SCOTTRADE, INC. v. ScottTrade.com Scott Trade & Barter Service 1848 - 1998 a/k/a SCOTRADE.COM
Claim Number: FA0910001288794
Complainant is SCOTTRADE,
INC. (“Complainant”), represented by Ryan
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue are <scotttrade.com> and <scotrade.com>, registered with Tucows Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2009.
On October 12, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <scotttrade.com> and <scotrade.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows 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 October 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 4, 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 postmaster@scotttrade.com and postmaster@scotrade.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <scotttrade.com> and <scotrade.com> domain names are confusingly similar to Complainant’s SCOTTRADE mark.
2. Respondent does not have any rights or legitimate interests in the <scotttrade.com> and <scotrade.com> domain names.
3. Respondent registered and used the <scotttrade.com> and <scotrade.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SCOTTRADE, Inc., provides financial services, specifically securities brokerage services via direct, online computer connections and via multi-user global computer information networks. Complainant operates under the SCOTTRADE trademark. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its SCOTTRADE mark (Reg. No. 2,140,963 issued March 3, 1998).
Respondent registered the <scotttrade.com> and <scotrade.com> domain names on October 1, 1998. The disputed domain name resolves to websites featuring commercial search engines and hyperlinks to Complainant’s competitors in the financial services industry.
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.
Preliminary Issue:
Multiple Respondents
In the instant proceedings, Complainant has alleged that the
entities which control the domain names at issue are effectively controlled by
the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides
that a “complaint may relate to more than one domain name, provided that the
domain names are registered by the same domain name holder.” The WHOIS information for the <scotttrade.com> and <scotrade.com>
domain names reveals that the domain names share the same IP address host,
registrar, and e-mail contact at <www@37.net> and both domain names
contain identical contact addresses. The
WHOIS records for both domain names list the same address in
Complainant has registered its SCOTTRADE mark with the USPTO
(Reg. No. 2,140,963 issued March 3, 1998).
Previous panels have found that a trademark registration with a federal
trademark authority is sufficient to establish rights in a complainant’s
mark. See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is
registered with the USPTO, [the] complainant has met the requirements of Policy
¶ 4(a)(i).”); see also Reebok
Int’l Ltd. v.
Complainant argues that Respondent’s <scotttrade.com> and <scotrade.com> domain names are confusingly similar to Complainant’s SCOTTRADE mark. The disputed domain names contain common misspellings of Complainant’s mark, the deletion or addition of the letter “t,” and add the generic top-level domain (“gTLD”) “.com.” Previous panels have found that common misspellings fail to adequately distinguish disputed domain names from a complainant’s mark. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).); see also Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant). Past panels have also held that the addition of a gTLD is irrelevant under a Policy 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel finds that Respondent’s <scotttrade.com> and <scotrade.com> domain names are confusingly similar to Complainant’s SCOTTRADE mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged Respondent lacks rights and legitimate interests in the <scotttrade.com> and <scotrade.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant has not
authorized Respondent to use the disputed domain names or Complainant’s
SCOTTRADE mark. The WHOIS information
reveals that Respondent’s name does indicate a correlation to Complainant’s
mark and the disputed domain names.
Respondent has failed to offer further evidence, and there is no evidence in the record, proving Respondent is commonly known by the <scotttrade.com> and <scotrade.com> domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).
Respondent uses the <scotttrade.com> and <scotrade.com> domain names to resolve to websites featuring commercial search engines and hyperlinks to Complainant’s competitors in the financial services industry. Respondent likely receives click-through fees from the hyperlinks contained on the resolving websites. The Panel finds Respondent’s use of the confusingly similar disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
In addition, Respondent’s use of the <scotttrade.com> and <scotrade.com> domain names
constitute typosquatting. The Panel
finds that Respondent’s use of domain names that are common misspellings of the
SCOTTRADE mark to redirect Internet users seeking Complainant’s website fails
to establish rights or interests pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
Therefore, the Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <scotttrade.com> and <scotrade.com> domain names
resolve to websites that contain commercial search engines and hyperlinks which
link to Complainant’s competitors in the financial services industry. Internet users, searching for Complainant and
Complainant’s products, may instead purchase financial services from a
competitor because of Respondent’s use of the confusingly similar disputed
domain names. The Panel finds that Respondent’s
use of the disputed domain names disrupts Complainant’s financial services
business, which constitutes bad faith registration and use under Policy ¶
(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see
also Persohn v. Lim, FA
874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use
pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name
to operate a commercial search engine with links to the complainant’s competitors).
The Panel infers
Respondent receives click-through fees from the aforementioned hyperlinks and
commercial search engine. Internet
users, interested in Complainant, may become confused as to Complainant’s
affiliation and sponsorship of the disputed domain names and resolving
websites. Respondent attempts to profit
from that confusion. The Panel finds
that Respondent’s use of the <scotttrade.com> and <scotrade.com>
domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See
Furthermore, Respondent has engaged in typosquatting through its use of the <scotttrade.com> and <scotrade.com> domain names, which are common misspellings of Complainant’s SCOTTRADE mark. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
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 <scotttrade.com> and <scotrade.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret), Panelist
Dated: November 20, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum