national arbitration forum

 

DECISION

 

Legg Mason & Co., LLC v. Miguel Gila

Claim Number: FA1005001323561

 

PARTIES

Complainant is Legg Mason & Co., LLC (“Complainant”), represented by Gretchen L. Klebasko, of Legg Mason & Co., LLC, Maryland, USA.  Respondent is Miguel Gila (“Respondent”), Argentina.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <leggmasonretirement.com>, registered with BACKSLAP DOMAINS, INC.

 

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2010.

 

On May 7, 2010, BACKSLAP DOMAINS, INC confirmed by e-mail to the National Arbitration Forum that the <leggmasonretirement.com> domain name is registered with BACKSLAP DOMAINS, INC and that Respondent is the current registrant of the name.  BACKSLAP DOMAINS, INC has verified that Respondent is bound by the BACKSLAP DOMAINS, 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 May 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 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@leggmasonretirement.com by e-mail.  Also on May 7, 2010, the 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 June 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 "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.

 

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 <leggmasonretirement.com> domain name is confusingly similar to Complainant’s LEGG MASON mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Legg Mason & Co., is an asset management company that offers individual and business clients financial services including retirement products and services in 190 countries.  Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its LEGG MASON mark (e.g., Reg. No. 1,799,634 issued October 19, 1993). 

 

Respondent, Miguel Gila, registered the <leggmasonretirement.com> domain name on September 8, 1999.  Respondent’s disputed domain name resolves to a website that displays third-party links to competitors of Complainant, as well as links to businesses unrelated to Complainant.

 

Complainant offers evidence that Respondent has a history of registering domain names that infringe 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 Am. Airlines v. Gila, FA 1302710 (Nat. Arb. Forum February 25, 2010); see also Viacom Int’l Inc., v. Gila, D2009-0634 (WIPO June 30, 2009): see also MasterCard Int’l v. Gila, D2008-1968 (WIPO March 3, 2009).

 

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 that Complainant has submitted sufficient evidence indicating its rights in the LEGG MASON mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,799,634 issued October 19, 1993).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant argues that Respondent’s <leggmasonretirement.com> domain name is confusingly to Complainant’s LEGG MASON mark.  Complainant contends that Respondent’s use of its entire mark in addition to the generic term “retirement” and the generic top-level domain “.com” does not render the disputed domain name distinct from Complainant’s mark.  The Panel agrees and finds that Respondent’s <leggmasonretirement.com> domain name is confusingly similar to Complainant’s LEGG MASON mark under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel finds that Complainant has satisified the requirements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <leggmasonretirement.com> domain name.  Complainant is required to make a prima facie case in support of these allegations.  Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show it does have rights or legitimate interests in the disputed domain name. 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.”).  The Panel finds that the Complainant has produced a prima facie case.  Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <leggmasonretirement.com> domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  The Panel will review the evidence on record to determine whether Respondent possesses rights or legitimate interests in the <leggmasonretirement.com> domain name under Policy ¶ 4(c).

 

Complainant argues that Respondent is not affiliated with or related to Complainant and that Respondent is not licensed or authorized to use Complainant’s mark.  Further, Complainant contends that Respondent is not commonly known by the disputed domain name where the WHOIS information identifies “Miguel Gila” as the registrant of the disputed domain name.  The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), where the evidence on record does not indicate that Respondent is commonly known by the disputed domain name and Respondent offers no evidence to refute Complainant’s assertions.  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Complainant further argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Complainant contends that Respondent is using the <leggmasonretirement.com> domain name to display various third-party links to both competing and noncompeting businesses and that Respondent receives compensation for these click-through links.  The Panel finds that Respondent’s use of the disputed domain name to maintain a web-directory of third-party links is not a use in connection with 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 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 Jerry Damson, Inc. v. Tex. 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)).

    

The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s repeated cybersquatting is evidence of bad faith.  Complainant references past UDRP decisions against Respondent as evidence of a pattern of bad faith registration of domain names of well known parties.  See Am. Airlines v. Gila, FA 1302710 (Nat. Arb. Forum February 25, 2010); see also Viacom Int’l Inc., v. Gila, D2009-0634 (WIPO June 30, 2009): see also MasterCard Int’l v. Gila, D2008-1968 (WIPO March 3, 2009).  The Panel finds that Respondent’s history of registering domain names in bad faith is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the current case. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (finding a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) because the respondent had previously acquired several domain names that reflected names of celebrities and requested payment from such celebrities for the transfer of the domain name registrations); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).

 

Complainant further alleges that Respondent’s use of the <leggmasonretirement.com> domain name to display various third-party links results in a loss of business and interest in Complainant’s business.  Complainant argues that Respondent is diverting Internet user who are seeking Complainant’s business to the businesses of Complainant’s competitors or to third-party links that may be of interest to those Internet users seeking Complainant’s business, and that such use is evidence of bad faith registration and use.  The Panel finds that Respondent’s use of the disputed domain name to divert Internet users to the businesses of Complainant’s competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See 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).”); 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).

 

Lastly, Complainant argues that Respondent is attempting to attract Internet users to Respondent’s directory website for commercial gain by using the confusingly similar <leggmasonretirement.com> domain name.  Complainant contends that Respondent receives click-through fees for the third-party links posted on its website, and that such use is further evidence of Respondent’s bad faith registration and use.  The Panel finds that Respondent’s use of the disputed domain name to display various third-party links, where Respondent presumably collects click-through fees associated with those links, is evidence of 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).     

 

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 <leggmasonretirement.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  June 9, 2010

 

 

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