Claim Number: FA0709001080244
Complainant is First Manhattan Consulting Group, Inc. (“Complainant”), represented by James
M. Andriola, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <financialpersonality.com>, registered with Schlund+Partner Ag.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 24, 2007.
On September 25, 2007 the National Arbitration Forum identified several deficiencies in the Complaint and requested the Complainant to rectify those deficiencies. Following this request, the Complainant has submitted a revised Complainant in accordance with the Uniform Domain Name Dispute Resolution on September 26, 2007.
On September 20, 2007, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <financialpersonality.com> domain name is registered with Schlund+Partner Ag and that the Respondent is the current registrant of the name. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 October 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 22, 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.
A timely Response was received and determined to be complete on October 22, 2007.
On October 29, 2007 an Additional Submission was submitted by the Complainant and it does comply with Supplemental Rule 7.
On November 5, 2007 an Additional Submission was submitted by the Respondent and it does comply with the Supplemental Rule 7.
On October 30, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant asserts by the Complaint the following:
§ the Complainant is the owner of the trademark FINANCIAL PERSONALITY, registered with USPTO, and the trademark has been in continuous use in commerce since at least as early as January 2001;
§ the disputed domain name is identical to the Complainant’s trademark;
§ the Respondent is using the website at the impugned domain name to offer financial consultation services to the public;
§ the Respondent registered the disputed domain name at least with constructive knowledge of Complainant’s mark;
§ the Respondent’s use of the disputed domain name is done in order to divert users from Complainant to Respondent;
§ the Respondent’s use of the disputed domain name is clearly for commercial gain;
§ the Respondent registered and uses the disputed domain name in bad faith, by registering it with constructive knowledge and by using it in a competitive manner with the services offered by the Complainant;
§ the Respondent was notified by cease and desist letter sent on June 15, 2007.
In its Response the Respondent contends the following:
C. Additional Submissions
By its Additional Submission submitted in the case, the Complainant asserts that:
§ the services and the goods of the parties do not need to be identical or even similar for a Complainant to have superior rights in a domain name;
§ the quotations from the Examining Attorney from USPTO are not relevantt as its decision in connection with the Respondent’s application for trademark FINANCIAL PERSONALITY for class 36 is not final;
§ the Respondent registered this trademark as a part of its battle against the Complainant;
§ the Respondent’s assertion as to the duration of its use of the FINANCIAL PERSONALITY mark is not supported by any record;
§ the Respondent’s request for a finding of reverse domain name hijacking is not grounded;
By its Additional Submission submitted in the case, the Respondent contends that:
The Complainant is in the business of management consulting providing, inter alia, market analysis, research and research consultation to financial service providers, services for which it has continuously used since 2001 and registered later with the United States for Patent and Trademark Registration the mark FINANCIAL PERSONALITY. The Respondent registered the disputed domain name in June 2007. The disputed domain name resolves to a website where the Respondent is making advertising of its services under the FINANCIAL DNA trademark. The Respondent is not the owner of any trademark with the name FINANCIAL PERSONALITY and is not known by this name. The Respondent uses the term FINANCIAL PERSONALITY at the disputed domain name in a merely descriptive way of its FINANCIAL DNA services. Having considered the use of the term FINANCIAL PERSONALITY by both parties, the Panel shall decide which one, the Complainant or the Respondent, has superior rights in this term, ultimately finding that the Complainant has superior rights.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
The Complainant has established rights in the FINANCIAL PERSONALITY mark (Reg. No. 3,211,373 issued February 20, 2007) with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <financialpersonality.com> domain name contains Complainant’s FINANCIAL RESPONSIBILITY mark in its entirety, simply eliminates the space between the two words of Complainant’s protected mark, and adds the generic top-level domain (“gTLD”) “.com.”
In its Response, the Respondent
is stating that Coddington
Finance Corporation Pty Ltd (CFC) concedes that the disputed domain name is
identical to the
Having considered the above said, the Panel finds that Complainant’s registration of the FINANCIAL PERSONALITY mark with the USPTO sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that the complainant’s registration of the AMERIDREAM mark with the USPTO established its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”). The Panel also finds that the disputed domain name is identical to the trademark in which the Complainant has rights.
The assertion of the Respondent that the disputed domain name is also a generic word in other contexts and that CFC is the applicant for registration of the trade mark FINANCIAL PERSONALITY under USA Service Mark Application No. 77/213,347 filed June 22, 2007 in Class 36 does not make the disputed domain name less identical to the trademark in which the Complainant has rights, recognised by the USPTO registration
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <financialpersonality.com> domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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”); 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).
It is the opinion of the Panel that the Complainant has succeeded in doing so and the Respondent failed to rebut the Complainant’s showing.
An examination of the evidences submitted in this case results in the obvious conclusion that the Respondent is not and has not been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). The fact that CFC has used the words FINANCIAL PERSONALITY in close association with the mark FINANCIAL DNA, and with the book by Hugh Massie, “Financial DNA: Discover Your Unique Financial Personality For A Quality Life,” published in February 2006 by Wiley, cannot represent per se evidence that the Respondent is known under this Financial Personality name. In the context used in the said title, Financial Personality is, together with the rest of the words, descriptive of the Financial DNA association of words.
Respondent’s <financialpersonality.com> domain name resolves to a website offering financial services in direct competition with Complainant’s business. The Panel cannot consider the statements of the Respondent that the services offered on the website to which the disputed domain name resolves are that distinguishable from those offered by the Complainant under its trademark, so an Internet user will be able to see such difference from the first moment the website opens. In addition, both the Complainant and the Respondent are in the business connected with financial services. As the Complainant pointed out in its additional submission the goods and the services of the parties need not to be identical or even similar for a complainant to have superior rights in domain name. See Sony Corporation v. Times Vision Ltd, Claim Number: FA0009000095686 (Nat. Arb. Forum Mar. 9 2001). It is enough that the services offered to have a common element which may induce confusion to the Internet users, as it is in this case the financial services.
In conclusion, the Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
It is obvious that the registration of the disputed domain name was made by the Respondent with the knowledge of the Complainant’s trademark, as accepted implicitly by it in the Response.
Moreover, as found above, the Respondent is using the disputed domain name to resolve to a website that offers services in competition with those offered by Complainant. Such use evinces a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
It is the opinion of the Panel that the Respondent’s use of the disputed domain name is likely to induce confusion among unwary Internet users expecting to view information regarding Complainant’s business.
Additionally, Respondent likely receives financial remuneration from its diversionary use of the <financialpersonality.com> domain name. Such use evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
Being considered all above, the Panel finds that that the also the third element of the Policy had been demonstrated by the Complainant.
Attempted reverse hijacking of CFC’s domain name
Having found that the Complainant proved the three elements of the Policy, the Panel considers it unnecessary to analyse the request of the Respondent for a finding of attempted reverse hijacking of CFC’s 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 <financialpersonality.com> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: November 13, 2007
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