Cisco Technology, Inc. v Mohammad Malik

WIPO Case No. D2024-2127

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Cisco Technology, Inc. v. Mohammad Malik

Case No. D2024-2127

1. The Parties

Complainant is Cisco Technology, Inc., United States of America (“United States” or “U.S.”), represented by

Fenwick & West, LLP, United States.

Respondent is Mohammad Malik, United States.

2. The Domain Name and Registrar

The disputed domain name <ciscoacademy.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2024. On

May 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On May 25, 2024, 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 initially named Respondent (Customers of Domains by Proxy, LLC, Registration

Private) and contact information in the Complaint. The Center sent an email communication to Complainant

on May 28, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting

Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May

31, 2024.

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 Respondent of the Complaint,

and the proceedings commenced on June 3, 2024. In accordance with the Rules, paragraph 5(a), the due

date for Response was June 23, 2024. Respondent did not submit a formal response. On June 23, 2024,

the Center received an email communication from an email address associated with Respondent which

stated in part, “Please consider this my initial response”, followed by a list of contentions and Respondent’s

request “that the complaint be dismissed on these grounds.” On June 24, 2024, the Center confirmed

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receipt of Respondent’s communication and treatment as its Response and instructed the Parties on

submitting panelist preferences for the appointment of the three-member panel requested by Complainant.

On August 1, 2024, Complainant filed the supplemental filing in reply to Respondent’s Response

communication.

The Center appointed Scott R. Austin, Brian J. Winterfeldt, and Kimberley Chen Nobles as panelists in this

matter on August 13, 2024. The Panel finds that it was properly constituted. Each member of 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

Without contest by Respondent, Complainant asserts in its Complaint as amended, and its Annexes

attached provide evidence sufficient to support that:

Cisco Systems, Inc., a Delaware corporation, and its affiliate, Cisco Technology, Inc., a California corporation

(collectively “Complainant”) since 1984 has provided a broad spectrum of products and services, including

networking and communications equipment, software, and related technology goods and services under the

trademark CISCO (the “CISCO Mark”). Complainant asserts through such longstanding use, promotion, and

advertising worldwide, the CISCO Mark has become recognized as internationally famous and well known.

Complainant has more than 75,000 employees in countries throughout the world.

Since at least as early as 1998 in the United States, Complainant has also established trademark rights in

connection with its training platform and provides a wide range of educational services for networking,

including testing and certification services for determining professional skills in the field of networking

equipment, software, and computer systems under the trademark CISCO NETWORKING ACADEMY (the

“CISCO NETWORKING ACADEMY Mark”).

Complainant holds numerous trademark registrations for the CISCO Mark and the CISCO NETWORKING

ACADEMY Mark in the U.S. and around the world including:

1.        U.S. Registration No. 1542339, CISCO, filed on June 13, 1988, registered on June 6, 1989, for

“computer hardware for interconnecting local area networks, namely gateways and parts therefor,” in

International Class 9 and claiming a first use date of December 27, 1984.

2.        U.S. Registration No. 2314702, CISCO, filed on March 18, 1999, registered on, February 1, 2000, for

“Educational services, namely, conferences, training courses, testing, workshops and distributing

course materials in connection therewith, all in the fields of network communications, managing,

operating and using local, wide and global area networks,” in International Class 41 and claiming a

first use date of April 1, 1992.

3.        U.S. Registration No. 4266900, CISCO NETWORKING ACADEMY, filed on November 16, 2011,

registered on January 1, 2013, for “Providing career information; providing testing to determine

employment skills for professionals in the fields of computer networking and computer network

architecture” in International Classes 35 and 41, and claiming a first use date of January 9, 1998.

Complainant has also registered numerous domain names that incorporate the CISCO Mark, including

<cisco.com>, used to access the official CISCO website (the “Official CICSO Mark Website”) where it

promotes its networking and communications products and training services in connection with the CISCO

Mark, as well as owning <cisco.us>, <cisco.net>, <cisco.info>, and others.

The disputed domain name was created on May 24, 2002, and as of the date of the filing of the Complaint,

May 24, 2024, was inactive, resolving to a blank page with no content. Evidence submitted by Complainant

from the publicly-available Internet Archive, however, as well as independent investigation by the Panel

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showed historical bad faith activity by Respondent purportedly implying an affiliation with Complainant and

exploiting its CISCO Marks, including resolving to a Respondent website providing services in competition

with Complainant’s services: “CyberNet Technologies”, an “Internet Service Provider offering a wide range

of user-oriented services including dialup access from various points throughout Los Angeles, as well as

direct Internet connections to anywhere in the United States,” and additional bad faith uses more specifically

set forth in Section 6.D below.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

disputed domain name. Complainant contends that the disputed domain name is identical or confusingly

similar to Complainant’s trademark. Complainant contends it has well established registered and

incontestable trademark rights in the CISCO Mark and the CISCO NETWORKING ACADEMY Mark and the

disputed domain name is confusingly similar because it incorporates the CISCO Mark in its entirety. The

addition of the term “academy” in the disputed domain name does not prevent confusing similarity with

Complainant’s Mark under the Policy.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed

domain name because Respondent has no commercial relationship with Complainant or license to use the

disputed domain name or Mark, is not commonly known by the disputed domain name or the CISCO Mark,

and Respondent currently makes no use of the disputed domain name, resolving to a blank page. Further,

Respondent cannot claim rights or legitimate interests in the disputed domain name because in the past

Respondent has used it for illegitimate purposes to impersonate Complainant and/or redirect users to

Respondent’s website for Respondent’s commercial gain.

Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith

based on the unauthorized use of Complainant’s internationally famous and well-known CISCO Mark in the

disputed domain name in order to attract Internet users to Respondent’s website by creating a likelihood of

confusion with Complainant and its CISCO Mark as to the source, sponsorship, affiliation, or endorsement of

Respondent’s website. Further, Respondent has added “academy” to amplify this false association, and to

fraudulently imply that Respondent and its disputed domain name is affiliated with Complainant and its

training and certification services. Combining Respondent’s configuration of its disputed domain name in

using the CISCO Mark in its entirety to imply affiliation with Complainant to pursue the illegitimate purposes

for which the disputed domain name has been used as listed in Section 6.D below is sufficient to show bad

faith registration and use under the Policy.

B. Respondent

Respondent did not submit a formal response to Complainant’s contentions. In its email communication of

June 23, 2024, which Respondent characterized as its Response, and the Center accepted as the

Response, Respondent contended as follows:

1.        The disputed domain name currently hosts no active website, product, service, or training. There is no

content available on the site that relates to Cisco Systems, its products, services, or training programs.

Therefore, it is not possible for any visitor to be misled into believing the disputed domain name is

associated with Cisco Systems.

2.        A current search on search engines for the disputed domain name does not return any relevant

content or links associated with the disputed domain name and that this “further supports the fact that

the domain is not being used to attract or mislead visitors.”

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3.        The disputed domain name was registered 22 years ago. Since its registration, all dues have been

paid consistently. The long-term registration of this disputed domain name indicates a legitimate

interest in maintaining the disputed domain name, rather than any intent to exploit or mislead.

4.        Respondent next contends that because “Cisco” is a name shared by multiple cities in the United

States, including California, the use of the term “cisco” in the disputed domain name “can be

reasonably associated with geographical locations rather than solely with [Complainant] Cisco

Systems, Inc.”

5.        Respondent contends that while Complainant holds trademarks for CISCO and CISCO

NETWORK[ING] ACADEMY, the existence of these trademarks does not preclude the legitimate use

of the term “cisco” in all contexts. Given the geographical significance and the absence of any active

content related to Cisco Systems on the disputed domain name, the use of the disputed domain name

does not constitute an infringement or misuse of these trademarks.

6.        The printouts of Internet archive records for the disputed domain name provided in Annexes I and J

are almost 22 years old. Even those records do not reference Cisco brand/trademarks, products, or

services of any kind. Additionally, any content from that time may have been the result of a default

web-hosting configuration.

7.        The information shown in Annex K pertains to a different domain name, <itacademy.com>. The

relevance of this information to the current dispute is unclear. The domain name <itacademy.com> is

not related to the domain name in question and should not be considered in the context of this dispute.

In summary, Respondent contends that the disputed domain name is not being used in bad faith. There is

no content on the site that could mislead visitors into associating it with Complainant, nor is there any

evidence of intent to exploit Complainant’s trademarks.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements

and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it

deems applicable.

The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the

decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph

4(a) of the Policy have been established before any order can be made to transfer a domain name. As the

proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of

the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party

needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO

Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on

the balance of probabilities that:

1.        the disputed domain name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights; and

2.        Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3.        the disputed domain name has been registered and is being used in bad faith.

The Panel will deal with each of these requirements in turn.

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A. Preliminary Matter: Complainant’s Unsolicited Supplemental Filing

As a preliminary matter, the Panel notes that Complainant submitted an unsolicited supplemental filing after

receipt of the informal Response and prior to the appointment of the Panel as a reply to the informal

Response, which Complainant states “is necessary because Respondent denies that the [disputed domain

name] is being used in bad faith, relying primarily on the fact there is no content currently at the site, and

there is no evidence of intent to exploit Complainant’s trademark.”

Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance,

materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole

discretion, to request further statements or documents from either of the Parties, this does not preclude the

Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v.

Alexander Lehner, WIPO Case No. D2001-1447. In the present case, Complainant’s unsolicited

supplemental filing provides information about its Annexes questioned by Respondent in the informal

Response and seeks to rebut statements in the informal Response. While the Panel finds that much of

Complainant’s supplemental filing is reiterative of Complainant’s original arguments, the Panel has decided

to accept it for the sake of completeness and additional facts relating to clarification on relevance of

Complainant’s Annex evidence of website screenshots attributed to Respondent prior to the creation date of

the disputed domain name.

B. Identical or Confusingly Similar

To prove this element, Complainant must first establish that there is a trademark or service mark in which it

has rights. Ownership of a nationally registered trademark constitutes prima facie evidence that the

complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO

Overview 3.0, section 1.2.1. It is evident that Complainant possesses substantial and internationally

recognized rights to the CISCO Mark. Complainant has been utilizing the CISCO Mark since 1984,

promoting a broad spectrum of products and services, including networking and communications equipment,

software, and training and certification services. Complainant’s rights extend to its training and certification

services under the CISCO NETWORKING ACADEMY Mark. This mark, in continuous use for over two

decades, is protected by U.S. federal registration and various international registrations, thereby solidifying

Complainant’s exclusive rights. Sufficient evidence has been submitted in the form of electronic copies of

valid and subsisting international trademark registration documents in the name of Complainant and

therefore, Complainant has demonstrated it has rights in the CISCO Mark. See Advance Magazine

Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

Further, the global fame of the CISCO Mark is well-documented in the decisions of prior UDRP panels cited

by Complainant. See, e.g., Cisco Technology, Inc. v. Ross Mueller, WIPO Case No. D2007-1575; and

Cisco Technology, Inc. v. Matthew Archer, International Computer Purchasing Ltd, WIPO Case No.

D2012-0563.

With Complainant’s rights in the CISCO Mark established, the remaining question under the first element of

the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s CISCO

Mark. 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

the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.

Prior UDRP panels have held the fact that a domain name which wholly incorporates a complainant’s

registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the

addition of other words to such marks. WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is

recognizable within the disputed domain name, the addition of other terms [whether descriptive,

geographical, pejorative, meaningless, or otherwise] would not prevent a finding of confusing similarity under

the first element”); see also, BNP Paribas v. Ronan Laster, WIPO Case No. D2017-2167.

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The disputed domain name incorporates Complainant’s CISCO Mark in its entirety and adds the term

“academy”. Respondent’s addition to Complainant’s Mark of this term to form the disputed domain name

would not prevent a finding of confusing similarity as noted in the UDRP precedents cited above.

Complainant also contends Respondent’s selection of this term is to amplify the likelihood of confusion

among consumers, particularly given Complainant’s established “Cisco Networking Academy” services, but

this is an issue more appropriately considered under the second and third elements of the Policy. The

addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant in determining whether the disputed

domain name is confusingly similar. See, Research in Motion Limited v. thamer Ahmed Alfarshooti, WIPO

Case No. D2012-1146; WIPO Overview 3.0, section 1.11.1.

Based on the above, the Panel finds that the added term “academy” does not prevent a finding of confusing

similarity between the disputed domain name and Complainant’s CISCO Mark. Complainant’s well-known

CISCO Mark remains fully recognizable as incorporated in its entirety into the disputed domain name and the

appended term is found in Complainant’s registered and distinctive CISCO NETWORKING ACADEMY Mark.

The similarity in domain names is consistent with previous UDRP decisions, where even slight deviations or

additions to a well-known trademark have not been deemed sufficient to avoid confusing similarity. See,

e.g., Cisco Technology, Inc. v. Maksim Gorbacevich, WIPO Case No. D2023-5414; and Cisco Technology,

Inc. v. Jose Quihue Cusi, WIPO Case No. D2023-4438. Accordingly, the Panel finds the disputed domain

name is confusingly similar to the CISCO Mark in which Complainant has rights. Complainant has satisfied

its burden under Paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Under the second element of the Policy, the complainant has to make out a prima facie case that the

respondent does not have rights to or legitimate interests in the disputed domain name, and if successful the

burden of production on this element shifts to the respondent to come forward with relevant evidence

demonstrating rights to or legitimate interests in the disputed domain name. If the respondent fails to come

forward with such evidence, a complainant is deemed to have satisfied the second element. WIPO Overview

3.0, section 2.1. See also The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--

Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac

Goldstein, WIPO Case No. D2011-2069.

Paragraph 4(a)(ii) of the Policy also directs an examination of the facts to determine whether a respondent

has rights or legitimate interests in a domain name. Paragraph 4(c) lists a number of ways in which a

respondent may demonstrate that it does have such rights or legitimate interests.

The first example, under paragraph 4(c)(i), is where “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”.

Here, the annexes to the Complaint show that the disputed domain name is currently inactive; it resolves to

a blank page with no content. Respondent admits in his informal Response that the disputed domain name

is inactive, that it “currently hosts no active website, product, service, or training.” Respondent has failed to

adduce any evidence with his informal Response of preparations to use the disputed domain name for any

bona fide offering of goods or services. Prior UDRP panels have held Respondent’s current use of the

disputed domain name to resolve to a blank page lacking content is not evidence of a bona fide service or

offering of goods under the Policy. See Pet Plan Ltd v. Marc Castonguay, WIPO Case No. D2015-2116.

Complainant further contends that good faith use by Respondent is implausible here as Complainant has

submitted historical evidence of the disputed domain name previously resolving to websites featuring content

showing bad faith uses, configured to create confusion and attract and redirect Internet users seeking

Complainant’s training and certification services to Respondent’s website providing services in competition

with those of Complainant. Complainant also contends the fact that Respondent continues to renew the

disputed domain name and has taken multiple opportunities to falsely associate the disputed domain name

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with Complainant as described in more detail in Section 6.D. below provides further evidence of the

implausibility of Respondent ever using the disputed domain name in good faith.

Respondent asserts in response to Complainant’s claim of bad faith use by Respondent that the disputed

domain name currently hosts no active website, product, service, or training, and, therefore, because there is

no content on Respondent’s website that relates to Complainant or its products, services, or training

programs, it is not possible for any visitor to be misled into believing the disputed domain name is associated

with Complainant.

Respondent further asserts that because he has consistently paid the “dues” to maintain and renew the

disputed domain name since it was registered 22 years ago, such long-term registration “indicates a

legitimate interest in maintaining the domain name, rather than any intent to exploit or mislead”.

Unfortunately for Respondent, under the Policy, registering and paying the annual fees to maintain the

registration for a domain name that is confusingly similar to an internationally famous trademark, even if now

inactive but previously used to direct others to its website does not transform the disputed domain name into

a legitimate interest. The ongoing renewal and maintenance of the disputed domain name, despite its

inactive state, suggests that Respondent’s intention is to misappropriate Complainant’s trademark rather

than engage in legitimate use. See Pet Plan Ltd v. Marc Castonguay, supra; and Telstra Corporation

Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Prior UDRP panels have held that the use of disputed domain names to confuse and attract Internet users

through misuse of a well-known trademark, and the provision of content which promotes goods and services

impersonating and competitive to Complainant as Respondent has done in the past, can never be

considered use in connection with a bona fide offering of goods or services under Paragraph 4(c)(i). See

The Clorox Company v. WhoisGuard Protected, WhoisGuard, Inc. / Enos Villanueva, Melissa Rosenberg,

Yang Ming, WIPO Case No. D2021-0603.

Applying the foregoing decisions to these facts, this Panel finds the disputed domain name is not being used

in connection with a bona fide offering of goods or services sufficient to demonstrate Respondent has any

rights or legitimate interests in the disputed domain name under the factors specified by paragraph 4(c)(i) of

the Policy. Contrary to Respondent’s assertions, and as further assessed below, inactivity and passive

holding of a domain name does not preclude a finding of Respondent’s registration and use of the disputed

domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.

The second example, under paragraph 4(c)(ii), is a scenario in which a respondent is commonly known by

the domain name. Complainant states that Respondent is not related in any way to Complainant, does not

carry out any activity for, nor have any business with Respondent. Neither has Complainant granted any

license or authorization to Respondent to make any use of Complainant’s CISCO Mark, CISCO

NETWORKING ACADEMY Mark, or apply for registration of the disputed domain name. Complainant has

never authorized Respondent to use the CISCO Mark, or any marks confusingly similar thereto for any

purpose, including as a domain name. Prior UDRP panels have found a lack of rights or legitimate interests

under the second element of the Policy based on such circumstances. See, e.g., Charles Schwab & Co.,

Inc. v. Josh Decker d/b/a I GOT YOUR TIX, WIPO Case No. D2005-0179; Guerlain S.A. v. HI Investments,

WIPO Case No. D2000-0494.

Complainant also shows that Respondent is not commonly known by the disputed domain name because

the original Respondent listed in the WhoIs record submitted with the initial Complaint displayed “Privacy

service provided by Domains by Proxy, LLC Registration Private”. The Registrar identified the underlying

registrant in its verification process, “Mohammad Malik” of the United States, who has been substituted in the

amended Complaint as Respondent. Neither bears any resemblance to the disputed domain name

whatsoever. Respondent has not challenged Complainant’s contention or submitted evidence showing it is

commonly known by the disputed domain name. Thus, there is no evidence in this case to suggest that

Respondent is commonly known by the disputed domain name, that it is licensed or otherwise authorized to

use Complainant’s trademark, or that it has acquired any trademark rights relevant thereto. As such, the

Panel finds this sub-section of the Policy is of no help to Respondent and the facts presented here support a

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lack of rights or legitimate interests in the disputed domain name. See Expedia, Inc. v. Dot Liban, Hanna El

Hinn, WIPO Case No. D2002-0433.

Respondent has failed to adduce any evidence to support the bare assertions in the informal Response.

There has been no evidence adduced to show that Respondent has been commonly known by the disputed

domain name; and there has been no evidence adduced to show that Respondent is making a legitimate

noncommercial or fair use of the disputed domain name. The Panel finds that Respondent has failed to

produce any evidence to rebut Complainant’s prima facie case that Respondent lacks rights or legitimate

interests in the disputed domain name, and that Respondent’s contentions regarding Respondent’s payment

for 22 years of maintenance of the inactive disputed domain name as evidence of legitimate use of the

disputed domain name is unconvincing.

Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Finally, Complainant must prove, by a preponderance of the evidence, that the disputed domain name has

been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. See, e.g., Hallmark Licensing,

LLC v. EWebMall, Inc., WIPO Case No. D2015-2202.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on

the part of a respondent. The panel may, however, consider the totality of the circumstances when analyzing

bad faith under Policy, paragraph 4(a)(iii) and may make a finding of bad faith that is not limited to the

enumerated factors in Policy, paragraph 4(b). See Do the Hustle, LLC v. Tropic Web, WIPO Case No.

D2000-0624.

First, Complainant shows that prior UDRP panels have found the CISCO Mark is a famous and well-known

trademark. See e.g., Cisco Technology, Inc. v. Ross Mueller, supra; and Cisco Technology, Inc. v. Matthew

Archer, International Computer Purchasing Ltd, supra.

Based on the fame of Complainant’s Mark established by these prior decisions, Complainant further

contends that as has been found by prior UDRP panels under similar facts involving famous marks, its

CISCO Mark “is so obviously connected with such a well-known product that its very use by someone with

no connection with the product suggests opportunistic bad faith.” See Veuve Clicquot Ponsardin, Maison

Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Prior UDRP panels have

consistently found that the mere registration of a domain name that is identical or confusingly similar to a

well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO

Overview 3.0, section 3.1.4.

The Panel finds that Respondent’s configuration of the disputed domain name without Complainant’s

authorization, to incorporate the CISCO Mark in its entirety and the predominant portion of the CISCO

NETWORKING ACADEMY Mark, shows both Respondent’s actual knowledge of the CISCO Mark and the

Mark’s widespread recognition, especially in the United States where Respondent is located, and where the

CISCO Mark has been in use for at least 18 years before Respondent registered the disputed domain name.

Prior UDRP panels have found that where, as here, it would be implausible to believe that Respondent

selected and was using the disputed domain name for any other purpose than to trade on Complainant’s

trademark rights and reputation, establishes a fact pattern that repeatedly has been held to constitute bad

faith registration and use. See Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211;

see also Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946.

Prior UDRP panels have also held that a respondent’s selection of a disputed domain name that comprises

the complainant’s mark in its entirety demonstrates a respondent’s actual knowledge to support a finding of

bad faith in registering and using the domain name. See, e.g., Lloyds Bank Plc v. Marc Wiese, WIPO Case

No. D2015-0914; see also, Heineken Brouwerijen B.V. v Mark Lott, WIPO Case No. D2000-1487.

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Complainant also contends as noted in Section 6.B above, the disputed domain name, which Respondent

has intentionally configured to enhance confusing similarity to Complainant’s CISCO Mark by incorporating

CISCO in its entirety and adding “academy”, a descriptive term common to Complainant’s training and

certification services industry, and on multiple occasions using the disputed domain name to direct or redirect

consumers to Respondent’s website displaying, according to historical Internet Archive evidence submitted,

network or training services in competition with Complainant’s services as noted in the following examples:

1) in 2002, shortly after registration of the disputed domain name, listing the disputed domain name for sale

with instructions for submitting bids, that included accepting cash and stock options in exchange for the

disputed domain name; 2) on or about August 2002, resolving to a website providing services in competition

with Complainant’s services for Respondent’s commercial gain, featuring “CyberNet Technologies”, an

“Internet Service Provider offering a wide range of user-oriented services including dialup access from

various points throughout Los Angeles, as well as direct Internet connections to anywhere in the United

States;” 3) As of February 2000, resolving to a website that referenced an “IT Academy”, leading Internet

users to believe there was an affiliation with Complainant and purportedly confuse Internet users into

assuming Respondent was offering services competing with Complainant’s education, training and

certification services; 4) As of April 2001, redirecting to the domain name <cyberct.com>, which accessed a

website that displayed the following: “Welcome to IT Academy Home of the World’s Best Cisco and

Microsoft accelerated training programs. Get into the game. Get certified now.” Internet Archive records

submitted in Complainant’s annexes show these past redirections and misuse that align with bad faith

practices, reinforcing the argument that Respondent’s use of the disputed domain name has been and

remains in bad faith. Prior UDRP panels have found these facts demonstrate a clear indication that

respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a

likelihood of confusion with Complainant’s CISCO Mark as to the source, sponsorship, affiliation, or

endorsement of respondent’s website, and, therefore, evidence of registration and use of the disputed

domain name in bad faith under paragraph 4(b)(iv) of the Policy. See, e.g., Microsoft Corporation v.

Gioacchino Zerbo, WIPO Case No. D2005-0644; Royal Bank of Canada v. China Capital Investment

Limited, WIPO Case No. D2017-1025; and Travelscape, LLC v. WhoisGuard Protected, WhoisGuard, Inc. /

Irwin Periola, WIPO Case No. D2020-2741.

Lastly, while the disputed domain name may no longer resolve or redirect to an active website, such

inactivity does not prevent a finding of bad faith under the doctrine of passive holding: i.e., given the fame of

Complainant’s marks, the confusion generating composition of the disputed domain name making it

implausible of being put to any good faith use, and the above examples of prior bad faith uses to which the

disputed domain name has been put. See WIPO Overview 3.0, section 3.3; see also Telstra Corporation

Limited v. Nuclear Marshmallows, supra. Accordingly, Respondent’s passive holding of the disputed domain

name does not impact the Panel’s findings above and does not prevent a finding of bad faith under the

Policy.

The Panel finds Complainant’s arguments and evidence persuasive and Respondent’s arguments, submitted

with no evidence to support them, are insufficient to outweigh the arguments with evidence presented by

Complainant. Considering all the circumstances, the Panel concludes that Respondent has registered and

used the disputed domain name in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy.

page 10

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, <ciscoacademy.com> be transferred to Complainant.

/Scott R. Austin/

Scott R. Austin

Presiding Panelist

/Brian J. Winterfeldt/

Brian J. Winterfeldt

Panelist

/Kimberley Chen Nobles/

Kimberley Chen Nobles

Panelist

Date: September 2, 2024