AllianceBernstein L.P. Composed of AllianceBernstein Corporation v. dominik alder
Claim Number: FA2111001973204
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 dominik alder (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bernstein-management.net>, (‘the Domain Name’) registered with Porkbun LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 15, 2021; the Forum received payment on November 15, 2021.
On November 15, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <bernstein-management.net> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC 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 November 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@bernstein-management.net. Also on November 18, 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 December 15, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant owns the trade mark BERNSTEIN registered, inter alia, in the UK with first use recorded as 1967.
The Domain Name registered in 2020 is confusingly similar to the Complainant’s trade mark containing it in its entirety and merely adding the generic term ‘management’, a hyphen and the gTLD “.net” which do not distinguish the Domain Name from the Complainant’s mark.
Respondent does not have rights or a legitimate interests in the Domain Name, is not commonly known by the Domain Name and is not authorised by the Complainant. The suggestion that the Respondent’s CEO’s last name is Bernstein does not give the Respondent the right to use the Complainant’s BERNSTEIN mark in the Domain Name for a website that offers competing investment management and research services. The Complainant’s BERNSTEIN mark has earned significant fame and recognition and is a well known distinct source identifier in the asset management industry. In addition, the WHOIS record for the Disputed Domain Name lists Respondent’s name as “dominik alder”. Respondent’s name does not bear any resemblance to the Domain Name.
The web site connected with the Domain Name is using the Complainant’s trade mark and a logo as a masthead that mimics the distinctive logo of the Complainant to offer competing services. The mimicking of the Complainant’s logo shows the Respondent is aware of the Complainant and the Complainant’s rights and business. Since Internet users will be duped into believing the site attached to the Domain Name is connected with the Complainant this is not legitimate. It is registration and use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark BERNSTEIN registered, inter alia, in the UK with first use recorded as 1967.
The Domain Name registered in 2020 has been used for a website offering competing services with a logo as a masthead which mimics the highly distinctive logo of the Complainant.
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”).
The Domain Name consists of the Complainant's BERNSTEIN mark (which is registered, inter alia, in the UK for financial services with first use recorded as 1967), the generic term ‘management’, a hyphen and the gTLD “.net”.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).). Accordingly the Panel holds that the addition of the generic term ‘management’ and a hyphen to the Complainant’s trade mark in the Domain Name does not prevent confusing similarity between the Domain Name and the Complainant’s mark.
The gTLD “.net” does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
Respondent has not responded to this Complaint.
The web site attached to the Domain Name uses the Complainant's BERNSTEIN mark and a logo which mimics the logo of the Complainant as a masthead to offer competing services. It does not make it clear that there is no commercial connection with the Complainant and in the judgement of the Panel the web site will be more likely than not to deceive Internet users that it and the Respondent’s business is connected with the Complainant when it is not. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.). Since the use is commercial it cannot be legitimate non commercial fair use. The Complainant has not authorised the use of its mark.
The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). No evidence has been put forward by the Respondent that the CEO of the Respondent’s business really has the surname Bernstein, but even if the Respondent had put forward such evidence it is not sufficient to prove rights or legitimate interests for competing use with knowledge of a Complainant’s rights. See Ferrari S.p.A. v. Pierangelo Ferrari, WIPO Case No. D2001-1004 (finding that Respondent’s sole argument that his last name was the same as the disputed domain name was not sufficient to prove the existence of rights or legitimate interests). In addition, the WHOIS record for the Domain Name lists Respondent’s name as “dominik alder”. Respondent’s name does not bear any resemblance to the Domain Name and the Panel finds that the Respondent is not commonly known by it.
As such the Panelist finds that the Complainant has shown that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers competing services under a logo which mimics the Complainant’s logo as a masthead giving the impression that the site attached to the Domain Name is commercially connected with the Complainant when it is not. The use of a logo which mimics the Complainant’s logo shows that the Respondent is aware of the Complainant its rights, business and products.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site and the services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bernstein-management.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 15, 2021
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