The Complainant is Construction Skills Certification Scheme Limited of Crawley, West Sussex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Fasken Martineau LLP, United Kingdom.
The Respondent is Ben Swarovski of Singapore, the Republic of Singapore.
The disputed domain name <cscstest.org> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2012. On August 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 16, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2012.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 4, 2012. 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 is a private limited company incorporated in the United Kingdom. Since 1995, the Complainant has developed and administered a Construction Skills Certification Scheme which entails administering certification tests examining occupational competency and health and safety awareness for construction workers in hundreds of building trades in the UK. Workers who successfully pass the relevant “CSCS Tests” for their trade receive a “CSCS Card”. This is required by many employers in the building trades and by many of the companies and governmental bodies that contract for their services. A network of accredited centers has grown in the UK to counsel and prepare workers for CSCS certification testing. The Complainant reports that it has issued more than 1.75 million CSCS Cards to date.
The Complainant has obtained the following UK and European Union (Community Trade Mark) trademark registrations consisting of or incorporating the acronym CSCS:
MARK | Reg. No. | Reg. Date |
|
CSCS (word and design) |
UK No. 2190060 |
Jan. 26, 2001 |
|
CSCS (word) |
UK No. 2520953 |
Nov. 20, 2009 |
|
CSCS (word) |
CTM No. 6347868 |
Nov. 4, 2009 |
Although the CSCS Certification scheme operates only in the UK, it attracts interest from foreign construction workers seeking to work on projects led by UK construction firms both in the UK and in other countries. The Complainant’s website at “www.cscs.uk.com” is reportedly visited by more than 150,000 separate visitors monthly.
The Respondent registered the Domain Name on July 1, 2011. The Complaint attaches screen shots of the website associated with the Domain Name in April 2012 and states that the website remained in substantially the same form at the time the Complaint was filed. The screen shots show that the website was headed “Information on CSCS Test”, followed by several paragraphs of general information about the Complainant’s CSCS tests. The website also displayed links to commercial websites offering a variety of services, including health and safety training programs, credit cards, and training for users of presentation software. The website included a reply form and a privacy policy. The latter disclosed that the website participated in the Google Adsense and Double Click advertising networks.
The Respondent failed to reply to two cease-and-desist letters from the Complainant’s counsel, and this proceeding followed. The Panel notes that the website associated with the Domain Name currently displays the same few paragraphs about the CSCS tests, and the same privacy policy referring to third-party advertising networks, but no longer displays third-party advertising links.
The Complainant argues that the Domain Name is confusingly similar to its registered CSCS mark, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant infers that the Respondent sought in bad faith, for commercial gain, to divert Internet users interested in the Complainant’s well-known CSCS testing scheme.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under 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.”
The Complainant indisputably holds CSCS trademarks registered in the UK and the European Union (EU). The Domain Name incorporates this mark in its entirety, followed by the generic word “test”. This generic addition does not avoid confusion with the mark, especially considering that the Complainant offers “CSCS Tests”. Thus, the first element of the Complaint has been established.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (and cases cited therein). The Respondent has not done so in this proceeding.
The Complainant states that it has not authorized the Respondent to use the CSCS mark in a domain name. The Policy, paragraph 4(c), includes a non-exhaustive list of circumstances demonstrating rights or legitimate interests in a domain name, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant states that the Respondent has not been affiliated with the Complainant or, to its knowledge, with any CSCS accredited test center. There is also no evidence in the record, including the website screen shots furnished with the Complaint, that the Respondent himself has been in the business of offering services related to CSCS testing or preparation, or that the Respondent has been known by a name corresponding to the Domain Name. Moreover, the Respondent deliberately participated in Google’s Adsense and DoubleClick advertising networks, as disclosed in the Respondent’s website privacy policy. According to Google’s website, these commercial advertising programs share pay-per-click advertising revenues with website owners. Using the Domain Name to display pay-per-click advertising links is not sufficient to establish use in connection with a bona fide offering of goods or services. See WIPO Overview 2.0, paragraph 2.6 (and cases cited therein). In this case, even though the Respondent’s website included some general information about CSCS testing, the Domain Name was not used solely for non-commercial, fair-use purposes, nor in connection with a business planned or operated by the Respondent.
The Panel concludes that the second element of the Complaint is established on this record.
The Policy, paragraph 4(b), offers a non-exclusive list of circumstances that are considered evidence of bad faith in the registration and use of a domain name, including this one, on which the Complainant relies:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
In this Panel’s view, the Respondent in Singapore was unquestionably aware of the Complainant’s UK CSCS testing and certification scheme. The Respondent’s website displays several paragraphs of text concerning that scheme. In fact, nothing on the website suggests any other reason for selecting the Domain Name other than to refer to the Complainant’s CSCS Tests.
Yet apart from a general description of the CSCS scheme, the Respondent’s website included only third-party commercial advertising links (removed after this dispute arose), as part of the Respondent’s disclosed participation in Google pay-per-click advertising networks. It is reasonable to infer that the Domain Name was selected and used in this manner precisely to take advantage of the Complainant’s well-known mark, to attract Internet users in the hope that some would click on the advertising links and generate revenue for the Respondent. This fits the example of bad faith described in the Policy, paragraph 4(b)(iv). The Respondent has not come forward in this proceeding, or in response to the Complainant’s earlier cease-and-desist letters, with any alternative explanation for the choice of the Domain Name.
The Panel concludes on the available record that the Domain Name was registered and used in bad faith within the meaning 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 Domain Name <cscstest.org> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: November 4, 2012