Investools Inc v. Dana Jedd
Claim Number: FA0706001002813
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 <myinvestools.com>, registered with Names4Ever, Http://Www.Names4Ever.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.
Louis E. Condon, 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 15, 2007, Names4Ever, Http://Www.Names4Ever.Com confirmed by e-mail to the National Arbitration Forum that the <myinvestools.com> domain name is registered with Names4Ever, Http://Www.Names4Ever.Com and that Respondent is the current registrant of the name. Names4Ever, Http://Www.Names4Ever.Com has verified that Respondent is bound by the Names4Ever, Http://Www.Names4Ever.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 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 10, 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@myinvestools.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <myinvestools.com> domain name is confusingly similar to Complainant’s INVESTOOLS mark.
2. Respondent does not have any rights or legitimate interests in the <myinvestools.com> domain name.
3. Respondent registered and used the <myinvestools.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Investools Inc., provides investor information
services and training courses to both novice and experienced investors. Since 1995, Complainant has marketed its
products and services under the INVESTOOLS mark and has obtained four separate
trademark registrations with the United States Patent and Trademark Office
(“USPTO”), including the INVESTOOLS mark (Reg. No.
2,028,670 issued May 23, 1995). Over
292,000 students have completed Complainant’s educational programs and
Complainant has been featured in numerous
Respondent registered the <myinvestools.com> domain name on
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.
Complainant has supplied the Panel with evidence
demonstrating rights in the INVESTOOLS mark through registration of the mark with
the USPTO. Registration with a trademark
authority is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson,
FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark
registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA]
mark pursuant to Policy ¶ 4(a)(i).”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Complainant alleges Respondent’s <myinvestools.com> domain name so completely resembles Complainant’s INVESTOOLS mark that it results in a confusing similarity between Complainant’s mark and the disputed domain name. The Panel agrees. Respondent’s disputed domain name wholly incorporates Complainant’s INVESTOOLS mark and is distinguishable only by the inclusion of the common term “my” and the generic top-level domain “.com.” These additional features are not distinctive enough to remove Respondent’s <myinvestools.com> domain name from the realm of confusing similarity with Complainant’s INVESTOOLS mark. Generic top-level domains are irrelevant in determining whether a disputed domain name is confusingly similar to Complainant’s mark and the mere addition of a common term like “my” to the overt prominence of Complainant’s registered mark in the domain name fails to sufficiently distinguish the two. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).
The Panel finds Complainant has satisfied its burden under Policy ¶ 4(a)(i).
It is incumbent upon Complainant to set forth a prima facie case demonstrating Respondent’s lack of rights or legitimate interests in the disputed domain name before Respondent is required to put forth evidence showing rights or legitimate interests in the domain name. See F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Satisfied Complainant has met its initial burden, the Panel now considers whether Respondent has proffered any evidence demonstrating rights or legitimate interests in the <myinvestools.com> domain name.
In light of Respondent’s failure to respond to Complainant’s
allegations, the Panel infers Respondent holds no rights or legitimate
interests in the <myinvestools.com>
domain name. See Compañia de
Radiocomunicaciones Móviles S.A. v. Bolinhas, D2000-0915 (WIPO Oct.
5, 2000) (finding that because Respondent defaulted and did not demonstrate
that it had any rights or legitimate interests, the “Panel assumes that there
were no other motives for Respondent having registered the three domain names
at issue but Respondent’s actual or most likely knowing of the famous or well
known marks MOVICOM and BELL SOUTH”); see
also Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1,
2000) (“By its default, Respondent has not contested the allegation
. . . that the Respondent lacks any rights or legitimate interests in the
domain name. The Panel thus assumes that
there was no other reason for the Respondent having registered
<bancodobrasil.com> but the presumably known existence
of the Complainant’s mark BANCO DO BRASIL”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests in the <myinvestools.com> domain name
pursuant to Policy ¶ 4(c).
Respondent has proffered no evidence and there is no evidence in the record to suggest that Respondent is commonly known by the <myinvestools.com> domain name. Further, nothing in the record indicates Complainant has authorized Respondent to register domain names incorporating Complainant’s INVESTOOLS mark or that Respondent is in some way associated or affiliated with Complainant. As a result, the Panel finds Respondent is not commonly known by the <myinvestools.com> domain name under Policy ¶ 4(c)(ii) and is simply attempting to attract Internet traffic through the fame of Complainant’s INVESTOOLS mark. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the complainant has not licensed or otherwise permitted the respondent to use any of its trademarks, and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the complainant, demonstrate that the respondent lacks rights or legitimate interests in the domain name); 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).
Moreover, Respondent’s <myinvestools.com> domain name resolves to a page of third-party links, both related and unrelated to Complainant’s investor education enterprise. The Panel infers that Respondent’s incorporation of Complainant’s INVESTOOLS mark in a domain name designed to connect Internet users with goods and services competing with Complainant’s product offerings and presumably for Respondent’s own commercial gain 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel concludes Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name <myinvestools.com> fully incorporates Complainant’s
INVESTOOLS mark with only nominal and inconsequential differences. As a result, the Panel finds Respondent’s
registration and use of the <myinvestool.com>
domain name to promote similar investment-related opportunities to those
offered by Complainant amounts to bad faith under Policy ¶ 4(b)(iii) by
disrupting Complainant’s business through the confusing similarity between
Complainant’s INVESTOOLS mark and Respondent’s domain name. See
Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding
registration in bad faith based where there is no reasonable possibility, and
no evidence from which to infer that the domain name was selected at random
since it entirely incorporated the complainant’s name); see also EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum
Moreover, the diversion of Internet traffic to Respondent’s <myinvestools.com> domain name for purposes of connecting consumers to other related and unrelated services through the confusing similarity between Respondent’s domain name and Complainant’s mark is consistent with a finding of bad faith registration and use under Policy ¶ 4(b)(iv) based on the assumed commercial benefit to Respondent. The uncontested evidence in the record allows the Panel to infer Respondent receives click-through fees as Internet users attempting to reach Complainant are diverted to these other third-party sites. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <myinvestools.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
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