national arbitration forum

 

DECISION

 

Morningstar, Inc. v. Tan Kim Fong

Claim Number: FA1001001303920

 

PARTIES

 

Complainant is Morningstar, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Tan Kim Fong (“Respondent”), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

 

The domain names at issue are <moningstar.com> and <mornningstar.com>, registered with Dotregistrar.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 21, 2010.

 

On January 20, 2010, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <moningstar.com> and <mornningstar.com> domain names are registered with Dotregistrar and that Respondent is the current registrant of the names.  Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 January 22, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 2010 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@moningstar.com and postmaster@mornningstar.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <moningstar.com> and <mornningstar.com> domain names are confusingly similar to Complainant’s MORNINGSTAR mark.

 

2.      Respondent does not have any rights or legitimate interests in the <moningstar.com> and <mornningstar.com> domain names.

 

3.      Respondent registered and used the <moningstar.com> and <mornningstar.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Morningstar, Inc., provides investment information about stocks, mutual funds, variable annuities, closed-end funds, exchange-trade funds, separate accounts, hedge funds, and college savings plans.  Complainant began offering this information service in 1984 and has grown to operate in over 19 countries.  Complainant utilizes the <morningstar.com> domain name to operate its website and sell its financial information products and services.  Complainant markets its financial information under its MORNINGSTAR mark.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its MORNINGSTAR mark (e.g., Reg. No. 1,866,773 issued December 13, 1994). 

 

Respondent registered the <moningstar.com> and <mornningstar.com> domain names no earlier than December 9, 2001.  The disputed domain names resolve to websites containing hyperlinks to Complainant’s competitors in the financial information industry.

 

Respondent has been a respondent in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases.  E.g., Countrywide Fin. Co. v. Fong, FA 1175424 (Nat. Arb. Forum May 7, 2008); America Online, Inc. v. Fong, FA 590806 (Nat. Arb. Forum Dec. 16, 2005).

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant contends it has established rights in the MORNINGSTAR mark.  Complainant holds multiple trademark registrations of the MORNINGSTAR mark with the USPTO (e.g., Reg. No. 1,866,773 issued December 13, 1994).  The Panel finds trademark registration with a federal trademark authority is sufficient to establish rights in a mark.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).  While Respondent resides in Malaysia, the Panel further finds Complainant is not required to register its mark within Malaysia in order to establish rights in the mark.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Therefore, the Panel finds Complainant has established rights in the MORNINGSTAR mark through Complainant’s trademark registration under Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <moningstar.com> and <mornningstar.com> domain names are confusingly similar to Complainant’s MORNINGSTAR mark.  The disputed domain names contain misspelled versions of Complainant’s mark by subtracting the letter “r” or by adding the letter “n.”  The disputed domain names simply add the generic top-level domain (“gTLD”) to the mark.  The Panel finds that misspellings of Complainant’s mark do not adequately distinguish the disputed domain names from Complainant’s mark and that the addition of a gTLD is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.  See 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; see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark); see also Nevada 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 <moningstar.com> and <mornningstar.com> domain names are confusingly similar to Complainant’s MORNINGSTAR mark under Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <moningstar.com> and <mornningstar.com> domain names.  Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a 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 <moningstar.com> and <mornningstar.com> 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 Hanna-Barbera Prods., Inc. v. Entertainmentt Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <moningstar.com> and <mornningstar.com> domain names.  Complainant asserts that Respondent is not authorized to use the MORNINGSTAR mark.  The WHOIS information identifies the registrant of the domain names as “Tan Kim Fong,” whose name is not similar to the disputed domain names.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <moningstar.com> and <mornningstar.com> domain names by showing that Respondent is commonly known by the disputed domain names 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 is using the <moningstar.com> and <mornningstar.com> domain names to resolve to websites featuring hyperlink directories.  The hyperlinks resolve to third-parties, some of which compete with Complainant in the financial information industry.  Respondent likely receives click-through fees from the aforementioned hyperlinks. The Panel finds this use of the confusingly similar disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Jerry Damson, Inc. v. Texas Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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 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)).

 

In addition, Respondent’s use of the <moningstar.com> and <mornningstar.com> domain names constitutes typosquatting.  The Panel finds that Respondent’s use of domain names that are common misspellings of the MORNINGSTAR mark in order 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 Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also 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 Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant alleges Respondent’s use of the <moningstar.com> and <mornningstar.com> domain names is a part of a pattern of bad faith use and registration.  Respondent has been a respondent in numerous UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases.  E.g., Countrywide Fin. Co. v. Fong, FA 1175424 (Nat. Arb. Forum May 7, 2008); America Online, Inc. v. Fong, FA 590806 (Nat. Arb. Forum Dec. 16, 2005).  The Panel finds this constitutes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).

 

Respondent’s <moningstar.com> and <mornningstar.com> domain names resolve to websites containing directories of hyperlinks that resolve to third-parties.  Some of the third-parties directly compete with Complainant in the financial information industry.  Complainant claims that Respondent’s use of the disputed domain names disrupts Complainant’s financial information products and services business because Internet users looking to buy financial information products or services from Complainant may be redirected to Complainant’s competitors through Respondent’s confusingly similar website.  Thus, the Panel finds Respondent’s use of the <moningstar.com> and <mornningstar.com> domain names disrupts Complainant’s financial information business and constitutes bad faith registration and use pursuant to 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 American Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).

 

The Panel infers Respondent receives click-through fees from the hyperlinks relating to Complainant’s competitors in the financial information industry.  Internet users may become confused as to Complainant’s affiliation and sponsorship of the third-party hyperlinks and websites resolving from the disputed domain names.  The Panel finds Respondent’s receipt of click-through fees constitutes bad faith registration and use under 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 University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Furthermore, Respondent has engaged in typosquatting through its use of the <moningstar.com> and <mornningstar.com> domain names, which are common misspellings of Complainant’s MORNINGSTAR 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 Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <moningstar.com> and <mornningstar.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  March 4, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum