national arbitration forum

 

DECISION

 

Ameriprise Financial, Inc. v. Zasobovani a.s.

Claim Number: FA0707001049525

 

PARTIES

Complainant is Ameriprise Financial, Inc. (“Complainant”), represented by J. Damon Ashcraft, of SNELL & WILMER L.L.P., One Arizona Center, 400 E. Van Buren, Phoenix, AZ 85004-2202.  Respondent is Zasobovani a.s. (“Respondent”), Chloumecka 3376, Melnik 27601, CZ.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net>, registered with Dstr Acquisition Vii, LLC.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2007.

 

On August 1, 2007, Dstr Acquisition Vii, LLC confirmed by e-mail to the National Arbitration Forum that the <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names are registered with Dstr Acquisition Vii, LLC and that Respondent is the current registrant of the names.  Dstr Acquisition Vii, LLC has verified that Respondent is bound by the Dstr Acquisition Vii, LLC 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 postmaster@freedreambook.com, postmaster@freedreambook.net, postmaster@free-dream-book.com, and postmaster@free-dream-book.net 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 Honorable Karl V. Fink (Ret.), 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names are confusingly similar to Complainant’s DREAM BOOK mark.

 

2.      Respondent does not have any rights or legitimate interests in the <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names.

 

3.      Respondent registered and used the <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Ameriprise Financial, Inc., is a leader in the financial services industry, with more than 110 years of history throughout the United States.  Ameriprise serves more than 2.8 million individual, business, and institutional clients, managing assets worth over $466 billion.  In association with these financial services, Complainant has introduced Dream Book, a personal journal for use by clients to aid in the creation of a personalized retirement plan.  Complainant filed an intent-to-use application with the United States Patent and Trademark Office (“USPTO”) for the DREAM BOOK mark which has recently matured into a federal trademark registration (Reg. No. 3,211,931 issued February 20, 2007; filed August 23, 2005).

 

Respondent registered the <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names on December 4, 2006.  Each of Respondent’s disputed domain names redirects Internet users to Respondent’s <stasti.cz> domain name which offers products for sale as well as social networking services.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the DREAM BOOK mark through registration with the USPTO.  The Panel finds that Complainant has established rights in the DREAM BOOK mark under Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb. Forum Feb. 13, 2007) (finding rights in the METLIFE mark as a result of its registration with the United States federal trademark authority); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

Although Complainant’s mark was not accepted for registration until February 20, 2007, the Panel finds that Complainant’s rights date back to the date of filing, August 23, 2005.  See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).

 

Complainant contends that Respondent’s <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names are confusingly similar to Complainant’s DREAM BOOK mark.  Each of Respondent’s disputed domain names contain Complainant’s entire mark and add the term “free” as well as a generic top-level domain, either “.com” or “.net.”  Moreover, Respondent’s <free-dream-book.com> and <free-dream-book.net> domain names use hyphens to separate the terms “free,” “dream,” and “book.”  The Panel finds that Respondent’s <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  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 Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have rights or legitimate interests in the <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names under Policy ¶ 4(a)(ii).  Past panels have found under certain circumstances that a complainant’s allegations are sufficient to establish a prima facie case.  Here, the Panel finds that Complainant has established a prima facie case under the Policy, shifting the burden of proof from Complainant to Respondent.  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 Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).

 

Complainant has submitted evidence that Respondent’s <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names redirect Internet users to Respondent’s <stasti.cz> domain name which offers products for sale as well as social networking services.  The Panel finds that Respondent is not using the <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names in connection with 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 U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).

 

Complainant contends that Respondent is not commonly known by the <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names.  The WHOIS information listed in connection with the disputed domain names lists the registrant as “Zasobovani a.s.”  In the absence of evidence suggesting otherwise, the Panel finds that Respondent is not commonly known by the disputed domain names for purposes of Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed 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).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names to redirect Internet users to Respondent’s <stasti.cz> domain name which offers products for sale as well as social networking services.  The Panel finds that Respondent’s use of the disputed domain names for commercial gain is likely to cause confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites.  The Panel further finds such use to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <freedreambook.com>, <freedreambook.net>, <free-dream-book.com>, and <free-dream-book.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  September 17, 2007

 

 

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