Adam & Company v.
Claim Number: FA0806001198466
Complainant is Adam & Company plc (“Complainant”), represented by James
A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <adamonline-co-uk.com>, registered with Enom, 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 June 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 3, 2008.
On June 3, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <adamonline-co-uk.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 June
4, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 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@adamonline-co-uk.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 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 <adamonline-co-uk.com> domain name is confusingly similar to Complainant’s ADAM & COMPANY mark.
2. Respondent does not have any rights or legitimate interests in the <adamonline-co-uk.com> domain name.
3. Respondent registered and used the <adamonline-co-uk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates as a private bank under the name ADAM
& COMPANY throughout the
Respondent,
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 in the ADAM & COMPANY mark primarily through its UKIPO and OHIM trademark registrations. In accordance with a long line of previous cases, the Panel finds that Complainant’s trademark registrations are sufficient to confer rights in the mark to Complainant under the parameters of Policy ¶ 4(a)(i). See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant alleges that the <adamonline-co-uk.com> domain name is identical or
confusingly similar to its ADAM & COMPANY mark. The disputed domain name changes
Complainant’s mark in various ways, such as adding the generic term “online;”
abbreviating “company” to “co;” adding the abbreviation for the United Kingdom,
“uk;” removing the ampersand and spaces, and replacing them with hyphens; and
adding the generic top-level domain (“gTLD”) “.com.” While these changes are numerous, they are not
distinctive, and the Panel concludes that the overall impression of the
disputed domain name remains the relevant portion of Complainant’s mark. The term “online” is rhetorical since it
identifies the electronic source of the product or service advertised, and
therefore does not add any defining feature to the disputed domain name. See Broadcom Corp. v. Domain
Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the
<broadcomonline.com> domain name is confusingly similar to the
complainant’s BROADCOM mark). Most, if
not all, people know that “co” is a common abbreviation for “company,” so this
adds to the confusing similarity of the disputed domain name. See SEMCO
Prods., LLC v. dmg world media (
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <adamonline-co-uk.com> 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).
Complainant notes that Respondent is using the <adamonline-co-uk.com> domain name to maintain a website that fraudulently imitates Complainant’s banking website. The disputed domain name’s resolving website displays Complainant’s ADAM & COMPANY mark and logo, and encourages customers to enter their account or other personal information to gain access to other portions of the site. Thus, not only is Respondent attempting to pass itself off as Complainant; it is also attempting to phish for customers’ confidential information. This use of the disputed domain name easily allows the Panel to conclude that Respondent cannot demonstrate any 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). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking the complainant’s financial services was not 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)).
Complainant also alleges that Respondent is not commonly
known by the <adamonline-co-uk.com>
domain name under the parameters of Policy ¶ 4(c)(ii). The WHOIS information identifies Respondent
as “
Based upon the above analysis, the Panel concludes that the
requirements of Policy ¶ 4(a)(ii) have been satisfied.
Respondent’s attempts at acquiring Complainant’s customers’
account and other personal information illustrate its hopes to profit off the
goodwill associated with Complainant’s ADAM & COMPANY mark. Indeed, Respondent is using the high
likelihood of confusion between the disputed domain name and Complainant’s mark
to lure unsuspecting Internet users to Respondent’s fraudulent resolving
website. Such registration and use of
the <adamonline-co-uk.com>
domain name is indicative of bad faith pursuant to Policy ¶ 4(b)(iv). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept.
19, 2006) (finding that the respondent demonstrated bad faith registration and
use because it was attempting to acquire the personal and financial information
of Internet users through a confusingly similar domain name); see also Wells Fargo & Co. v.
Irrespective of Respondent’s phishing attempts is the simple fact that Respondent is attempting to pass itself off as Complainant. This notion alone demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith registration and use of the domain name).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have 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 <adamonline-co-uk.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 1, 2008
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