Global Informational Licensing
Corporation v. Accounting Software, Inc.
Claim Number: FA0208000122143
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@accountingtoday.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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.
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page