Atlas Advisers, Inc. v. Atlas Securities, Inc.
Claim Number: FA0209000125752
Complainant is Atlas Advisers, Inc., San Leandro, CA, USA (“Complainant”) represented by Steven M. Weinberg, of Greenberg Traurig, LLP. Respondent is Atlas Securities, Inc., Providenciales, TC (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atlassecurities.com>, registered with Network Solutions, Inc.
The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 23, 2002; the Forum received a hard copy of the Complaint on September 23, 2002.
On September 25, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <atlassecurities.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 September 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 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 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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’s Submission makes the following assertions:
a. Respondent’s <atlassecurities.com> domain name is confusingly similar to Complainant’s registered ATLAS SECURITIES mark.
b. Respondent does not have any rights or legitimate interests in the <atlassecurities.com> domain name.
c. Respondent registered and used the <atlassecurities.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Atlas Advisors, Inc., is the holder of the service mark ATLAS SECURITIES (U.S. Serial No. 76/357879), a mark it has used continuously in commerce since July of 1990. Under this mark, Complainant distributes mutual funds and annuities to the public. It also provides services to customers of Golden West Financial Corp, Complainant’s parent corporation and a Fortune 500 Company. Complainant currently maintains over 100,000 accounts totaling in excess of $2 billion in assets, and is the only broker/dealer in the United States permitted to do business under the ATLAS SECURITIES mark.
Respondent, Atlas Securities, Inc., registered its <atlassecurities.com> domain name on January 16, 1998. Respondent’s domain name resolves to an undeveloped and blank website. Currently, Respondent’s administrative contact and senior owner is being sought by foreign law enforcement authorities for securities fraud and other criminal actions. Respondent is not licensed or otherwise authorized to make any use of Complainant’s ATLAS SECURITIES mark for any purpose.
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 draw such inferences 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.
Identical and/or Confusingly Similar
Complainant has established rights in the ATLAS SECURITIES mark through registration with the U.S. Patent and Trademark Office, as well as via continuous and widespread use of the mark. Although Complainant does not hold a registration in every jurisdiction worldwide, or in the country where Respondent is domiciled, it has sufficient rights to have standing to bring a Complaint. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Complainant has rights to the name when the mark is registered in a country even if Complainant has never traded in that country). In this dispute, Complainant has demonstrated a “bona fide” basis for making this Complaint by showing its widespread and active use of its mark in financial circles.
Respondent’s <atlassecurities.com> domain name is identical to Complainant’s ATLAS SECURITIES mark. The only differences between the domain name and the mark is the removal of the space from ATLAS SECURITIES and the addition of “.com” after the mark. The deletion of a space from a well-known mark does not prevent a domain name from being found identical to a mark under the Policy. 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 Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).
Furthermore, as a generic top-level domain (such as “.com”) is required for every domain name, this addition will not have any effect on whether Respondent’s domain name is identical to Complainant’s mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”); 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).
Accordingly, the Panel finds that the <atlassecurities.com> domain name is identical to Complainant’s registered ATLAS SECURITIES mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon Complainant. Under Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or services connected with the disputed domain name, the fact that it has been commonly known by the domain name, or that it is making a legitimate noncommercial or fair use of the domain name to demonstrate a right or legitimate interest in a domain name. If Complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore shifting the burden to Respondent. 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).
It is neither a bona fide offerings of goods or services, nor an example of a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is identical to an established mark fails to utilize the domain name for an extended period of time. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name). Respondent registered its <atlassecurities.com> domain name over four years ago, yet the domain name remains undeveloped. A blank website offers no bona fide goods or services, and is not a legitimate or fair use under the Policy.
Despite the fact that the disputed domain name resembles the business name of Respondent, Complainant has sufficiently shown that Respondent is not commonly known by that name. Complainant has never licensed or authorized Respondent to use its mark. Because Respondent registered the disputed domain name after Complainant’s use of the mark became widespread there is sufficient evidence to conclude that Respondent is not “commonly known” by the <atlassecurities> domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).
Once a complainant has successfully presented its prima facie case illustrating a respondent’s lack of rights or legitimate interests in its domain name, the burden of demonstrating rights and legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the Panel in Response to the Complaint, Respondent fails to meet that burden. See 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).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in its domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Although the Policy lists four circumstances that are considered to be evidence of bad faith registration and use, the circumstances described therein are not exhaustive, but are rather merely illustrative of situations clearly defining bad faith and registration. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶ 4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”). One example of bad faith registration and use not enumerated in the Policy is the concept of “passively holding” a domain name, especially one that is identical to a mark in which a complainant has rights.
A well-known trademark operates as constructive notice of the existence of the mark. It is evidence that a domain name has been registered and used in bad faith when Respondent registers a domain name that is identical to a trademark. See U-Haul Int’l, Inc. v. Steven Freed, FA 103,878 (Nat. Arb. Forum Mar. 1, 2002) (because of the fame attained by Complainant’s mark, it can be presumed that Respondent knew of U-HAUL before registering the disputed domain names); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Furthermore, passive holding of a domain name, without any further justification or demonstrable preparations for use, infers bad faith use and registration of the domain name. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); See also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
Within financial circles, Complainant’s ATLAS SECURITIES mark is well-known. Complainant has demonstrated that Respondent knew or should have known of Complainant’s rights in its mark prior to registration of the domain name. Respondent’s use of Complainant’s mark is therefore an action that evidences bad faith registration. Moreover, Respondent has passively held its domain name for over four years, a long enough period of time to establish an inference of bad faith registration and use.
In light of Respondent’s failure to respond in these proceedings, Complainant has shown ample evidence for the Panel to conclude that Respondent both acquired and used <atlassecurities.com> in bad faith. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Accordingly, the Panel finds that Respondent both registered and used its domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <atlassecurities.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 28, 2002
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