The Complainant is IFRS Foundation of London, United Kingdom, represented by Fidus Law Chambers, India.
The Respondent is Daya Nand, Dharam Raj & Co. of Delhi, India.
The disputed domain name <drcifrs.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2018. On December 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 2 and 5, 2019, the Center received two email communications from the Respondent. In response to a request for amendment by the Center on January 7 and 14, 2019, the Complainant filed an amended Complaint on January 9 and 17, 2019.
The Center verified that the Complaint together with the amended 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 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2019. On February 8, 2019, having received no further communications from the Respondent, the Center indicated it would proceed to panel appointment.
The Center appointed Luca Barbero as the sole panelist in this matter on February 18, 2019. 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 Complainant and its standard setting body International Accounting Standards Board (IASB) are responsible for the creation of a set of accounting standards called the International Financial Reporting Standards (IFRS Standards). The Complainant is also the author of literature pertaining to global finance and accounting, such as International Accounting Standards, IFRS Interpretations, and IFRS for SMEs.
The Complainant was founded in 2001 and is engaged in various projects related to standard setting, research, interpretation, and taxonomy for developing an extensive understanding of financial reporting. It works in public interest, negotiating with governments and cooperating with professionals worldwide to facilitate the adoption of the IFRS Standards.
The Complainant’s IFRS Standards have been adopted or incorporated into the national financial reporting standards of several countries. In India, where the Respondent is based, the Indian Accounting Standards 2011 converged with the IFRS Standards (with some carve-outs) and were thereafter adopted as Companies Rules in 2015.
The Complainant’s substantial source of income is through licensing of its intellectual property, including its trademarks and its proprietary IFRS Standards, to third parties wishing to use them for commercial purposes. Its annual income is of approximately GBP 32 million, of which 52% is generated through public funding from financial institutes, accounting firms, government bodies, banks and major corporations from numerous countries.
The Complainant is the owner of several trademark registrations for IFRS, including the following:
- United States trademark registration No. 4215816 for IFRS (word mark), filed on June 19, 2008 and registrered on October 2, 2012, in International classes 9, 16, 35 and 41;
- European Union trademark registration No. 012347514 for IFRS (word mark), filed on November 27, 2013 and registered on December 9, 2014, in classes 9, 16, 41 and 45;
- Indian trademark registration Nos. 1928457 for IFRS (word mark), registered on February 26, 2010, in class 35.
The Complainant is also the owner of the domain name <ifrs.org>, which was registered on March 22, 2004 and is used by the Complainant to promote its services under the trademark IFRS.
The disputed domain name <drcifrs.com> was registered on November 6, 2010 and is pointed to a website which promotes the Respondent’s chartered accountancy firm in India.
The Complainant contends that the disputed domain name is confusingly similar to its trademark IFRS since it reproduces the trademark in its entirety, creating an impression of association with the Complainant’s online service under the domain name <ifrs.org>.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name because:
i) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark IFRS in any manner, including use as a dominant part of the disputed domain name;
ii) the Respondent is illegally using the trademark IFRS in the disputed domain name with the intention to bait users into visiting the Respondent’s website and thereby making an impression that the Respondent is somehow affiliated with or endorsed by the Complainant. Moreover, there is no other reasonable explanation as to why the Respondent would adopt the Complainant’s trademark as a part of the disputed domain name.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith since:
i) the Respondent is dealing with auditing services pertaining to the Complainant’s proprietary standards and is thus aware of the Complainant’s trademark, as demonstrated also by the explicit reference to the trademark IFRS on the Respondent’s website;
ii) as the Respondent registered the disputed domain name several years after the registration of the Complainant’s domain name <ifrs.com> and was aware of the symbolic value of the Complainant’s trademark in relation to financial auditing services, it registered the disputed domain name in an attempt to cash in on an illusion of association with the Complainant;
iii) the Complainant sent a legal notice to the Respondent on July 18, 2017, and a subsequent follow up letter, on October 26, 2017, concerning the disputed domain name, but the Respondent did not respond or take any corrective measures;
iv) the Complainant also discovered the domain name <ifrsca.com>, which hosts a website identical to the one published at the disputed domain name and could be linked to the registrant of the disputed domain name, a circumstance which would demonstrate that the Respondent is probably a habitual offender having a habit of registering domain names containing the Complainant’s well-known trademark.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent 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 respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has established rights over the trademark IFRS based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex F to the Complaint.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of generic or descriptive terms or even letters or numbers does not prevent a finding of confusing similarity under the first element (sections 1.8 and 1.9 of the WIPO Overview 3.0).
The Panel notes that the disputed domain name <drcifrs.com> reproduces the trademark IFRS in its entirety with the addition of the three-letter prefix “drc”, which does not prevent a finding of confusing similarity.
In addition, the Top-Level Domain “.com” can be disregarded under the first element confusing similarity test, being a standard registration requirement (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.
In addition, there is no evidence that the Respondent might be commonly known by the disputed domain name.
As mentioned above, the disputed domain name has been pointed to a website which promotes the services of the Respondent’s chartered accountancy firm in India and makes explicit reference to the Complainant’s IFRS Standards. The Panel notes that the Respondent has failed to provide any explanation as to the reason why it selected the disputed domain name and that, while the first three letters encompassed in the disputed domain name “drc” might stand for the acronym of the Respondent’s name “Dharam Raj & Co.”, there appears to be no reasonable explanation for adopting “ifrs” in the disputed domain name other than to refer to the Complainant’s trademark.
In view of the above-described use of the disputed domain name, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel finds that the Respondent’s registration of the disputed domain name, confusingly similar to the Complainant’s prior registered trademark IFRS and its domain name <ifrs.org>, does not amount to a mere coincidence. As indicated above, the website published at the disputed domain name is used to promote the Respondent’s accountancy services, which include auditing according to the Complainant’s proprietary standards. Moreover, the Complainant’s IFRS Standards are expressly mentioned on the Respondent’s website.
In view of the above, the Panel finds that, in all likelihood, the Respondent was aware of the Complainant’s trademark and had such trademark in mind when it registered the disputed domain name.
The Panel also notes that, in view of the use of the disputed domain name to divert users to the website described above, promoting the Respondent’s services and referring also to the Complainants proprietary standards, the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the services provided therein, according to paragraph 4(b)(iv) of the Policy.
The Panel also finds that the Respondent’s failure to respond to the Complainant’s cease-and-desist letters and to the Complaint is an additional evidence of its bad faith.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by 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 <drcifrs.com> be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: March 5, 2019