Aquent LLC v. Maison Tropicale S.A.
Claim Number: FA0712001125092
Complainant is Aquent LLC (“Complainant”), represented by John
L. Welch, of Lowrie, Lando & Anastasi, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aquentfinancial.net>, registered with Domaindoorman, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 28, 2007.
On January 2, 2008, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <aquentfinancial.net> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, 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 January 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 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@aquentfinancial.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aquentfinancial.net> domain name is confusingly similar to Complainant’s AQUENT mark.
2. Respondent does not have any rights or legitimate interests in the <aquentfinancial.net> domain name.
3. Respondent registered and used the <aquentfinancial.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aquent LLC, is one of the world’s largest
marketing and creative staffing agencies.
Complainant conducts business under the AQUENT mark in seventy-four
offices around the world, including the
Respondent, Maison Tropicale S.A., registered the <aquentfinancial.net> domain name on October 4, 2007. Respondent is using the disputed domain name to display links advertising the services of Complainant’s competitors.
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 asserts rights to the AQUENT mark based upon its USPTO trademark registration. Under the Policy, registration of a mark with an appropriate governmental authority (such as the USPTO) confers rights in that mark to the complainant. Accordingly, the Panel concludes that Complainant has established rights to the AQUENT mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <aquentfinancial.net> domain name incorporates Complainant’s AQUENT mark in its entirety and adds the generic word “financial” as well as the generic top-level domain (“gTLD”) “.com.” Complainant contends that these additions render the disputed domain name confusingly similar to its mark pursuant to Policy ¶ 4(a)(i). The issue in this case is very similar to the one presented to the panel in Allianz of America Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006). In Allianz, the disputed domain name was <allianzfinance.biz>, which the complainant alleged was confusingly similar to its “Allianz” mark. The panel found that the term “finance” described the complainant’s financial services business, and that the addition of the gTLD “.biz” was irrelevant. Therefore, the panel concluded that the disputed domain name was confusingly similar to the complainant’s mark under Policy ¶ 4(a)(i). Like the disputed domain name in Allianz, Respondent’s <aquentfinancial.net> domain name adds the word “financial” that describes Complainant’s financial services business, as well as a gTLD that is irrelevant under the Policy. These additions do not distinguish the disputed domain name from Complainant’s mark; therefore, the Panel concludes that Respondent’s <aquentfinancial.net> domain name is confusingly similar to Complainant’s AQUENT mark pursuant to Policy ¶ 4(a)(i). See also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <aquentfinancial.net> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent is not commonly known by the <aquentfinancial.net> domain name
pursuant to Policy ¶ 4(c)(ii). The WHOIS information identifies Respondent
as “Maison Tropicale S.A.,” and Complainant noted that it is not associated
with Respondent and has not authorized Respondent to use its AQUENT mark in a
domain name. Respondent did not submit a
response to counter this assertion.
Therefore, Complainant has sufficiently proven that Respondent is not
commonly known by the <aquentfinancial.net>
domain name under Policy ¶ 4(c)(ii). See
Reese v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by
the <lilpunk.com> domain name as there was no evidence in the record
showing that the respondent was commonly known by that domain name, including
the WHOIS information as well as the complainant’s assertion that it did not
authorize or license the respondent’s use of its mark in a domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Complainant states that Respondent is using the <aquentfinancial.net> domain name to display links advertising the services of Complainant’s competitors. Numerous UDRP panels have previously ruled that such a 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, e.g., Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). Therefore, the Panel concludes that Complainant cannot establish rights or legitimate interests in the <aquentfinancial.net> domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As Complainant correctly points out, Respondent’s use of the
<aquentfinancial.net> domain
name to advertise competing services disrupts Complainant’s business by
diverting customers to the websites of Complainant’s competitors. Therefore, Respondent’s registration and use
of the <aquentfinancial.net>
domain name constitutes bad faith in accordance with Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration
and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed
domain name to operate a commercial search engine with links to the
complainant’s competitors); see also David Hall Rare Coins v.
Complainant also contends that Respondent’ use of the <aquentfinancial.net> domain name is likely to cause confusion among customers searching for Complainant’s products. Specifically, customers may mistakenly believe that the services advertised on Respondent’s website that resolve from the disputed domain name are sponsored or endorsed by Complainant. As stated in Asbury Automotive Group, Inc. v. Texas International Property Associates, FA 958542 (Nat. Arb. Forum May 29, 2007), “…Respondent’s manner of use of the <cogginacura.com> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of, or affiliation with the resulting websites. Such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Additionally, Complainant argues that Respondent receives click-through fees for each redirected Internet user, and is profiting from the goodwill associated with its AQUENT mark. Complainant cites the case of Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) as support: “The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.” Complainant has proven its contention with respect to Policy ¶ 4(b)(iv), having successfully demonstrated Respondent’s corresponding registration and use in bad faith.
The Panel finds that Policy ¶ 4(b)(iv) 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 <aquentfinancial.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 6, 2008
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