Global Informational Licensing Corporation v. Accounting Software, Inc.
Claim Number: FA0208000122143
Complainant is Global Informational Licensing Corporation, Claymont, DE (“Complainant”) represented by Mark Lerner, of Satterlee Stephens Burke & Burke LLP. Respondent is Accounting Software, Inc., San Jose, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accountingtoday.com>, registered with Network Solutions Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 19, 2002; the Forum received a hard copy of the Complaint on August 21, 2002.
On August 21, 2002, Network Solutions Inc. confirmed by e-mail to the Forum that the domain name <accountingtoday.com> is registered with Network Solutions Inc. and that Respondent is the current registrant of the name. Network Solutions Inc. has verified that Respondent is bound by the Network Solutions 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 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 16, 2002 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 allegations in this proceeding:
The <accountingtoday.com> domain name is identical to Complainant’s ACCOUNTING TODAY mark.
Respondent has no rights or legitimate interests in the <accountingtoday.com> domain name.
Respondent registered and used the <accountingtoday.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the ACCOUNTING TODAY mark (Reg. No. 1,501,756). Complainant uses the ACCOUNTING TODAY mark in association with a newspaper on accounting and in connection with online publications in the field of accounting. The ACCOUNTING TODAY mark has been used by Complainant since at least as early as 1987.
Complainant’s accounting periodical, which is denoted by the ACCOUNTING TODAY name, is a bi-monthly publication that “provides readers with up-to-date news and professional analysis of the top developments and trends in the tax and accounting professionals marketplace.” Every issue of the periodical contains pages devoted to new products, people, firms, upcoming events, and a website guide. Complainant’s publication service is highly influential in the field of tax and accounting, and it is regularly cited in The Wall Street Journal, Financial Times, New York Post, Barron’s, Bloomberg, and CNN.
Complainant’s ACCOUNTING TODAY periodical service has continually grown in the past fifteen years. In 2001, the publication had 33,875 subscribers and 790,500 issues were distributed. Since the inception of ACCOUNTING TODAY, the publication has gained a reputation for its high quality.
Respondent registered the <accountingtoday.com> domain name on October 6, 1998, and Respondent uses the domain name to redirect Internet traffic to its website, <accountingsoftware.com>. At this website, Respondent provides product information about accounting programs and furnishes a link to <amazon.com> where users can purchase accounting software.
Complainant attempted to settle the dispute with Respondent amicably, but Respondent ignored Complainant’s repeated efforts to open communication lines between the two 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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 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 established in this proceeding that it has rights in the ACCOUNTING TODAY mark by providing proof of its trademark registration rights with the USPTO.
The domain name registered by Respondent, <accountingtoday.com>, contains Complainant’s entire ACCOUNTING TODAY mark absent the space between the words of the mark and with the addition of the generic top-level domain (“gTLD”) “.com.” Spaces are not permitted in second-level domains so Respondent’s lack of a space does not affect the identical analysis under Policy ¶ 4(a)(i). Likewise, the addition of a gTLD is inconsequential in an identical analysis because gTLDs are required. Therefore, Respondent’s <accountingtoday.com> domain name is identical in form to Complainant’s ACCOUNTING TODAY mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has satisfied the burden to allege a prima facie case and, as a part of the Complaint, Complainant alleged that Respondent has no rights or legitimate interests in the <accountingtoday.com> domain name. Complainant fulfilled its burden, which has the effect of shifting the burden to Respondent to articulate rights or legitimate interests in the domain name. Respondent, however, has not come forward to invoke any circumstances that would prove that Respondent has an interest in the domain name. Therefore, the Panel is permitted to presume that Respondent has no rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, Respondent also did not come forward to challenge Complainant’s contentions and as a result the Panel may draw all reasonable inferences from the Complaint and accept all of Complainant’s allegations as true. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).
Respondent uses the <accountingtoday.com> domain name to divert Internet traffic from Complainant to Respondent’s <accountingsoftware.com> website, which is a website devoted to promoting the sale of accounting software. The <accountingsoftware.com> website purports to be “The Premier Online Accounting Information Resource.” The website, however, does not provide news or information about accounting. Instead, what is found at the website is information about accounting software products and a link to <amazon.com> where such products may be purchased. It is clear that Respondent operates in the same professional field as Complainant because that they both provide services to the accounting profession. Presumably, Respondent’s website, <accountingsoftware.com>, operates for profit and benefits from the initial interest in Complainant’s ACCOUNTING TODAY mark. Respondent’s diversionary use of the domain name is calculated to create confusion for those who seek to access Complainant’s services. Respondent’s use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it does not represent a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
Respondent has never operated a business under the ACCOUNTING TODAY moniker. Complainant alleges that it never granted Respondent permission or a license to use the ACCOUNTING TODAY mark and Respondent has come forward with no evidence on the record to show that Respondent is commonly known by the <accountingtoday.com> domain name or any similar version thereof. Hence, Respondent has no rights or legitimate interests in the <accountingtoday.com> domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <accountingtoday.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s diversionary tactics are designed to confuse Internet users as to what connection Complainant has with the <accountingsoftware.com> website. This is evident because Respondent’s website purports to offer the same news and information service that Complainant’s ACCOUNTING TODAY periodical provides. Thus, by using a domain name identical to the ACCOUTING TODAY mark Respondent profits from the highly regarded mark that belongs to Complainant and the resulting confusion when Respondent does business under Complainant’s name. Respondent’s behavior represents bad faith registration and use under Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <accountingtoday.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 16, 2002.
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