national arbitration forum

 

DECISION

 

Daniel J. Zanger and Chartpattern.com, Inc. v. Bravura

Claim Number: FA1006001327408

 

PARTIES

Complainant is Daniel J. Zanger and Chartpattern.com, Inc. (“Complainant”), represented by Carrie L. Kiedrowski, of Jones Day, Georgia, USA.  Respondent is Bravura (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <danzanger.com>, registered with GoDaddy.com, Inc.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2010.

 

On June 1, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <danzanger.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 June 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@danzanger.com.  Also on June 3, 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 29, 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.

 

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 <danzanger.com> domain name is identical to Complainant’s DAN ZANGER mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Daniel J. Zanger and Chartpattern.com, Inc., holds common law rights in the DAN ZANGER mark due to its continuous use in commerce since as early as 1996 and its having gained a secondary meaning in the field of stock market information and analysis. Complainant uses the mark in connection with the provision of research, analysis and information relating to the stock market and stock trading news and information,  Complainant also uses the mark in connection with seminars, workshops, and speaking engagements in the fields of stock market information and analysis.

 

Respondent, Bravura, registered the <danzanger.com> domain name on April 30, 2008.  The disputed domain name resolves to a website that displays hyperlinks that lead Internet users to third-party websites including those of Complainant and Complainant’s competitors.

 

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 does not have a trademark registration for the DAN ZANGER mark with the United States Patent and Trademark Office (“USPTO”).  However, the Panel finds trademark registration is unnecessary where Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i).  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

 

Complainant asserts it has common law rights in its DAN ZANGER mark through its continuous use in commerce since 1996 and the subsequent secondary meaning it has acquired through its use of the mark.  Complainant’s DAN ZANGER mark refers to the personal name of the Complainant, and is used in connection with Complainant’s expertise in the field of stock market information and analysis.  Complainant holds a world record title for the largest percent change for a personal portfolio for a 12 month period of time and an 18 month period of time in the history of the United States stock market.  Complainant electronically publishes newsletters featuring stock market information and analysis, with a first use in commerce date of 1996.  Complainant has also conducted seminars and workshops, as well as performing speaking engagements, in the fields of stock market information and analysis since 1996.  The Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the DAN ZANGER mark to establish common law rights in the mark under Policy ¶ 4(a)(i) dating back to 1996.  See Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).

 

Complainant alleges that Respondent’s <danzanger.com> domain name is identical to its DAN ZANGER mark because the removal of a space between the terms of the mark and adding a generic top-level domain (“gTLD”) (“.com”) are insufficient to distinguish the disputed domain name from Complainant’s mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).  The Panel agrees and finds Respondent’s <danzanger.com> domain name is identical to Complainant’s DAN ZANGER mark pursuant to Policy ¶ 4(a)(i).

 

Complainant has satisfied the elements of Policy ¶ 4(a)(i) and the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark.

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) places the burden of proof on Complainant to make a prima facie case that Respondent has no rights and legitimate interests in the disputed domain name. Once support of these allegations has been provided, the burden to establish that Respondent has rights or legitimate interests in the disputed domain name shifts to the Respondent pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case in support of its allegation that Respondent has no rights and legitimate interests in the disputed domain name, shifting the burden to Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t 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 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 asserts that Respondent is not commonly known by the disputed domain name.  Complainant further asserts that it has not given any license or authorization for its mark to Respondent.  The WHOIS information for the <danzanger.com> domain name lists “Bravura” as the registrant, indicating that Respondent is not commonly known by the disputed domain name.  The Panel finds that Respondent has failed to meet its burden in showing that it is commonly known by the disputed domain name and therefore does not have rights or legitimate interests under 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Complainant contends that Respondent’s <danzanger.com> domain name resolves to a website that displays hyperlinks that lead Internet users to third-party websites including those of Complainant and Complainant’s competitors.  The Panel finds using a disputed domain name that is identical to Complainant’s mark to direct Internet users to Complainant’s competitors 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 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)); 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)).

 

Complainant alleges that Respondent failed to make an active use of the <danzanger.com> domain name from June 30, 2009 to March 2010.  Complainant alleges that between Respondent’s registration of the disputed domain name and June 30, 2009 the disputed domain name resolved to a website that displayed links to third-party websites.  Complainant asserts that it sent a “cease and desist” email to Respondent on June 29, 2009 and that the following day the website resolving from the disputed domain name was removed.  Following this removal, Respondent did not make an active use of the disputed domain name for nearly a full year.  The Panel finds that Respondent’s failure to make an active use of the <danzanger.com> domain name from June 30, 2009 to March 2010 is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name because failure to make an active use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent [was] not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Complainant has satisfied the elements of Policy ¶ 4(a)(ii) and the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

 

Complainant contends that the disputed domain name resolves to a website that leads Internet users, seeking Complainant’s services, to hyperlinks of third-party websites including those of Complainant and Complainant’s competitors.  Complainant argues that Respondent’s <danzanger.com> domain name diverts Internet users from Complainant’s business and is evidence of bad faith registration and use.  The Panel finds that diversion of Complainant’s business by leading Internet users, seeking Complainant’s services under its mark, to competitors of Complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See 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); see also Am. 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)).

 

Complainant further contends that Respondent profits from its diversion of Internet users seeking Complainant’s services.  Complainant argues that Internet users seeking Complainant’s services under its mark may become confused as to Complainant’s sponsorship of or affiliation with the website resolving from Respondent’s <danzanger.com> domain name.  Complainant further argues that Respondent likely receives click-through fees when Internet users, confused by the disputed domain name identical to Complainant’s mark, click on the displayed hyperlinks and are redirected to third-party websites.  The Panel finds that profiting from Internet users’ likelihood of confusion is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Univ. 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).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

Complainant previously alleged that Respondent failed to make an active use of the <danzanger.com> domain name from June 30, 2009 to March 2010.  The Panel finds that failure to make an active use of the disputed domain name for an extended period of time is further evidence that Respondent registered and uses the <danzanger.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

 

Complainant has satisfied the elements of Policy ¶ 4(a)(iii) and the Panel finds that Respondent registered and uses the disputed domain name in bad faith.

 

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

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  July 1, 2010

 

 

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