Claim Number: FA0706001002638
Complainant is Investools Inc (“Complainant”), represented by Paul
C. Van Slyke, of Locke Liddell & Sapp, 600 Travis,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <investools.mobi>, registered with Go Daddy.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2007.
On June 11, 2007, Go Daddy.com confirmed by e-mail to the National Arbitration Forum that the <investools.mobi> domain name is registered with Go Daddy.com and that Respondent is the current registrant of the name. Go Daddy.com has verified that Respondent is bound by the Go Daddy.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 3, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@investools.mobi by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <investools.mobi> domain name is identical to Complainant’s INVESTOOLS mark.
2. Respondent does not have any rights or legitimate interests in the <investools.mobi> domain name.
3. Respondent registered and used the <investools.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Investools Inc,
is a company that provides investor information services and training courses. Complainant
has provided its services under the INVESTOOLS mark since at least 1995. Complainant owns four trademark registrations
with the United States Patent and Trademark Office (“USPTO”) for the INVESTOOLS
mark, the first of which was registered under registration number 2,028,670 and
was issued January 7, 1997. Complainant
also operates a website at the <investools.com> domain name.
Respondent registered the <investools.mobi> domain name on October 8, 2006. Respondent’s disputed domain name resolves to a website that has no active use, but displays only a statement that the disputed domain name is for sale.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant’s four trademark
registrations with the USPTO are sufficient to confer rights to Complainant for
the INVESTOOLS mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Additionally, the <investools.mobi>
domain name is identical to Complainant’s INVESTOOLS mark under Policy ¶
4(a)(i) as the disputed domain name contains Complainant’s entire mark with the
addition of the generic top-level domain (“gTLD”) “.mobi.” The addition of this gTLD is irrelevant for
purposes of the Policy, as a top-level domain is a required element of all
domain names. Thus, the disputed domain
name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See
Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix
.mobi should be treated the same way as .com and should be ignored when
comparing the mark and the disputed domain name.”); see also Vanderbilt
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant bears the initial burden of providing a prima facie case that Respondent lacks rights and legitimate interests in the <investools.mobi> domain name. Once Complainant satisfies this burden, as Complainant has done in the instant proceeding, the burden shifts to Respondent to put forth evidence that it has rights or legitimate interests in the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
An examination of the evidence presented to the Panel indicates that Respondent is not commonly known by the <investools.mobi> domain name, as the WHOIS information indicates Respondent is “Tim Baca” and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name or that Respondent is authorized to use Complainant’s mark. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent is not currently making an active use of the website that resolves from the <investools.mobi> domain name. Rather, the website displays only a statement indicating that the disputed domain name is for sale. Respondent’s failure to make an active use of the disputed domain name, as well as advertising that the <investools.mobi> domain name is for sale, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s offer to sell the <investools.mobi> domain name on the website that
resolves from the disputed domain name is evidence that the disputed domain name
was registered and is being used in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
Further evidence of Respondent’s bad faith registration and use with regards to the <investools.mobi> domain name is shown by Respondent’s failure to make an active use of the disputed domain name. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel concluded that the respondent’s non-use of the domain name satisfied the requirement of Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <investools.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 17, 2007
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