Ridgewood Financial Institute, Inc. v. Express Corporation c/o Domain, Admin
Claim Number: FA0807001217537
Complainant is Ridgewood Financial Institute, Inc. (“Complainant”), represented by Carl J. Spagnuolo, of McHale & Slavin, P.A., Florida, USA. Respondent is Express Corporation c/o Domain, Admin (“Respondent”), Dominica.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <psychotherapyfinances.com>, registered with Moniker Online Services, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 28, 2008.
On July 28, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <psychotherapyfinances.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 August
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 26, 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@psychotherapyfinances.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <psychotherapyfinances.com> domain name is identical to Complainant’s PSYCHOTHERAPY FINANCES mark.
2. Respondent does not have any rights or legitimate interests in the <psychotherapyfinances.com> domain name.
3. Respondent registered and used the <psychotherapyfinances.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ridgewood Financial Institute, Inc., operates in the field of marketing and business management as it pertains to behavioral health professionals. Complainant conducts its business under its PSYCHOTHERAPY FINANCES mark (Reg. No. 2,603,299 issued August 6, 2002), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <psyfin.com> domain name.
Respondent registered the <psychotherapyfinances.com> domain name on May 5, 2004. The disputed domain name resolves to a website that features links and advertisements for third-parties.
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’s registration of its mark with the USPTO adequately confers rights in the mark under Policy ¶ 4(a)(i) to Complainant. See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Respondent’s <psychotherapyfinances.com>
domain name merely incorporates Complainant’s entire PSYCHOTHERAPY FINANCES
mark, while removing the space in between the words and adding the generic
top-level domain “.com.” Previous panels
have found, and this Panel so holds, that neither change retains any merit
sufficient to distinguish the disputed domain name from the mark. See
Diesel v. LMN, FA 804924 (Nat. Arb.
Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to
complainant’s mark because “simply eliminat[ing] the space between terms and add[ing]
the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to
differentiate the disputed domain name from Complainant’s VIN DIESEL mark under
Policy ¶ 4(a)(i)”); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to the complainant’s BODY
BY VICTORIA mark). Thus, the Panel
easily finds that the disputed domain name is identical to Complainant’s mark
under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the <psychotherapyfinances.com> domain name. When Complainant sets forth a prima facie case supporting its allegations as it has in the current case, the burden shifts to Respondent to prove that it has rights or legitimate interests pursuant to 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Because Respondent has failed to tender a response to the Complaint, the Panel has no evidence that would indicate that Respondent is or was commonly known by the disputed domain name. What remains are Complainant’s unchallenged allegations and the WHOIS domain name registration information. The Panel notes that the WHOIS information’s listing of Respondent as “Express Corporation c/o Domain, Admin,” corroborates Complainant’s assertion that Respondent is not commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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 names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant has alleged that Respondent’s disputed domain
name merely resolves to a website that hosts a “parked” website that displays
advertisements promoting third-parties and their goods and services. Complainant asserts that Respondent “ma[de] a
veiled attempt to disguise its website as having some context with
‘Psychotherapy Finances,’” and that “Respondent’s website [seeks to] attract
Internet users … in furtherance of personal financial gain.” Complainant has submitted a screenshot of the
website in question. The Panel agrees with
Complainant and finds that Respondent has engaged in a practice of parking a
website resolving from the disputed domain name in the hope of garnering
commercial revenue from Internet users that click-through the advertisements. The Panel agrees with previous panels that
have held that such practices do not constitute bona fide offerings of goods or services under Policy ¶ 4(c)(i) or
legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent
to divert Internet users seeking Complainant’s website to a website of
Respondent and for Respondent’s benefit is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii).”); see
also Summit Group,
LLC v. LSO, Ltd., FA 758981
(Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the
complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s
own website for commercial gain does not constitute either 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges, and the Panel so finds under Policy ¶
4(b)(iv), that Respondent has engaged in bad faith registration and use by
“intentionally attempt[ing] to attract, for commercial gain, Internet users …
by creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement” of Respondent’s disputed domain name
and corresponding website. See
Allianz of Am. Corp. v. Bond,
FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith
registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting
Internet users searching for the complainant to its own website and likely
profiting); see also Yahoo! Inc. v. Web Master, FA
127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate
its search engine, a name that infringes upon Complainant’s mark, Respondent is
found to have created circumstances indicating that Respondent, by using the
domain name, has intentionally attempted to attract, for commercial gain,
Internet users to Respondent’s website by creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of the website or of a product or service on the website as
proscribed in 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 <psychotherapyfinances.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 17, 2008
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