Federal Reserve Bank of
Claim Number: FA0707001047281
Complainant is Federal Reserve Bank of Minneapolis (“Complainant”), represented by Jennifer
J. Olson, of Federal Reserve Bank of Minneapolis,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minneapolisfed.com>, registered with Onlinenic, 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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2007.
On August 01, 2007, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <minneapolisfed.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 August 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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 <minneapolisfed.com> domain name is identical to Complainant’s MINNEAPOLIS FED mark.
2. Respondent does not have any rights or legitimate interests in the <minneapolisfed.com> domain name.
3. Respondent registered and used the <minneapolisfed.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Federal Reserve
Respondent, Linecom, registered the <minneapolisfed.com> domain name on February 5, 2006. The website located at the disputed domain name resolves to a website that has no active use other than displaying a page soliciting offers for the sale of the disputed domain name.
On June 26, 2007, Complainant sent a cease and desist letter via email to Respondent. Respondent replied the following day offering to sell the domain to Complainant for €3,900.
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 Auto. Racing Prods., Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006); see also Iconcard S.p.A. v. Linecom, D2005-1115 (WIPO Mar. 28, 2006).
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.
Policy ¶ 4(a)(i) does not require Complainant to hold a trademark registration to establish rights in the MINNEAPOLIS FED mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
The Panel finds that Complainant has sufficiently established common law rights in its MINNEAPOLIS FED mark through continuous and extensive use of the mark in connection with its goods and services since as early as 1999 as evidenced by the December 31, 1999 Star Tribune article titled “Minneapolis Fed, other banks report smooth sailing” as well as the fact that Complainant is identified on Internet search engines and databases as “the Minneapolis Fed.” Further, Complainant also holds several domain name registrations incorporating its MINNEAPOLIS FED dating back to April 1, 2002. Therefore, Complainant’s MINNEAPOLIS FED mark has acquired a secondary meaning sufficient to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
The disputed domain name is identical to Complainant’s mark,
as it incorporates Complainant’s entire MINNEAPOLIS FED mark, removing spaces
and adding the generic top-level domain (“gTLD”) “.com.” These small changes are insufficient to
create a mark distinguishable from Complainant’s mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(i) places the burden upon Complainant to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s allegation that Respondent lacks rights or legitimate interests is sufficient and shifts the burden to Respondent to show that rights or legitimate interests in the disputed domain name exist under Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent failed to submit a Response to the Complaint which allows the Panel to presume that it holds no rights or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Although no further analysis is required, the Panel will now review the evidence to determine if Respondent can establish rights or legitimate interests under Policy ¶ 4(c).
Nothing in the record, including the WHOIS information, leads the Panel to conclude that Respondent, “Linecom,” is commonly known by the <minneapolisfed.com> domain name. Further, Complainant has not authorized Respondent to use its mark. Accordingly, the Panel finds that Respondent has failed to establish rights or legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent has failed to make an active use of the disputed domain name which it registered in February of 2006. Thus, the Panel finds that Respondent’s inactivity does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Respondent’s lack of rights and legitimate interests in the disputed domain name is further evidenced by Respondent’s offer to sell it to Complainant for an amount in excess of its out-of-pocket costs. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s registration and failure to make active use of the disputed domain name in combination with its attempt to sell the disputed domain name to Complainant for an amount in excess of its out of pocket expenses is demonstrative of bad faith registration and use. See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that no active use of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Am. Online, Inc. v. Netsbest, FA 93563 (Nat. Arb. Forum Mar. 29, 2000) (finding bad faith where the respondent made no use of the domain name <icqguide.com> other than offering it for sale for $99,000).
Further, Complainant has provided adequate evidence showing that Respondent has served as the respondent in several prior UDRP proceedings where the dispute domain names were transferred from Respondent to the respective complainants in those cases. This sufficiently establishes that Respondent has a pattern of preventing rightful holders of marks from registering corresponding domain names. Accordingly, the Panel finds Respondent’s activities indicative of bad faith under Policy ¶ 4(b)(ii). See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii), as revealed by the number of other domain name registrations incorporating others’ trademarks and the fact that the domain names in question did not link to any on-line presence or website).
The Panel concludes 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 <minneapolisfed.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: September 19, 2007
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