Ameriprise Financial, Inc. v. MSA, Inc.
Claim Number: FA0712001122975
Complainant is Ameriprise Financial, Inc. (“Complainant”), represented by J.
Damon Ashcraft, of Snell & Wilmer L.L.P. of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dream-books.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 30, 2008 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@dream-books.com 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 <dream-books.com> domain name is confusingly similar to Complainant’s DREAM BOOK mark.
2. Respondent does not have any rights or legitimate interests in the <dream-books.com> domain name.
3. Respondent registered and used the <dream-books.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ameriprise Financial, Inc.,
is a leader in the financial service industry.
Complainant has over 2.8 million clients. Complainant registered the DREAM BOOK mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,211,931
issued
Respondent registered the disputed domain name on
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 has established sufficient rights in the DREAM
BOOK mark through its trademark registration with the USPTO pursuant to Policy
¶ 4(a)(i). The
filing date of the trademark registration preceeds the registration of the
disputed domain name and thus satisfies Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v. Toggas,
D2001-0101 (WIPO
Respondent’s <dream-books.com>
domain name would be identical to Complainant’s DREAM BOOK mark but for the addition
of the letter “s” and a hyphen connecting the words. The disputed domain name also includes the
generic top-level domain (“gTLD”) “.com.”
It is well-established that the addition of hyphens and the inclusion of
a gTLD are irrelevant to a Policy ¶ 4(a)(i)
analysis. Moreover, a simple misspelling
does not distinguish a disputed domain name.
Therefore, the Panel finds that the <dream-books.com>
domain name is confusingly similar to Complainant’s DREAM BOOK mark pursuant to
Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must establish a prima facie case
that Respondent has no rights or legitimate interests in the disputed domain
name. The Panel finds that Complainant
has established a prima facie case
and that the burden is thus shifted to Respondent to show that it does have
rights or legitimate interests in the disputed domain name. See
VeriSign Inc. v. VeneSign
Respondent has failed to reply to the Complaint. Consequently, the Panel presumes that
Respondent has no rights or legitimate interests in the disputed domain name,
but will nonetheless consider all the evidence in the record in consideration
of the factors listed under Policy ¶ 4(c).
See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
There is no evidence in the record or the WHOIS information that
indicates that Respondent is or ever was commonly known by the <dream-books.com> domain name. Additionally, Respondent has never been
authorized or licensed to use Complainant’s DREAM BOOK mark in any way. The Panel finds that Respondent is not
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 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).
The <dream-books.com> domain name resolves to a website offering links to third-parties. The Panel finds this to be 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The <dream-books.com>
domain name contains hyperlinks to various third-parties and the Panel presumes
that Respondent is commercially benefiting from such links through
“click-through fees.” The Panel finds
this to be evidence that Respondent registered and is using the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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)).
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 <dream-books.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 14, 2008
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