The Computing Technology Industry Association, Inc. v TotalDomain Privacy; Ltd
WIPO Case No. D2024-0554
•26-03-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
The Computing Technology Industry Association, Inc. v. TotalDomain Privacy
Ltd
Case No. D2024-0554
1. The Parties
The Complainant is The Computing Technology Industry Association, Inc., United States of America (U.S.), represented by McDermott Will & Emery LLP, U.S.
The Respondent is TotalDomain Privacy Ltd, Panama.
2. The Domain Name and Registrar
The disputed domain name <comtia.org> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a
PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2024.
On February 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On February 8, 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 named Respondent (REDACTED FOR PRIVACY / Privacy Protect, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on February 8,
2024, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on
February 12, 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 the Respondent of the
Complaint, and the proceedings commenced on February 15, 2024. In accordance with the Rules,
paragraph 5, the due date for Response was March 6, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 7, 2024.
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The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 11, 2024. 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, The Computing Technology Industry Association, Inc., is a U.S. company operating in information technology (“IT”) education and training.
The Complainant is the owner of several COMPTIA trademarks (used in connection with its IT education and training services), including:
| - | COMPTIA, U.S. word mark registered under No. 1964708 on March 26, 1996, in class 42; |
| - | COMPTIA, European Union word mark registered under No. 000380949 on September 10, 1998, |
classes 35 and 42;
| - | COMPTIA, Brazilian word mark registered under No. 819835692 on July 10, 2001, class 42. |
The Complainant operates the domain name <comptia.org>, which resolves to the Complainant’s official website.
The Disputed Domain Name was registered on November 16, 2002, and resolves to a parking page with pay-per-click (“PPC”) links. The website linked to the Disputed Domain Name also states the Respondent offers the Disputed Domain Name for sale for an asking price of USD 13,799.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer
of the Disputed Domain Name.
Notably, the Complainant contends that the Disputed Domain Name is nearly identical and confusingly similar to a trademark in which it claims to have rights.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name. The Complainant contends that:
| - | the Respondent is not commonly known by the Disputed Domain Name; |
| - | the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of |
goods or services;
| - | the Respondent is not making a legitimate fair use of the Disputed Domain Name; |
- the Respondent displays various trademarks owned by Complainant, including the COMPTIA Mark – spelled correctly – within the sponsored links appearing on the website linked to the Disputed Domain Name;
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| - | the Respondent is responsible for the content of the ads displayed on the website Linked to the |
Domain Name;
- the Respondent’s lack of legitimate interest is particularly evident since the Complainant has proven its rights in the COMPTIA trademarks.
Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad
faith. According to the Complainant:
| - | the Respondent attempts to attract Internet users based on the Complainant’s COMPTIA trademarks; |
| - | the Respondent uses the Disputed Domain Name for sponsored links; |
| - | the Respondent offers to sell the Disputed Domain Name for a price beyond out-of-pocket costs. |
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark
or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
| the Policy. The Disputed Domain Name appears to be a misspelling of the Complainant’s COMPTIA | The Panel finds the Disputed Domain Name is confusingly similar to the COMPTIA mark for the purposes of considering whether the Disputed Domain Name is confusingly similar to a trademark in which the |
| Complainant has rights. | |
| Based on the available record, the Panel finds the first element of the Policy has been established. | |
| B. Rights or Legitimate Interests | |
| Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. | |
| Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the | |
| respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or | |
| legitimate interests, the burden of production on this element shifts to the respondent to come forward with |
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relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case
that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has
not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence
demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the
Policy or otherwise.
The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain
Name, and that the Respondent does not seem to have acquired trademark or service mark rights.
According to the information provided by the Registrar, the Respondent appears to use a privacy service as it is named “TotalDomain Privacy Ltd”.
Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner. The correlation between a domain name and the complainant’s mark is often central to this inquiry. In this case, the Panel finds that the Disputed Domain Name can be considered as virtually identical to the Complainant’s COMPTIA trademark as it incorporates the Complainant’s COMPTIA trademark in its entirely except for the letter “p”. The Panel finds that subtle misspellings of a complainant’s mark in a domain name can impersonate the complainant, as there is a risk that Internet users will not notice the difference between such misspelling and the complainant’s mark. See Banque et Caisse d’Epargne de l’Etat, Luxembourg, v. Domain Admin, Whoisprotection.cc / hans larsson, WIPO Case No. D2022-1505.
The Panel also observes that, except for the misspelling of the Complainant’s COMPTIA trademark, the Disputed Domain Name is identical to the domain name <comptia.org> resolving to the Complainant’s official website. Therefore, the Panel finds that the Disputed Domain Name carries a risk of confusion and cannot constitute fair use.
Beyond looking at the domain name, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not. WIPO Overview 3.0, sections 2.5.2 and 2.5.3.
In this case, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. According to evidence provided by the Complainant, the Disputed Domain Name appeared (and still appears) to redirect to a parking page containing PPC links such as “Comptia Exam” and third-party e-learning and certification websites. Given the distinctive character of the Complainant’s mark and the Complainant’s IT education and training business, the Panel finds that such sponsored links may capitalize on the reputation and goodwill of the Complainant’s mark or mislead Internet users, which cannot be considered as a use of the Disputed Domain Name in connection with a bona fide offering of goods or services. WIPO Overview 3.0, section 2.9.
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not
been rebutted.
Based on the available record, the Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall
be evidence of the registration and use of a domain name in bad faith.
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As established above, the Disputed Domain Name appears to redirect to a parking page containing PPC
links, some of which relate to the Complainant or to competing services. In the circumstances of the present case, the Panel’s considers this to indicate that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s
trademark. WIPO Overview 3.0, section 3.2.4. While the intention to earn click-through-revenue is not in
itself illegitimate, the Panel finds that the use of the Disputed Domain Name that is confusingly similar to the
Complainant’s trademark with the purpose of obtaining click-through-revenue constitutes bad faith use
(irrespective of the amount of such revenues, and even if no revenues are obtained effectively). See Mpire
Corporation v. Michael Frey, WIPO Case No. D2009-0258; L’Oréal, Biotherm, Lancôme Parfums et Beauté
& Cie v. Unasi, Inc, WIPO Case No. D2005-0623.
Other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain
name is in bad faith. WIPO Overview 3.0, section 3.2.1.
The Panel holds that the misspelling of the Complainant’s mark in the Disputed Domain Name is a form of typosquatting which is further evidence of bad faith. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; and Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager, WIPO Case No. D2011-1951.
The Complainant claims its COMPTIA mark is well-known. However, what is relevant in this case is the reputation of the Complainant’s mark before the registration of the Disputed Domain Name. The Panel observes that the Complainant does not provide relevant evidence in that regard. That being said, the Panel
finds that the following circumstances can serve as indication of bad faith registration:
| - | some of the Complainant’s trademarks predate the registration of the Disputed Domain Name by more |
than 6 years;
| - | the Disputed Domain Name incorporates an obvious misspelling of the Complainant’s distinctive |
trademark.
In the Panel’s view, the fact that the Disputed Domain Name is offered for sale for USD 13,799 and the faith.
Finally, the Respondent did not formally take part in the administrative proceedings. According to the Panel,
this serves as additional indication of the Respondent’s bad faith.
Based on the available record, the Panel finds that the Complainant has established the third element of the
Policy.
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 <comtia.org> be transferred to the Complainant.
/Flip Jan Claude Petillion/
Flip Jan Claude Petillion
Sole Panelist
Date: March 26, 2024
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