Frank Russell Company v. Rommel Balingit
Claim Number: FA0804001178430
Complainant is Frank Russell Company (“Complainant”), represented by David
H. Deits, of Davis Wright Tremaine LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <russellassets.com>, registered with Godaddy.com, Inc.
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 April 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 16, 2008.
On April 16, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <russellassets.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 April
23, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 13, 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@russellassets.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 17, 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 <russellassets.com> domain name is confusingly similar to Complainant’s RUSSELL mark.
2. Respondent does not have any rights or legitimate interests in the <russellassets.com> domain name.
3. Respondent registered and used the <russellassets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers investment advisory, consulting, analytical, and management services and diversified investment funds to individual and institutional investors. Complainant registered the RUSSELL mark with the United States Patent and Trademark Office (“USPTO”) on January 2, 1996 (Reg. No. 1,945,514). Complainant advises clients in more than 44 countries on investments of more than $1 trillion in assets, and serves approximately 600 organizations and thousands of individuals through its investment management business.
Respondent registered the <russellassets.com> domain name on January 27, 2004. The disputed domain name resolves to a website that until recently passed itself off as Complainant’s website and solicited confidential personal information from Internet visitors; the website now features links to websites offering services from 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.
The Panel finds that Complainant has established rights in
the RUSSELL mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that
Respondent’s <russellassets.com> domain name is confusingly similar to its RUSSELL
mark. The <russellassets.com> domain name differs from Complainant’s mark in two ways:
(1) the term “assets” has been added to the end of the mark; and (2) the
generic top-level domain (“gTLD”) “.com” has been added. Adding a term that describes Complainant’s
business does not sufficiently distinguish the domain name from the mark, and
neither does adding a gTLD, as it is required of all domain names. Consequently, the Panel finds that these
changes do not minimize or eliminate the resulting likelihood of confusion, and
so Respondent’s disputed domain name is not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Brown & Bigelow, Inc.
v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to the complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which the complainant is engaged, does not take the
disputed domain name out of the realm of confusing similarity); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("[T]he addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <russellassets.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that Respondent is not commonly known
by the <russellassets.com>
domain name nor has it ever been the owner or licensee of the RUSSELL mark. Respondent has been identified as “Rommel Balingit,” and nothing in the WHOIS
record for the disputed domain name lists Respondent as any variant on RUSSELL. This evidence, along with the fact that
Respondent has failed to show any evidence contrary to Complainant’s
contentions, compels the Panel to find that Respondent is not commonly known as
<russellassets.com> domain
name pursuant to Policy ¶ 4(c)(ii). See
Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”); 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).
Until recently, the
website that resolved from the disputed domain name passed itself off as
Complainant’s own website, using Complainant’s logo and mark to confuse
Internet visitors and obtain confidential personal information from them. The Panel finds that this use of the disputed
domain name to pass off a website as Complainant’s own, and “phish” for
unsuspecting visitors’ information, is neither
a bona fide offering of goods or
services under Policy ¶ 4(c)(i), nor an example of a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May
30, 2003) (finding that the respondent attempts to pass itself off as the
complainant online, which is blatant unauthorized use of the complainant’s mark
and is evidence that the respondent has no rights or legitimate interests in
the disputed domain name); see also Juno Online Servs., Inc. v. Nelson, FA
241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a
fraudulent scheme to deceive Internet users into providing their credit card
and personal information is not a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use).
Currently, Respondent maintains a website at <russellassets.com> domain name that features links to websites that offer services from Complainant’s competitors. The Panel finds that this use of the <russellassets.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under 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 Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent was, until recently,
passing off the website that resolved from the disputed domain name as
Complainant’s own website. Such use was
presumably for Respondent’s commercial gain through an attempt to create
confusion as to Complainant’s association with the disputed domain name and
resulting website. The Panel finds that this
use of the disputed domain name is evidence of registration and use in bad faith
pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent was, until recently, using the disputed domain name in a “phishing” scheme to obtain confidential personal information from Internet visitors who were under the mistaken assumption that they were at Complainant’s own website. The Panel finds that this use of the disputed domain name is evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
Complainant contends that Respondent is currently gaining commercially through this confusion, both through click-through fees and through the competing services that Respondent is offering at the website that resolves from the disputed domain name. The Panel finds that this is an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in bad faith. 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 finds 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 <russellassets.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 30, 2008
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