Ameritrade Holdings Corporation and Ameritrade, Inc. v. Polanski
Claim Number: FA0112000102715
Complainants are Ameritrade Holding Corporation, Omaha, NE, and Ameritrade, Inc., Bellevue, NE (“Complainants”) represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. Respondent is Polanski, Krakow (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ameritade.com>, registered with BulkRegister.com, 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.
John J. Upchurch as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 2, 2001; the Forum received a hard copy of the Complaint on December 3, 2001.
On December 5, 2001, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <ameritade.com> is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name. BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, Inc. 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 December 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 2001 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2002, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.” 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.
Complainants request that the domain name be transferred from the Respondent to the Complainants.
The disputed domain name <ameritade.com> is confusingly similar to Complainants’ AMERITRADE mark.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent did not submit a response in this proceeding.
Complainant registered the AMERITRADE trademark on the Principal Register of the United States Patent and Trademark Office as Registration No. 2,032,385 on January 21, 1997 and has continuously used the mark in commerce since 1981 in association with securities brokerage services. Complainant also holds at least two other trademarks and has at least two applications pending for trademarks or service marks that incorporate the word AMERITRADE.
Respondent registered the disputed domain name on September 27, 2000 and has used the disputed domain name to redirect its users to a financial services website and to display advertisements for an online casino.
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 the Complainants' undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainants 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(2) the 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.
Identical and/or Confusingly Similar
Complainants have sufficiently established their rights in the AMERITRADE mark through registrations with the U.S. Patent and Trademark Office.
The disputed domain name is confusingly similar to Complainants' mark. The omission of the letter "r" does not defeat the confusing similarity between the mark and the domain name. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s mark “State Farm”); see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> is confusingly similar to Complainant’s trademark, VICTORIA’S SECRET).
The inclusion of “.com” in the disputed domain name is inconsequential to the “confusingly similar” inquiry. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainants have established that they have rights to and legitimate interests in the AMERITRADE mark. Because Respondent has failed to submit a Response in this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent's use of the disputed domain name to redirect users to a site offering services related to and competing with Complainants' site cannot be deemed a bona fide offering of goods or services under Policy ¶ 4(c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of domain names that were confusingly similar to Complainant’s mark to sell competing goods was not a bona fide offering of goods within the meaning of the Policy); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website).
Further, there is no evidence in the record to suggest that Respondent is commonly known as "ameritade" or "ameritade.com" pursuant to Policy ¶ 4(c)(ii) or that it has made a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied and that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Registration and Use in Bad Faith
Respondent registered and used the disputed domain name, which was confusingly similar to Complainants' mark, in order to direct users to a competing website. This constitutes bad faith under the Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the disputed domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as the Complainant).
Further, by intentionally registering and using a likely misspelling of Complainants' mark, a practice known as “typosquatting,” Respondent has also demonstrated bad faith. See e.g., Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000)(awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000)(awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).
Accordingly, 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 the requested relief should be hereby granted.
Accordingly, it is Ordered that the <ameritade.com> domain name be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 11, 2002
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