Morningstar, Inc. v. Acme Mail c/o Admin, Site
Claim Number: FA0911001294973
Complainant is Morningstar, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morninstar.com>, registered with Directnic, Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 18, 2009.
On November 17, 2009, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <morninstar.com> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd 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 November 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 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 postmaster@morninstar.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <morninstar.com> domain name is confusingly similar to Complainant’s MORNINGSTAR mark.
2. Respondent does not have any rights or legitimate interests in the <morninstar.com> domain name.
3. Respondent registered and used the <morninstar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an investment and financial services company that promotes its business under the MORNINGSTAR mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on December 13, 1994 (Reg. No. 1,866,773). Complainant has used the MORNINGSTAR mark to promote its services since at least as early as 1984.
Respondent registered the <morninstar.com> domain name on March 30, 2001. The disputed domain name resolves to a website that contains advertisements and links to third-party websites that compete with Complainant.
Complainant
offers evidence that Respondent has a history of registering domain names
infringing upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainants. See Breitling SA, Breitling USA Inc. v. Acme Mail, D2008-1000 (WIPO Aug.
24, 2008); Citigroup Inc. v. Acme Mail, FA 241987 (Nat. Arb. Forum Apr. 12,
2004); Deutsche Lufthansa AG v. Acme Mail,
D2008-1580 (WIPO Dec. 4, 2008).
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.
The Panel finds that Complainant has established sufficient
rights in the MORNINGSTAR mark pursuant to Policy ¶ 4(a)(i) through registration
of the mark with the USPTO (Reg. No. 1,866,773 issued
Complainant argues that Respondent’s <morninstar.com> domain name is confusingly
similar to Complainant’s MORNINGSTAR mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains a
misspelled version of Complainant’s mark by omitting the letter “g.” The Panel
finds that a disputed domain name that contains a misspelled version of a
complainant’s registered mark creates a confusing similarity between the
disputed domain name and the complainant’s mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder
&
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has sufficiently met its burden of producing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, it is Respondent’s responsibility to repudiate Complainant’s assertion and provide evidence that Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). However, Respondent has failed to respond to the Complaint. Consequently, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel will nevertheless examine the record in consideration of the factors cited under Policy ¶ 4(c).
Respondent has
offered no evidence, and there is no evidence in the record, suggesting that
Respondent is commonly known by the disputed domain name.
Complainant asserts that Respondent is not authorized to use the MORNINGSTAR
mark. The WHOIS information identifies registrant
as “Acme Mail c/o Admin, Site.”
Therefore, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B.
v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the
respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see
also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate
interests in a disputed domain name where there was no evidence in the record
indicating that the respondent was commonly known by the disputed domain name).
Respondent’s disputed
domain name resolves to a website featuring click-through links and
advertisements for Complainant’s competitors. The Panel finds that Respondent’s
use of the disputed domain name
to redirect Internet users to Complainant’s competitors, presumably for
financial gain, is not constitute 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
Expedia, Inc. v. Compaid, FA
520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of
the <expediate.com> domain name to redirect Internet users to a website
featuring links to travel services that competed with the complainant was not 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 Metro. Life Ins. Co. v.
Bonds, FA 873143 (Nat. Arb.
Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name
to divert Internet users to competing websites does 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)).
In addition, typosquatting occurs when a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who commit those typographical errors. The disputed domain name takes advantage of Internet users who mistype Complainant’s MORNINGSTAR mark. Complainant contends that Respondent has engaged in typosquatting by misspelling Complainant’s mark in the disputed domain name. The Panel agrees and concludes that Respondent’s engagement in typosquatting is further evidence that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant provides evidence that Respondent has a history
of registering domain names infringing upon the trademark rights of others and
has been ordered by previous UDRP panels to transfer the disputed domain names
to the respective complainants. See Breitling SA, Breitling USA Inc. v. Acme Mail, D2008-1000 (WIPO Aug.
24, 2008); Citigroup Inc. v. Acme Mail, FA 241987 (Nat. Arb. Forum Apr. 12,
2004); Deutsche Lufthansa AG v. Acme Mail,
D2008-1580 (WIPO Dec. 4, 2008).
The Panel finds that a pattern of registration and use of domain names
containing third parties established marks is evidence Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Respondent’s disputed domain name resolves to a website featuring links to Complainant’s competitors in the investment and financial services industry. The confusingly similar disputed domain name likely attracts Internet users that are attempting to access Complainant’s website. Those Internet users are unknowingly redirected to the websites of Complainant’s competitors. Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
In addition, Respondent is using the disputed domain name to intentionally divert
Internet users to the associated website, which display third-party links to
competing websites. In cases such as
this, the Panel presumes that Respondent is collecting click-through fees and
attempting to profit by creating a likelihood of confusion between
Complainant’s MORNINGSTAR mark and the confusingly similar disputed 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
Lastly, Respondent’s use of the disputed domain name constitutes typosquatting by misspelling Complainant’s MORNINGSTAR mark. Internet users may accidentally misspell Complainant’s mark when attempting to reach Complainant, and may instead reach Respondent’s resolving website and become confused. Respondent attempts to profit from the Internet users’ mistake and confusion. Therefore, the Panel finds Respondent’s practice of typosquatting constitutes bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
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 <morninstar.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 29, 2009
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