Ameriprise Financial, Inc. v. Domain Park Limited
Claim Number: FA0711001108511
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 Domain Park Limited (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <lifeprotectionplus.com> and <advisorcompasss.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 19, 2007.
On November 12, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <lifeprotectionplus.com> and <advisorcompasss.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. 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 November 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 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@lifeprotectionplus.com and postmaster@advisorcompasss.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lifeprotectionplus.com> is confusingly similar to Complainant’s LIFE PROTECTION SELECT mark and Respondent’s <advisorcompasss.com> domain name is confusingly similar to Complainant’s ADVISOR COMPASS mark.
2. Respondent does not have any rights or legitimate interests in the <lifeprotectionplus.com> and <advisorcompasss.com> domain names.
3. Respondent registered and used the <lifeprotectionplus.com> and <advisorcompasss.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ameriprise Financial, Inc., is a spin-off of
the American Express Financial Corporation, a leader in the financial services
industry for more than a century.
Complainant is currently the largest non-discretionary mutual fund
advisory program provider in the
Respondent registered the <lifeprotectionplus.com> domain name on August 28, 2006, and the <advisorcompasss.com> domain name on August 19, 2007. Both of Respondent’s disputed domain names resolve to websites featuring links to various third-party websites, some of which offer financial and insurance services in direct competition with Complainant. After receiving a cease-and-desist letter from Complainant regarding the <lifeprotectionplus.com> domain name, Respondent offered to sell the disputed domain name to Complainant for $250.
Respondent has also been the Respondent in several previous UDRP
decisions in which the disputed domain names in those cases were transferred
from Respondent to the respective complainants.
See Six Continents Hotels, Inc. v.
Domain Park Ltd., D2007-0313 (WIPO May 7, 2007); see also Société Air
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.
The Panel first finds that Complainant’s registration of the
LIFE PROTECTION SELECT mark with the USPTO sufficiently establishes
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.”); see
also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under
Although Complainant does not currently hold a trademark registration for the ADVISOR COMPASS mark, previous panels have found, and this Panel so concludes, that Complainant is not required to have a federal registration in order to establish rights in the mark under Policy ¶ 4(a)(i). 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 British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant asserts rights in the ADVISOR COMPASS mark
through its continuous and extensive use of the mark in connection with its
financial planning software since May 2007.
Complainant has more financial planning clients than any other firm in
the
Complainant argues that Respondent’s <lifeprotectionplus.com> domain name is confusingly similar
to Complainant’s LIFE PROTECTION SELECT mark.
The Panel agrees, as the disputed domain name merely deletes the word
“select” in the mark and adds the generic term “plus,” a substitution, which
does not render the disputed domain name distinct from the mark under Policy ¶
4(a)(i). See WestJet Air Ctr., Inc. v.
W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that
the <westjets.com> domain name is confusingly similar to the
complainant’s mark, where the complainant holds the
In the same way, Complainant argues that Respondent’s <advisorcompasss.com> domain name is confusingly similar to Complainant’s ADVISOR COMPASS mark, as the disputed domain name simply adds an extra letter “s” onto Complainant’s mark. In accepting this argument, the Panel recognizes that the addition of a letter does not distinguish a disputed domain name from corresponding mark under Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
In addition, Respondent’s inclusion of the generic top-level domain “.com” in the disputed domain names is irrelevant for the purposes of Policy ¶ 4(a)(i), as a top-level domain is a required element of all domain names. Thus, the Panel finds that, pursuant to Policy ¶ 4(a)(i), Respondent’s <lifeprotectionplus.com> domain name is confusingly similar to Complainant’s LIFE PROTECTION SELECT mark and Respondent’s <advisorcompasss.com> domain name is confusingly similar to Complainant’s ADVISOR COMPASS 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel concludes that Policy ¶ 4(a)(i) has been
satisfied.
Under Policy ¶ 4(a)(ii), the initial burden lies with Complainant to show that Respondent lacks rights and legitimate interests in the <lifeprotectionplus.com> and <advisorcompasss.com> domain names. Once Complainant has made a prima facie case, the burden shifts to Respondent to refute this showing. In the instant case, the Panel finds that Complainant has established a prima facie case as required by the Policy. 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).
Respondent’s failure to answer the Complaint allows the Panel to presume that Respondent lacks rights and legitimate interests in the disputed domain names. 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). Nevertheless, the Panel will still examine all evidence in the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Respondent’s WHOIS information indicates that Respondent is
“Domain Park Limited” and there is nothing further in the record to indicate
that Respondent is commonly known by the <lifeprotectionplus.com>
and <advisorcompasss.com>
domain names. Moreover, Complainant has
not given Respondent permission to use its LIFE PROTECTION SELECT or ADVISOR
COMPASS marks. The Panel thus finds that
Respondent lacks rights and legitimate interests in the disputed domain names
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 Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept.
25, 2003) (finding that without demonstrable evidence to support the assertion
that a respondent is commonly known by a domain name, the assertion must be
rejected).
Complainant provides evidence that both the <lifeprotectionplus.com> and <advisorcompasss.com> domain names resolve to websites featuring links in direct competition with Complainant’s financial and insurance services. The Panel presumes that Respondent accrues click-through fees from these links, and thus concludes that such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
In addition, Respondent’s offer to sell the <lifeprotectionplus.com> domain name to Complainant for an amount in excess of its out-of-pocket costs further indicates that Respondent has no rights or legitimate interests in that disputed domain name under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel concludes that Policy ¶ 4(a)(ii) has been
satisfied.
Finally, Complainant alleges that Respondent registered and is using the <lifeprotectionplus.com> and <advisorcompasss.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). The Panel agrees with Complainant. First, the disputed domain names both resolve to websites displaying links to third-party websites in direct competition with Complainant. Under Policy ¶ 4(b)(iii), the Panel finds that such use constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use. See 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); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
As mentioned previously, the Panel presumes that Respondent benefits commercially when Internet users click on the links displayed on the websites that resolve from the <lifeprotectionplus.com> and <advisorcompasss.com> domain names. As such, the Panel concludes that Respondent is capitalizing on the likelihood that Internet users will be confused as to Complainant’s affiliation with the disputed domain names and the source of the corresponding websites. This further indicates Respondent’s 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 G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Respondent’s offer to sell the <lifeprotectionplus.com> domain name to Complainant for an
amount greater than its out-of-pocket costs is additional evidence of
Respondent’s bad faith registration and use under Policy ¶ 4(b)(i). See
Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000)
(finding bad faith where the respondent offered the domain names for sale); see also Little Six, Inc. v. Domain For
Furthermore, Respondent has also been the respondent in
several previous UDRP decisions in which the disputed domain names in those
cases were transferred from Respondent to the respective complainants. See Six
Continents Hotels, Inc. v. Domain Park Ltd., D2007-0313 (WIPO May 7, 2007);
see also Société Air
The Panel concludes that Policy ¶ 4(a)(iii) has been
satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lifeprotectionplus.com> and <advisorcompasss.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 31, 2007
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