Ameriprise Financial
Services, Inc. v. Michael Law
Claim Number: FA0803001169595
PARTIES
Complainant is Ameriprise Financial Services, Inc. (“Complainant”), represented by Ryan
M. Kaatz, of Faegre & Benson, LLP, of
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <riversourcedistributors.com> and <riversourcefunds.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.
Michael A. Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 24, 2008; the
National Arbitration Forum received a hard copy of the Complaint on March 26, 2008.
On March 25, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <riversourcedistributors.com> and <riversourcefunds.com>
domain names are registered with Godaddy.com,
Inc. and that the Respondent is the current registrant of the
names. 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 March 26, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 15, 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@riversourcedistributors.com and postmaster@riversourcefunds.com
by e-mail.
A timely Response was received and determined to be complete on April 3, 2008.
An additional submission was received from Complainant dated April 8,
2008.
An additional submission bearing no date was received from Respondent.
On April 14, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Michael A. Albert as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Ameriprise Financial Services, Inc., operates in the
financial services industry. RiverSource
is a subsidiary of Complainant. Complainant
owns federally registered trademarks and service marks for RIVERSOURCE and
RIVERSOURCE & Design, registered for use in connection with various financial
goods and services.
Complainant asserts that Respondent was hired as a sales consultant for
Complainant in May 2003. Complainant contends
that, despite its express policy that its advisors not register or use domain
names incorporating Complainant’s well known marks, Respondent registered the <riversourcedistributors.com> and
<riversourcefunds.com> domain
names between May 25 and May 27, 2007.
Complainant contends that these domain names initially resolved to a
page offering the domain names for sale, and that Respondent currently is not
making use of the domain names.
Complainant sent Respondent a cease-and-desist letter. Complainant contends that Respondent then
deleted other domain names incorporating Complainant’s marks, but continues to
maintain the two domain names at issue.
Complainant contends that Respondent has registered and used domain
names that are confusingly similar to Complainant’s marks, in that they
incorporate the RIVERSOURCE mark in its entirety and add the generic terms
“funds” or “distributors,” terms which directly relate to the goods and
services Complainant offers.
Complainant contends that Respondent has no rights or legitimate
interests respecting the disputed domain names.
Specifically, Complainant contends that Respondent was not given consent
to register the domain names.
Complainant further argues that Respondent’s initially using the domain
names in connection with a website offering the domain names for sale, and more
recently making no apparent use of the domain names, do not constitute a bona fide offering or goods or services. Finally, Complainant contends that Respondent
does not own and has not applied for registration in any mark incorporating the
element RIVERSOURCE, and is not commonly known by either domain name.
Complainant contends that Respondent has registered and is using the
disputed domain names in bad faith, offering several circumstances as evidence. First, Complainant points out that the domain
names initially resolved to a web page offering the domain names for sale. Second, Complainant argues that Respondent’s
registering and using multiple domain names incorporating Complainant’s mark
establishes a pattern of preventing Complainant from reflecting its mark in a
corresponding domain name. Third,
Complainant points out that Respondent was an employee of Complainant, and
registered and used the disputed domain names despite Complainant’s express
policy not to do so. Fourth, Complainant
contends that Respondent is passively holding the domain name. Finally,
Complainant argues that Respondent had actual or constructive knowledge of
Complainant’s RIVERSOURCE mark, and that Respondent registered and used the
disputed domain names despite such knowledge.
B. Respondent
Respondent contends that the underlying terms “river” and “source” are
generic, and that Complainant does not have a monopoly over the use of such
terms by virtue of its trademark registrations.
Respondent also contends that addition of the generic terms
“distributors” and “funds” negate any confusing similarity to Complainant’s
RIVERSOURCE mark.
Respondent contends that its registration of the disputed domain names
predates the Complainant’s use of any service mark that is distinctive and
famous and completely contains the words or phrases “River Source Distributors”
or “River Source Funds”.
Respondent contends that it has legitimate interests in the domain names
by virtue of “geographical heritage,” a bona
fide business interest, and interests that differ from those of the Complainant. Respondent asserts that he was born and
raised in
Respondent admits to knowledge of Complainant’s RIVERSOURCE mark, but
claims the disputed domain names are outside of the scope of the other terms
Complainant used to “brand” itself (including Riversource Investments,
Riversource Insurance, and Riversource Annuities).
Respondent contends that the disputed domain names were not registered
in bad faith. Specifically, Respondent
asserts that the domain names were not registered for the purpose of selling the
domain names to Complainant, nor to prevent Complainant from reflecting the RIVERSOURCE
mark in a corresponding domain name or disrupt Complainant’s business.
Respondent asserts that it offered to transfer the disputed domain
names to Complainant in September, 2005, if Complainant would reimburse the
$135.25 spent registering the domain names.
No response was received from Complainant. Respondent further contends that it has never
listed the domain names for sale on a third party brokerage website.
Respondent asserts that he left Ameriprise in November 2005, and that
prior to leaving he was a Regional Sales Consultant, not an Advisor, as
Complainant refers to him.
Respondent contends that Complainant’s domain names
<riversource.com> and <ameriprise.com> provide simpler and more
direct ways to reach Complainant’s websites.
Respondent points out that the search results submitted by Complainant
do not include the disputed domain names, and thus argues that the domain names
must not interfere with Complainant’s business.
Finally, Respondent contends that Complainant has failed to cite any
instance where an Internet user was misdirected to Respondent’s cite, or misled
as to the source of Respondent’s cite.
C. Complainant’s Additional
Submission
Complainant asserts that the disputed domain names are confusingly
similar, despite the addition of the terms “distributors” and “funds”. Complainant further asserts that, on May 25,
2005, it publicly referred to RiverSource Distributors as RiverSource’s
distribution arm, and also points out that it repeatedly refers to “funds” in
describing its goods and services.
Complainant argues that the terms “distributors” and “funds” therefore
clearly relate to the goods and services Complainant provides, thus
contributing to the confusing similarity of the disputed domain names.
Complainant notes that the filing date of its RIVERSOURCE registration
is April 13, 2005, and contends that its rights in the mark thus predate
Respondent’s registration of the disputed domain names, contrary to Respondent’s
contentions.
Complainant argues that Respondent’s statements regarding its proposed
business are not sufficient to show demonstrable preparations to use the domain
name in connection with a bona fide
offering of goods or services.
Complainant also provides an email from Respondent to Complainant’s
outside counsel, where respondent states that the disputed domain names were intended
“to function as a brand steward,” and to “direct current and prospective
clients to Ameriprise Financial.” Complainant
thus argues that Respondent’s proposed business plans are not credible in light
of these earlier statements.
D. Respondent’s Additional
Submission
Respondent provides an executive summary for its proposed business, and
contends this is evidence of preparation to use the domain name in connection
with a bona fide business.
Respondent contends that it has no idea where Complainant obtained
Annex E, which Complainant asserts is a printout of the page formerly
associated with the disputed domain names.
FINDINGS
The Panel finds that Complainant has provided sufficient evidence to
establish that the disputed domain name is identical or confusingly similar to
Complainant’s registered marks.
The Panel finds that Respondent has failed to rebut Complainant’s
showing that Respondent lacks rights or a legitimate interest in the disputed
domain name.
Finally, the Panel finds that Complainant has provided sufficient
evidence that Respondent has registered and used the disputed domain name in
bad faith.
DISCUSSION
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.
Complainant asserts rights in the RIVERSOURCE
mark by virtue of its federal trademark registrations for the mark. Although Complainant’s mark was not
registered until March 6, 2007, its rights date at least back to the
application filing date, April 13, 2005, which is prior to Respondent’s May 25,
2005 registration of the disputed domain names.
As to confusing similarity, the disputed
domain names incorporate Complainant’s mark in its entirety, merely adding the
terms “distributors” or “funds,” which appear closely related to the goods and
services offered by Complainant. See Miller Brewing
Accordingly, the Panel finds that the disputed domain names
are confusingly similar to marks in which Complainant owns rights.
Complainant argues that Respondent has no
rights to or legitimate interests in the disputed domain names. Specifically, Complainant contends that
Respondent has not been commonly known by the disputed domain names, and that
although Respondent is a former employee of Complainant, Complainant has an
express policy against its advisors registering or using domain names that
incorporate Complainant’s well-known marks.
Complainant also contends that Respondent has
neither used, nor made demonstrable preparations to use, the disputed domain
names in connection with a bona fide
offering of goods or services. As
evidence, Complainant asserts that the domain names originally resolved to a
website offering the domain names for sale, and currently are not being used at
all.
Complainant has thus made a prima facie showing in support of its
case that Respondent has no rights or legitimate interests in respect of the
domain names. The burden therefore
shifts to Respondent to show that it does have such rights or legitimate
interests.
Respondent argues that it has made
demonstrable preparations to use the disputed domain names in connection with a
bona fide offering of goods and
services, and offers a brief description of its proposed business, as well as
an executive summary of its business plan.
The Panel, however, does not find the evidence offered by Respondent to
be credible, for a number of reasons. Respondent
is a former employee of Complainant, and it is apparent that Respondent had
actual knowledge of Complainant’s RIVERSOURCE mark, so any assertion that
Respondent developed the name “River Source Distributors” independently and for
a purportedly unrelated business, without any intent to trade on Complainant’s goodwill,
is unpersuasive. In any event, the
evidence supporting Respondent’s alleged business plan and trade name selection
are sketchy, at best. Finally, the email
correspondence between Respondent and Complainant’s outside counsel (Annex B to
Complainant’s Additional Submission) removes any doubt as to Respondent’s true
intent in registering the disputed domain names, as it flatly contradicts
Respondent’s representations.
Accordingly, the Panel finds that Respondent
has failed to rebut Complainant’s showing that Respondent lacks rights or a
legitimate interest in the disputed domain names.
Complainant has offered a number of
circumstances as evidence that Respondent has registered and used the disputed
domain names in bad faith. First,
Complainant asserts that the web page initially associated with the disputed
domain names offered those domain names for sale, and argues that this shows
bad faith under Policy ¶ 4(b)(i). While
Respondent contends it “has no idea where Complainant obtained Annex E from,” it offers nothing that refutes
Complainant’s assertion.
Second, Complainant argues that Respondent’s
registration of several domain names incorporating Complainant’s RIVERSOURCE
mark demonstrates a pattern of registering domain names that prevent
Complainant from reflecting its mark in corresponding domain names. Prior panels have held that such patterns are
evidence of bad faith under Policy ¶ 4(b)(ii).
See Yahoo!
Inc. v. Syrnyx, Inc.,
D2000-1675 (WIPO Jan. 30, 2001).
Third, Respondent was a former employee of
Complainant, and Respondent registered and used the disputed domain names
despite Complainant’s policy against such conduct. As an employee, Respondent plainly had actual
(as well as constructive) knowledge of Complainant’s RIVERSOURCE mark. Prior panels have found bad faith where a
respondent is a former employee of the complainant and had knowledge of
complainants marks. See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399
(WIPO Dec. 19, 2000).
In addition to the
evidence offered by Complainant, the Panel considers Respondent’s assertions
regarding how he chose the domain names to be utterly lacking in
credibility. Respondent contends
(without further support beyond his word) that “[t]hese two independent factors, residing on a River, and being the
Source of Minnesota’s population led to the decision to purchase the domain
names in question.” It would be hard enough to believe that Respondent
coincidentally came up with domain names that happen to contain his
ex-employer’s trademark. But in any
event, his contention is belied by his own earlier statements in an email
submitted by Complainant, which directly contradict that assertion.
The Panel finds that all of the foregoing
evidence supports Complainant’s assertion that Respondent has registered and
used the disputed domain names in bad faith.
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 <riversourcedistributors.com> and <riversourcefunds.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Panel takes this opportunity to note
that, unlike in court proceedings or certain other types of arbitrations, panels
are not authorized to impose sanctions on parties found to have made
misrepresentations in their pleadings.
Whether the unavailability of such sanctions creates insufficient
incentives to candor in proceedings under the Policy is a matter that the drafters
of any future Policy amendments may wish to consider.
Michael A. Albert, Panelist
Dated: April 28, 2008
National
Arbitration Forum
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