national arbitration forum

 

DECISION

 

Morningstar, Inc. v. Whois-Privacy.Net Ltd c/o DN Manager

Claim Number: FA1001001303932

 

PARTIES

Complainant is Morningstar, Inc. (“Complainant”), represented by CitizenHawk, Inc., Califonia, USA.  Respondent is Whois-Privacy.Net Ltd c/o DN Manager (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mormingstar.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

Sandra J. Franklin 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, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <mormingstar.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty 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 February 3, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 23, 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@mormingstar.com by e-mail.

 

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

 

On March 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <mormingstar.com> domain name is confusingly similar to Complainant’s MORNINGSTAR mark.

 

2.      Respondent does not have any rights or legitimate interests in the <mormingstar.com> domain name.

 

3.      Respondent registered and used the <mormingstar.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Morningstar, Inc., is an investment and financial services company promoting its business under the MORNINGSTAR mark since at least 1984.  Complainant serves more than 6.5 million individual investors, and now operates in 19 countries.  Complainant has registered its MORNINGSTAR mark with the United States Patent and Trademark Office (“USPTO”) on December 13, 1994 (Reg. No. 1,866,773). 

 

Respondent registered the <mornigstar.com> domain name on May 23, 2002.  The disputed domain name resolves to a website that contains advertisements and links to third-party websites that compete with Complainant.

 

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

 

The Panel finds Complainant has established sufficient rights in the MORNINGSTAR mark through its registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i).  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); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

 

Respondent’s <mormingstar.com> domain name is confusingly similar to its MORNINGSTAR mark.  The <mormingstar.com> domain name differs from Complainant’s mark in two ways: (1) the first letter “n” has been replaced with the letter “m” in the mark; and (2) the generic top-level domain (gTLD) “.com” has been added to the mark.  The Panel finds that substituting a single letter does not sufficiently distinguish a domain name from a mark.  See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).  The Panel also finds the addition of the gTLD “.com” does not sufficiently distinguish a domain name from the incorporated mark for the purposes of Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  Therefore, the Panel finds the changes to the MORNINGSTAR mark do not sufficiently distinguish the disputed domain name from Complainant’s mark, and thus finds Respondent’s <mormingstar.com> domain name is confusingly similar to Complainant’s MORNINGSTAR mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant contends Respondent lacks all rights and legitimate interests in the <mormingstar.com> domain name.  Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name.  Though Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and Respondent has failed to submit a Response, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to the 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 BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

 

Complainant contends Respondent is not commonly known by the <mormingstar.com> domain name and Complainant has not authorized Respondent to use its MORNINGSTAR mark.  The WHOIS listing for the disputed domain name lists does not reflect Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds Respondent is not commonly known by the <mormingstar.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Complainant contends Respondent is using the <mormingstar.com> domain name to operate a website containing links to Complainant’s competitors.  The Panel finds Respondent’s use of a domain name incorporating Complainant’s mark to promote competitors is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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 Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).  The Panel therefore finds Respondent’s use of the <mormingstar.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the <mormingstar.com> domain name under Policy ¶ 4(c)(iii).   

 

In addition, Respondent has engaged in the practice of typosquatting.  Respondent is taking advantage of Internet users that are attempting to reach Complainant, but mistakenly misspelling Complainant’s MORNINGSTAR mark.  The Panel finds that Respondent’s engagement in the practice of typosquatting is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under 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 Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also 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).”).

 

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

 

Registration and Use in Bad Faith

 

Respondent is using the <mormingstar.com> domain name to host a website advertising Complainant’s competitors to intentionally disrupt Complainant’s business, evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). 

 

Respondent is collecting “click-through” fees from the companies to which Respondent is diverting Internet users, a commercial gain and evidence of Respondent’s bad faith registration and use of the <mormingstar.com> domain name 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 Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website.  Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website.  Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Additionally, 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 as to Complainant’s association with the disputed domain name and resolving website.  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 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 <mormingstar.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  March 16, 2010

 

 

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