national arbitration forum

 

DECISION

 

Ameriprise Financial, Inc. v. The Manhattan Group Inc.

Claim Number:  FA0801001125663

 

PARTIES

Complainant is Ameriprise Financial, Inc. (“Complainant”), represented by David G. Barker, of Snell & Wilmer L.L.P., Arizona, USA.  Respondent is The Manhattan Group Inc. (“Respondent”), Washington, DC, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ameriprisecredit.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2008.

 

On January 3, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ameriprisecredit.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 January 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 31, 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@ameriprisecredit.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <ameriprisecredit.com> domain name is confusingly similar to Complainant’s AMERIPRISE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <ameriprisecredit.com> domain name.

 

3.      Respondent registered and used the <ameriprisecredit.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Ameriprise Financial, Inc., offers a variety of financial services under its AMERIPRISE trademark.  Complainant registered the AMERIPRISE mark with the United States Patent and Trademark Office (“USPTO”) on March 7, 2006 (Reg. No. 3,308,498).

 

Respondent registered the <ameriprisecredit.com> domain name on August 20, 2007.  The disputed domain name previously resolved to a website which offered links to products and services that directly competed with Complainant.  After the initiation of this Complaint, Respondent altered the disputed domain name to resolve to a website which merely states that “This website is coming soon.” 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has registered the AMERIPRISE mark with the USPTO.  The Panel finds this registration sufficiently establishes Complainant’s rights in the AMERIPRISE mark pursuant to Policy ¶ 4(a)(i).  See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“…Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office.  This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Respondent’s <ameriprisecredit.com> domain name fully incorporates Complainant’s AMERIPRISE mark with the generic term “credit” which describes Complainant’s financial services.  In addition, top-level domains such as “.com” are irrelevant when considering whether a disputed domain name is confusingly similar to a mark.  Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s AMERIPRISE mark pursuant to Policy ¶ 4(a)(i).  See Am. Int’l Group, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (finding <aigfraud.net> “confusingly similar to Complainant’s AIG mark because [the] domain name fully incorporates the mark with the addition of the generic or descriptive [term] ‘fraud’); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); 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 finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <ameriprisecredit.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant has established a prima facie case.  Moreover, due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also 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”).

 

Respondent was previously using the <ameriprisecredit.com> domain name to operate a website containing links to products and services that directly competed with Complainant’s financial products and services.  The Panel finds that Respondent’s previous competing use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). 

 

Respondent is currently using the <ameriprisecredit.com> domain name to display a message stating “This website is coming soon.”  The Panel finds that this constitutes a failure to make an active use of the disputed domain name and is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).

 

Additionally, the record and WHOIS information contain no evidence suggesting that Respondent is commonly known by the <ameriprisecredit.com> domain name.  Also, Respondent was not authorized to use Complainant’s AMERIPRISE mark.  Thus, the Panel finds the Respondent has not established rights or legitimate interests in the <ameriprisecredit.com> domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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 Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The Panel finds Respondent’s initial use of the disputed domain name was a registration and use in bad faith pursuant to Policy ¶ 4(b)(iv) because it was being used to operate a website offering links to products and services which compete with Complainant.  Respondent attempted to profit from the goodwill associated with Complainant’s mark by creating a likelihood of confusion amongst Internet users in order to attract them to Respondent’s disputed domain name.  Once at the disputed domain name, these Internet users could visit the links for which Respondent presumably receives a click-through fee.  See 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); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

Additionally, the Panel finds Respondent’s initial competing use of the disputed domain name evidenced registration and use in bad faith pursuant to Policy ¶ 4(b)(iii) because it was being used to disrupt Complainant’s business.  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).

 

Presently, Respondent has removed the previous content from the website that resolved from the disputed domain name and replaced it with the following statement: “This website is coming soon.”  The Panel finds that this current use also constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii) because Respondent is not actively using the disputed domain name.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). 

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ameriprisecredit.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Honorable Paul A. Dorf  (Ret.), Panelist

Dated:  February 18, 2008

 

 

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