ITG Software Solutions, Inc. v. Meng Fanning
Claim Number: FA1004001320179
Complainant is ITG Software Solutions, Inc. (“Complainant”), represented by Anne
M. Sterba, of Rothwell, Figg, Ernst & Manbeck P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <itgfx.com>, registered with Hichina Zhicheng Technology Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 20, 2010. The Complaint was submitted in both Chinese and English.
On April 20, 2010, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <itgfx.com> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology 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 May 4, 2010, the Forum served the Chinese Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of May 24, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@itgfx.com. Also on May 4, 2010, the Chinese Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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" through submission of a Written Notice, as defined in Rule 1. 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <itgfx.com> domain name is confusingly similar to Complainant’s ITG mark.
2. Respondent does not have any rights or legitimate interests in the <itgfx.com> domain name.
3. Respondent registered and used the <itgfx.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ITG Software Solutions, Inc., has registered its ITG mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,581,518 issued June 18, 2002). Complainant uses its mark in connection with providing and managing automated securities brokerage, trading, and trading strategies. Complainant offers its services online at its official website, resolving from the <itg.com> domain name.
Respondent, Meng Fanning, registered the <itgfx.com> domain name on October 31, 2007. The disputed domain name resolves to a website that attempts to pass itself off as Complainant’s sister company, displaying Complainant’s mark and displaying information about Complainant’s sister company, and provides 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."
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.
Complainant asserts its rights in the ITG mark through its registration
with the USPTO (Reg. No. 2,581,518 issued June 18, 2002). The Panel finds the
USPTO registration sufficient to establish rights of Complainant in the ITG
mark, as previous panels have found that trademark registration need not be in
the Respondent’s country to assert rights under Policy ¶ 4(a)(i).
See SDC Media, Inc. v.
SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that
“[t]his trademark registration [with the USPTO] establishes Complainant’s
rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant argues that Respondent’s <itgfx.com> domain name is confusingly similar to Complainant’s ITG mark. Complainant contends that Respondent’s disputed domain name does no more than add two generic letters (“fx”) and a generic top-level domain (“gTLD”) (“.com”), which is not enough to distinguish the disputed domain name from Complainant’s mark. The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark because the addition of generic letters and a gTLD does not distinguish the disputed domain name from the mark sufficiently under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case has been established, the burden shifts to the Respondent to refute Complainant’s allegations. The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. 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 Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). In light of Respondent’s failure to respond to these proceedings, the Panel may either accept Complainant’s allegations as true or may choose to review the allegations and evidence under Policy ¶ 4(c). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Complainant contends that it has given neither license nor authorization to Respondent for use of the ITG mark. The WHOIS information for the <itgfx.com> domain name lists the registrant as “Meng Fanning” which does not indicate Respondent is commonly known by the disputed domain name. The Panel finds no evidence in the record to the contrary and, therefore, finds Respondent is not commonly known by 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <itgfx.com> domain name resolves to a website that displays Complainant’s ITG mark and provides services in competition with Complainant. The Panel finds such use of the disputed domain name is not 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
In addition, Complainant argues that Respondent is attempting to pass itself off as Complainant’s sister company by using Complainant’s ITG mark and providing information about Complainant’s sister company on the website resolving from the disputed domain name. The Panel finds Respondent’s attempt to pass itself off as Complainant’s sister company is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the [disputed] domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant asserts that Internet users seeking the services provided by Complainant may be diverted to the website resolving from Respondent’s disputed domain name. The services offered on this website are in competition with Complainant’s sister company. The Panel finds this constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant further argues that Internet users may become confused as to sponsorship or affiliation of Complainant when Respondent’s <itgfx.com> domain name resolves to a website that displays Complainant’s ITG mark and provides services in competition with Complainant. Complainant alleges that Respondent profits from this confusion. The Panel finds that Respondent’s commercial gain from a website resolving from a domain name confusingly similar to Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Lastly, Complainant argues that Respondent, by providing information about Complainant’s sister company and using Complainant’s ITG mark, is using the disputed domain name in an attempt to pass itself off as Complainant’s sister company. The Panel finds Respondent’s use of the <itgfx.com> domain name to pass itself off as Complainant’s sister company is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
The Panel finds Policy ¶ 4(a)(iii) is 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 <itgfx.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 2 2010
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