Realty Income Corporation v. Pertshire Marketing, Ltd
Claim Number: FA0908001278685
Complainant is Realty Income Corporation (“Complainant”), represented by Alfred
N. Goodman of Roylance, Abrams, Berdo & Goodman, LLP,
Washington D.C., USA. Respondent
Marketing, Ltd (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <themonthlydividendcompany.com>, registered with Domaindoorman, LLC.
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 electronically August 10, 2009; the National Arbitration Forum received a hard copy of the Complaint August 11, 2009.
On August 11, 2009, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <themonthlydividendcompany.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC verified that Respondent is bound by the Domaindoorman, LLC registration agreement and thereby has 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 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 9, 2009, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <themonthlydividendcompany.com> is identical to Complainant’s THE MONTHLY DIVIDEND COMPANY mark.
2. Respondent has no rights to or legitimate interests in the <themonthlydividendcompany.com> domain name.
3. Respondent registered and used the <themonthlydividendcompany.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Realty Income Corporation, is a corporation organized as a real estate investment trust. Complainant offers investment opportunities that are aimed at giving its investors “dependable periodic investment returns” through its real estate investment trust. Complainant owns a service mark registration with the United States Patent and Trademark Office (“USPTO”) for its THE MONTHLY DIVIDEND COMPANY mark (Reg. No. 2,633,771 issued October 15, 2002).
Respondent registered the <themonthlydividendcompany.com> domain name October 1, 2007. Respondent’s disputed domain name resolves to a website offering third-party links to websites that provide investment services in competition with Complainant.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 has a trademark registration with the USPTO for
the THE MONTHLY DIVIDEND COMPANY mark (Reg. No. 2,633,771 issued October 15,
2002). The Panel finds that Complainant
established rights in the THE MONTHLY DIVIDEND COMPANY mark for the purposes of
Policy ¶ 4(a)(i) through its trademark registration
with the USPTO. See Reebok Int’l Ltd. v.
Complainant alleges that Respondent’s disputed domain name
is confusingly similar to Complainant’s THE MONTHLY DIVIDEND COMPANY mark
pursuant to Policy ¶ 4(a)(i).
Respondent’s <themonthlydividendcompany.com> domain name contains
Complainant’s mark in its entirety, omits spacing between the words, and adds
the generic top-level domain (“gTLD”) “.com.”
The Panel finds that the omission of spacing and the addition of a gTLD
are irrelevant in distinguishing a disputed domain name from an established
mark. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO
Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical
to the complainant’s mark); see also
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks all rights and legitimate interests in the <themonthlydividendcompany.com> domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that its rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie showing to support its allegations. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is neither commonly known by, nor licensed to register, the disputed domain name. Respondent’s WHOIS information identifies Respondent as “DomainDoorman LLC Privacy Service.” The Panel finds that the WHOIS information demonstrates that Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the <themonthlydividendcompany.com> domain name. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent registered the <themonthlydividendcompany.com>
domain name October 1,
2007, and is using the resolving website to display links advertising
third-party websites in competition with Complainant’s offering of investment
services. Such use permits the Panel to
make an inference that Respondent is using the disputed domain name to earn
click-through fees. Therefore, the Panel
finds that Respondent has not made a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
and has not made a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr.
18, 2007) (holding that the respondent’s use of the contested domain name to
maintain a commercial website with links to the products and services of the
complainant’s competitors did not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii)); see also Bond
& Co. Jewelers, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that Respondent has used the <themonthlydividendcompany.com> domain name to disrupt Complainant’s business by offering links to competitors’ websites in the investment services industry. Such conduct supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent is using the <themonthlydividendcompany.com>
to intentionally divert Internet users to the associated website, which
displays third-party links to competing websites. In cases such as this, the Panel is permitted
to presume that Respondent is collecting click-through fees and attempting to
profit by creating a likelihood of confusion between Complainant’s THE MONTHLY
DIVIDEND COMPANY mark and the identical <themonthlydividendcompany.com>
domain name. The Panel finds that
Respondent’s use of the disputed domain name is further evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Zee
TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) (finding that the respondent engaged in bad faith registration and use by
using a domain name that was confusingly similar to the complainant’s mark to
offer links to third-party websites that offered services similar to those
offered by the complainant); see also
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <themonthlydividendcompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 29, 2009.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum