AllianceBernstein L.P. Composed of AllianceBernstein Corporation v. Willis Jason
Claim Number: FA2102001933600
Complainant is AllianceBernstein L.P. Composed of AllianceBernstein Corporation (“Complainant”), represented by Lori E. Harrison of Troutman Pepper Hamilton Sanders LLP, New York, USA. Respondent is Willis Jason (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alliancebernstein-am.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2021. The Forum received payment on February 25, 2021.
On February 25, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <alliancebernstein-am.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@alliancebernstein-am.com. Also on March 1, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading global asset management firm providing investment management and research services in 26 countries worldwide under the ALLIANCEBERNSTEIN mark, which has numerous registrations, including 4 with the United States Patent and Trademark Office (USPTO). Respondent’s <alliancebernstein-am.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <alliancebernstein-am.com> domain name because Respondent is not commonly known by the domain name; is not making any demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services; and is not using the domain name in connection with a legitimate noncommercial or fair use. Instead, Respondent is using the domain name as part of a fraudulent scheme in an attempt to appear authorized by a financial regulatory agency.
Respondent registered the <alliancebernstein-am.com> domain name in bad faith with knowledge of Complainant’s rights in its ALLIANCEBERNSTEIN mark and is using it with intent to disrupt Complainant’s business by operating a clone firm, thereby seeking to mislead users into thinking there is an affiliation between Complainant and Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent 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 domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the ALLIANCEBERNSTEIN mark through numerous registrations, including 4 with the USPTO (Reg. Nos. 2,756,848, 3,159,806, 4,978,272 and 2,934,411), with claimed first use in 2002.
The Panel finds Respondent’s <alliancebernstein-am.com> domain name to be confusingly similar to Complainant’s mark because it merely adds to that mark the abbreviation “-am”, and the inconsequential generic top-level domain (“gTLD”), “.com”, which may be ignored. The letters “am” are commonly understood as an abbreviation of the words “asset management”, which describe aspects of Complainant’s business. See, e.g., Hitachi Ltd. v. Value Domain, WIPO Case D2010-1433 (finding that the addition of “-am” to Complainant’s trademark “is merely an abbreviation of the descriptive words ‘asset management’ and not sufficient to distinguish it from Complainant’s HITACHI trademark”).
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <alliancebernstein-am.com> domain name was registered on November 12, 2020, many years after Complainant’s claimed first use of its ALLIANCEBERNSTEIN mark in 2002. Complainant says that, on January 12, 2021 the Financial Conduct Authority (“FCA”) based in England, notified Complainant that Complainant’s details had been used by an unauthorized firm (clone firm), namely Respondent, bearing the name Alliance Bernstein, in an attempt to appear authorized by the FCA. As of February 10, 2021, the domain name resolved to Complainant’s United Kingdom website.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect
of the domain name.
Complainant has established this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
In light of the circumstances described above in relation to the second element, the Panel finds that that Respondent was well aware of Complainant’s ALLIANCEBERNSTEIN mark when registering the <alliancebernstein-am.com> domain name and did so both primarily for the purpose of disrupting the business of a competitor and intentionally to attract, for commercial gain, Internet users to the website to which the domain name resolves, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website.
The Panel therefore finds that Respondent registered and is using the <alliancebernstein-am.com> domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant has established this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alliancebernstein-am.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 29, 2021
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