Securities Investor Protection Corporation v. Kevin Daste
Claim Number: FA0708001065829
Complainant is Securities Investor Protection Corporation (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sipc.net>, registered with Network Solutions, 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
On
On August 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 13, 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@sipc.net 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 <sipc.net> domain name is identical to Complainant’s SIPC mark.
2. Respondent does not have any rights or legitimate interests in the <sipc.net> domain name.
3. Respondent registered and used the <sipc.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1970, Complainant, Securities Investor Protection Corporation, has operated as a non-profit, membership corporation administering a quasi-public fund that helps provide relief to customers of failed securities broker-deals placed in liquidation under the Securities Investor Protection Act, 15 U.S.C. §§ 78aaa et. seq. (“SIPA”). Regulatory authorities, members of the securities industry, and the general public have recognized Complainant by its acronym SIPC since 1970, when Complainant was created by Congress. Complainant has also obtained registration of the SIPC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,081,146 issued July 22, 1997). Further, Complainant has used the SIPC mark in the company’s explanatory literature, website, rules, bylaws, other legal documentation, and annual reports for decades. Complainant has also continually operated a website located at the <sipc.org> domain name since February 1998. Complainant’s other domain names, <sipc.us>, <sipc.mobi>, <sipc.info>, and<sipc.com>, all point to the <sipc.org> domain name where Complainant’s official website is located.
Respondent has served as the respondent in several previous UDRP
proceedings in which the disputed domain names in those cases were transferred
to the respective complainants in those disputes. See
ConAgra Brands, Inc. v. Kevin Daste, Dana One LLC, D2007-0051 (WIPO
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 must first show that it has rights in the SIPC
mark. Complainant has satisfied this
initial burden as the SIPC mark is registered with the USPTO, and has been used
by Complainant for decades. See 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."); see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum
Respondent’s <sipc.net> domain name is identical to Complainant’s SIPC mark as it merely appends the mark with the generic top-level domain (“gTLD”) “.net,” which is insufficient to distinguish the disputed domain name from Complainant’s mark. 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 Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the complainant’s trademark TOSHIBA).
The Panel finds that Complainant has met the requirements of
Policy ¶ 4(a)(i).
Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name is sufficient to meet the prima facie requirement under Policy ¶ 4(a)(ii), and shifts the burden to Respondent to prove that it holds rights or legitimate interests in the disputed domain name. See 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”); see also 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).
Respondent failed to submit a Response to this Complaint. Accordingly, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Although required to make no further analysis, the Panel will now examine the evidence to determine if Respondent holds right or legitimate interests in the domain name under Policy ¶ 4(c).
Per the record, including the WHOIS information, the Panel
concludes that Respondent, “Kevin Daste”, is not commonly known by the <sipc.net> domain name as contemplated
by Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”); see
also Am. Online, Inc. v. World Photo Video & Imaging Corp.,
FA 109031 (Nat. Arb. Forum
Further, Respondent’s website
located at the disputed domain name displays several hyperlinks to third-party
websites which presumably generate click-through revenue for Respondent. This activity leads the Panel to conclude
that Respondent has failed to establish rights or legitimate interests under Policy
¶ 4(c)(i)’s bona
fide offering of goods or services
requirement and Policy ¶ 4(c)(iii)’s requirement of legitimate
noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also 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 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).
The Panel finds that Complainant has met the requirements of
Policy ¶ 4(a)(ii).
The Panel finds that the disputed domain name is capable of causing confusion in regards to Complainant’s association and affiliation with the disputed domain name. Further, Respondent has used this confusion to commercially gain by generating click-through revenue with third-party website hyperlinks displayed on the website located at the disputed domain name. The Panel finds this activity constitutes bad faith registration and use under 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 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 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)).
Further, the record shows that Respondent has served as the respondent in several previous UDRP proceedings in which the disputed domain names in those cases were transferred to the respective complainants in those disputes. Accordingly, the Panel finds that Complainant has made a sufficient showing of Respondent’s pattern of preventing rightful holders of marks from registering corresponding domain names. The Panel finds Respondent’s registration of the disputed domain name to prevent Complainant from registering a corresponding domain name, consistent with Respondents pattern of such conduct. The Panel, therefore, concludes that Respondent’s activity constitutes bad faith registration and use under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Kabushiki Kaisha Toshiba v. Tel. Island, D2004-0711 (WIPO Nov. 15, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent registered the <toshibastrata.com> domain name to prevent the complainant from reflecting the TOSHIBA and STRATA marks in a corresponding domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sipc.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 4, 2007
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