Dun & Bradstreet Corporation v. Domains Ventures
Claim Number: FA0707001045211
Complainant is Dun & Bradstreet Corporation (“Complainant”), represented by Caroline
L. Stevens, of Leydig, Voit & Mayer, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smallbusinessdnb.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 25, 2007.
On July 25, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <smallbusinessdnb.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 July 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 15, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <smallbusinessdnb.com> domain name is confusingly similar to Complainant’s WWW.DNB.COM mark.
2. Respondent does not have any rights or legitimate interests in the <smallbusinessdnb.com> domain name.
3. Respondent registered and used the <smallbusinessdnb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dun &
Bradstreet Corporation, has provided business information and financial services
under the DUN & BRADSTREET family of marks both in the
Respondent, Domains Ventures, registered the <smallbusinessdnb.com> domain name on April 14, 2004. The website located at the disputed domain name generates click-through revenue for Respondent by providing hyperlinks to Complainant’s competitors websites as well as hyperlinks to numbers, known as DUNS numbers, which Complainant has assigned to active businesses.
Additionally, Respondent has served as the respondent in several previous UDRP proceedings in which the disputed domain names in those cases were transferred from Respondent to the respective complainants in those cases. See AARP v. domains Ventures, FA 514786 (Nat. Arb. Forum Aug. 25, 2005); see also Citigroup, Inc. v. Domains Ventures, FA 874258 (Nat. Arb. Forum Feb. 14, 2007).
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.
Complaint’s registration of its WWW.DNB.COM mark with the USPTO establishes its rights in accordance with Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.")
The <smallbusinessdnb.com> domain name incorporates Complainant’s entire WWW.DNB.COM mark adding only the generic terms “small” and “business,” which simply describe services offered by Complainant as evidenced by its own use of the terms in its <smallbusiness.dnb.com> domain name. The Panel finds that Respondent has failed to distinguish its disputed domain name from Complainant’s mark under ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) places the burden on Complainant to present a prima facie case that Respondent holds no rights or legitimate interests in the disputed domain name. Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name is sufficient to shift the burden to Respondent to counter this claim. See 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).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent failed to provide a Response in this dispute which leads to a presumption that Respondent lacks rights or legitimate interests in the <smallbusinessdnb.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will now examine the record to find if anything would lead to the conclusion that Respondent holds rights or legitimate interests under Policy ¶ 4(c).
Nothing in the evidence, including the WHOIS record, leads
the Panel to conclude that Respondent, Domains
Ventures, is commonly known by the <smallbusinessdnb.com> domain name.
Further, Complainant alleges that it has not authorized Respondent to
use its federally registered mark.
Therefore, Respondent has failed to establish rights or legitimate
interests under Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World
Photo Video & Imaging Corp., FA
109031 (Nat. Arb. Forum
The website Respondent has
located at the disputed domain name allegedly generates click-through revenue
by displaying hyperlinks to third-party websites which offer services in
competition with Complainant’s business as well as unauthorized hyperlinks to
Complainant’s DUNS numbers. The Panel
finds these activities inconsistent with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use. Therefore the Panel concludes that
Respondent has also failed to establish rights and legitimate interests under Policy
¶¶ 4(c)(i) and (iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see also see also 24 Hour
Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is presumably using the disputed domain name to attract users for its own commercial benefit by generating click-through revenue. Further, the <smallbusinessdnb.com> domain name is likely to confuse Internet users as to Complainant’s affiliation with the disputed domain name. The Panel finds Respondent’s activities representative of bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”)
Respondent has also demonstrated bad faith under Policy ¶ 4(b)(iii) by diverting Internet users to Complainant’s competitors. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO 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).
Complainant has adequately demonstrated that Respondent has served as the respondent in several previous UDRP proceedings where the disputed domain names were transferred from Respondent to the complainants in those cases. This evidence establishes that Respondent has a pattern of preventing rightful holders of marks from registering corresponding domain names. See Kohler Co. v. Domains Ventures, FA 637373 (Nat. Arb. Forum Mar. 21, 2006); see also Wells Fargo Home Mortgage v. domains Ventures, FA 810215 (Nat. Arb. Forum Nov. 14, 2006). Therefore, the Panel finds Respondent’s activities indicative of bad faith under Policy ¶ 4(b)(ii). See Société Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of “numerous other domain names” by the respondent); see also Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has a history of registering domain names that infringe on other trademark holders' rights; therefore, Respondent's registration and use of the <yourbigbackyard.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting its mark on-line.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smallbusinessdnb.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 5, 2007
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