on Complainant's knowledge and acquiescence. Respondent rests its claim of acquiescence on the authority of Assembled Products Corporation v. Uppgroup Inc.,
WIPO Case No. D2009-1223, a case in which the complaint failed to establish the absence of legitimate interest in a respondent that for several years sold genuine products of the complainant in association with authorized distributors.
Complainant in the present proceeding initially denied having knowledge of Respondent's use of the disputed domain name before January 2010. After Respondent raised the question of earlier knowledge in its Response, Complainant submitted its unsolicited Reply, attaching a declaration of Complainant's trademark law firm. The trademark counsel's declaration conceded that Respondent's use of the domain name surfaced in 2005 correspondence over other unauthorized use of Complainant's marks, between Respondent and Complainant's trademark firm. Due to an inadvertent filing error by the law firm, counsel declares, Complainant was never alerted to the use of the domain name.
As a legal matter, Complainant contends that the doctrines of acquiescence or laches do not apply under the Policy, citing HRB Royalty, Inc. v. Asif Vadaria, WIPO Case No. D2007-1658, The E.W. Scripps Company v. Sinologic Industries,
WIPO Case No. D2003-0447, and The Hebrew University of Jerusalem v. Alberta Hot Rods,
WIPO Case No. D2002-0616.
Complainant seeks to distinguish the present circumstances from those before the panel in Assembled Products Corporation, supra, pointing out that Respondent “here is not a reseller of Cisco goods or services but, rather, offers services that compete with Cisco's authorized training services.”
The Panel agrees with Complainant that the Assembled Products Corporation case is distinguishable from the present case. Respondent is not a reseller, and instead offers competing services. These are pivotal facts that defeat Respondent's claim to a legitimate interest and render the authority cited by Respondent inapplicable.
Assuming, without deciding, that there exists a defense of acquiescence in UDRP cases, therefore, the Panel rules that Respondent has failed to establish its applicability to the present case.2
The Panel finds that (1) Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests, and (2) that Respondent has failed to refute Complainant's prima facie case. The Panel concludes the second element of paragraph 4(a) of the Policy is therefore fulfilled.
E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,
WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Respondent concedes that it had actual knowledge of Complainant's trademarks; Respondent makes a business by providing training on Complainant's technologies.
The Panel also infers from Respondent's statements that the disputed domain name was registered with the intention to attract Internet users to the website at the disputed domain name for commercial gain, by creating a likelihood of confusion with Complainant's marks.3 Under the circumstances, therefore, the Panel concludes there is no question that using the CISCO trademark in the disputed domain name constituted registration in bad faith.
Respondent contends that it does not attempt to confuse visitors to its website as to the source of the courses on offer and that Respondent also posts disclaimers. Screen shots submitted by both parties show the unauthorized display on Respondent's website of Complainant's logo and the statement “Welcome to Cisco UK training” (rather than identifying Respondent's company by name). These are clear indications of Respondent's intention to confuse website visitors. Moreover, it is well established that the existence of a disclaimer cannot cure bad faith when bad faith has been shown by other factors. Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna,WIPO Case No. D2000-0869 (citing E. & J. Gallo Winery v. Hanna Law Firm,
WIPO Case No. D2000-0615; DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181)).
As the Panel has already noted, Respondent's website shows that the disputed domain name is used not only to promote Complainant's products, but also to promote the products of Complainant's competitors. The Panel concludes that this activity further demonstrates bad faith use by Respondent. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; CasioKeisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,
WIPO Case No. D2003-0400; and Downstream Technologies, LLC v. BartelsSystem GmbH,
WIPO Case No. D2003-0088).
Having found that the circumstances establish bad-faith registration and use, the Panel concludes that the requirements of Policy, paragraph 4(a)(iii) are fulfilled. It is unnecessary, therefore, to address the other allegations of the Complaint respecting bad faith.
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 <ciscouk.com> be transferred to Complainant.
Jeffrey D. Steinhardt Sole Panelist
Dated: May 7, 2010
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