American
Claim Number: FA1007001333697
PARTIES
Complainant is American Independence Funds Trust and Intrust
Financial Corporation (“Complainant”),
represented by Jordan S. Weitberg, of Bressler, Amery & Ross, P.C., New York, USA. Respondent is NestEgg Advisors, Inc. (“Respondent”), represented by Steven
S. Fang, of Dorsey & Whitney, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nesteggadvisors.net>, registered
with NETWORK
SOLUTIONS, LLC.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 6, 2010.
On July 7, 2010, NETWORK SOLUTIONS, LLC confirmed by e-mail to
the National Arbitration Forum that the <nesteggadvisors.net> domain name is
registered with NETWORK SOLUTIONS, LLC
and that the Respondent is the current registrant of the name. NETWORK
SOLUTIONS, LLC has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC 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 July 8, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of July 28, 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@nesteggadvisors.net by
e-mail. Also on July 8, 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.
A timely Response was received and determined to be complete on July 28, 2010.
Complainant’s Additional Submission was received on August 4, 2010 in
compliance with Supplemental Rule 7.
On August 9, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator,
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Service Mark Information:
The USPTO registered service marks supporting this Complaint are within International Class 36 (“IC 36”) and for the financial services listed below. Year of first use and first use in commerce for Service Marks 2 through 8 is 1999; Service Mark 1, 2002; Service Mark 9, 2000 and Service Mark 10, filed in 2008. All applications for these marks were filed before 2006, except for Service mark 10, filed in 2008
First
Complainant is the Owner of:
1. NestEgg Funds LIFE SIMPLIFIED (& design), USPTO Reg. No. 2,965,514, registered July 12, 2005, for investment money management in mutual funds;
2. NestEgg Capital Preservation Fund, USPTO Reg. No. 3,046,179, registered Jan. 17, 2006, for mutual funds investment services;
3. NESTEGG FUND 2000, USPTO Reg. No. 3,048,076, registered Jan. 24, 2006, for investment money management in mutual funds;
4. NESTEGG FUND 2010, USPTO Reg. No. 3,087,369, registered May 2, 20006, for mutual funds investment services;
5. NESTEGG FUND 2020, USPTO Reg. No. 3,046,180, registered Jan.17, 2006, for mutual funds investment services;
6. NESTEGG FUND 2030, USPTO Reg. No. 3,046,181, registered Jan. 17, 2006, for mutual funds investment services;
7. NESTEGG FUND 2040, USPTO Reg. No. 3,046,182, registered Jan. 17, 2006, for mutual funds investment services;
8. NESTEGG FUNDS AND DESIGN, USPTO Reg. No. 3,060,242, registered Feb. 21, 2006, for mutual funds investment services.
Second Complainant is the Owner of:
1. NestEgg U, USPTO Reg. No. 3,060,243, registered Feb. 21, 2006, for educational services, namely, providing classes and seminars in the field of 401(k) plans;
2. NESTEGG CONSULTING, USPTO Reg. No. 3,711,243, registered Nov. 17, 2009, for financial administration of retirement income plans such as 401Ks.
Complainant intends to use one or more variations of the NestEgg mark for advisory financial services.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
(a.) The
Domain Name Infringes Complainants’ Service Marks.
The dominant portion of the domain name in use by Respondent is identical or confusingly similar to the dominant portion of the USPTO-registered service marks of the Complainants. Respondent has no rights or legitimate interests in the Domain Name or the mark of which the Domain Name is composed. In violation of federal Trademark Act, 15 U.S.C. §§ 1051 et seq. and other applicable federal and state law, and the common law, the domain name that Respondent registered, nesteggadvisors.net, is intentionally identical and confusingly similar to Complainants’ senior USPTO-registered marks: (1) in the use of the identical compound word NestEgg or Nestegg, which joins the two separate words, “Nest” and “Egg,” without intervening space; (2) because the identical word directly precedes a generic term used in financial services industries, namely, “Advisors,” and (3) thereby falsely associating the name with those so identified with the financial services trade channels of first Complainant, who is headquartered in the same regional market, and of both Complainants, who are in the same web market as Respondent. Respondent has also adopted the identical mark as a trade name and is using that trade name in the website associated with the Domain Name.
Respondent’s Domain Name is so readily identifiable and competitive with the family of ten marks of both Complainants as to create immediate likelihood of confusion with and falsely attributable origin and misidentification of Respondent’s services as those of Complainants, or as associated with Complainants. When marks are so close, likelihood of confusion may result even if the goods or services are not competitive or intrinsically related, as they are here. In re Shell Oil Company, 992 F.2d 1204, 1207 (Fed. Cir. 1993).
(b) Respondent
Has No Legitimate Interest in the Service Marks.
Respondent
has no rights or legitimate interests in the use of Nestegg in the Domain
Name. Its usage is a recent encroachment
on the rights that Complainants’ well-established financial companies have
preserved and defended over two decades.
Seven of Complainants’ ten USPTO marks have been in continuous use in
commerce since 1990. All but one were in
use and registered prior to Respondent’s claimed first use in 2006 and its
domain name registration in 2005, apparently before Respondent’s claimed use in commerce. Respondent
has neither common law nor statutory rights in the NestEgg mark. For a decade and half prior to that Domain
Name registration, Complainants’ marks were listed, active, and widely
known for investment funds and advisory services in the financial industry.
From inception to February 24, 2010, the
total investment of participants enrolled in plans administered by Complainant
B and its affiliates under the NestEgg marks reached in excess of $14 million
in the States of New York, Connecticut and
Although other marks using or incorporating the words
“Nest” and “Egg” are registered in numerous international classes, a search of
the USPTO registry for the compound form at issue here, “NestEgg” in IC 36,
produces seventeen (17) records, ten (10) USPTO-classified as LIVE. Eight
(8) of these LIVE marks are registered to the first Complainant; two (2) are
registered to the second Complainant.
The nature of Complainants’ businesses, financial services to the public, under the NestEgg marks, requires the highest degree of trust by the investing public. For this reason, Complainants strive to maintain the highest reputation for their services under their marks and to supervise and control the reliability and consistency of the use of those marks. Any derogation from Complainants’ standards under identical NestEgg usage by another purveyor of financial services could threaten and even destroy the carefully guarded reputation of and trust in Complainants’ family of marks, developed since their original use in commerce in the 1990s.
(c.) Respondent
Registered and Continues Using the Domain Name in Bad Faith.
Respondent registered the Domain Name using Complainants’ NestEgg mark in 2005, before Respondent’s claimed first use in commerce. This domain name registration without use in commerce at that time raises the question of whether its motivation was cybersquatting. The Domain Name is now used by Respondent in bad faith. Respondent knowingly adopted and has knowingly continued using the Domain Name and Complainants’ NestEgg mark to misleadingly divert consumers to its website. On April 1, 2008, claiming first use in 2006, Respondent filed an application to register the Word Mark “NESTEGG ADVISORS” with the USPTO in IC 36 for financial services. This class includes, the services that Complainants’ marks define, namely, financial planning and financial planning for retirement.
On August 5, 2008, the USPTO examining attorney for this application issued an Office Action to Respondent denying registration of the mark based on “Likelihood of Confusion” with several existing federal registrations and previously-filed applications, attaching all eight registrations of Complainant A. See Ex. 7 at 1, Serial No.77448857. Complainants incorporate herein by reference all case law cited in support of the Refusal to Register Respondent’s proposed mark. see also Kiki Undies Corp. v. Promenade Hosier Mills, Inc. 411 F.2d 1097, 1100-01 (2d Cir. 1969) (continued use of mark after receipt of USPTO Office Action finding likelihood of confusion is tantamount to conclusive bad faith use.) Respondent did not contest the USPTO Office Action by the required response date, and the USPTO entered an abandonment date of February 6, 2009 for Respondent’s application for the mark.
Notwithstanding Respondent’s actual knowledge of Complainants’ superior rights in the NestEgg marks and likelihood of confusion with Respondent’s use of the NestEgg Advisors name, Respondent continued to use the mark and Domain Name. Respondent’s usage of this Domain Name and mark is undeniably knowing, deliberate, bad faith usage of Complainants’ marks in the same International Class, in violation, without limitation, of UDRP Policy, the Trademark Act, and cybersquatting laws at U.S.C. 15 § 1125(d).
In accordance with its rigorous practice in defense of
its NestEgg marks, first Complainant served a cease-and-desist letter on Respondent
on December 15, 2009. In its reply,
Respondent failed to disclose its awareness of the existence and registration
of Complainants’ marks and refused to discontinue its usage of the Domain Name
and marks. Complainants anticipate that
Respondent will asset that the NestEgg mark is weak, and, in support of this
position, allege that third parties are using the NestEgg mark for other
financial services. Such assertions are
contrary to fact. As demonstrated above,
Complainants’ marks are extremely strong given their two decades of continued
use and many millions of dollars of sales and exposure of their marks. Furthermore, Complainant A has sent its
standard notice and demand to desist to third parties using the NestEgg mark,
including third parties previously cited by Respondent to Complainants. Those third parties have already ceased their
infringement or are in process of changing the infringing names and marks.
With knowledge of Complainants’ ownership of all “LIVE” USPTO registrations of NestEgg marks in IC 36 for closely related services and the USPTO decision on those specific marks, Respondent has (1) registered, trafficked in, and used as a domain name, in web advertising and elsewhere, a valuable trademark already decidedly distinctive at the time of Respondent’s registration of that Domain Name, in flagrant violation of the UDRP Policy, and applicable federal and state law; (2) refused to withdraw its usage upon awareness of Complainants’ rights.
Respondent’s unlawful use of the Domain Name and trade name is entirely for commercial gain and for the purpose of attracting unwary customers. It rests on Complainants’ sound and reputable financial organizations, thereby diluting the value of Complainants’ marks. Respondent is in business as a solo financial advisor. The likelihood is high that interested consumers would confuse the Domain Name and the trade name use of Respondent on the website associated with the Domain Name, through direct entry of the Domain Name or location of the site associated with the Domain Name through internet search engines. Continued confusion will unfortunately occur so long as Respondent continues to use the confusingly similar domain name and trade name in offering similar-sounding financial services.
B. Respondent
Respondent received a Written Notice of Complaint and Commencement of Administrative Proceeding on July 8, 2010. The Notification stated that Complainant had submitted a Complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999 (“UDRP” or “Policy”), and the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), effective March 1, 2010, and the National Arbitration Forum (“Forum”) Supplemental Rules (“Supp. Rules”), effective March 1, 2010.
Complainants, who are an investment company and corporation, seek to take away a domain name used by a small proprietor to run his legitimate business. Complainants hope to circumvent the significant difficulties and expenses of a trademark infringement lawsuit against Respondent with respect to its use of “NestEgg Advisors, Inc.” as a trade name and domain name by launching this substantially lower-cost UDRP proceeding. In doing so, Complainants mistake the Policy for a process to adjudicate trademark infringement claims under United States federal law, citing case after case interpreting federal law but not one case interpreting the Policy. See Tea Party Patriots Inc. v. Ulti-Media LLC, FA 1305291 (UDRP not designed to resolve trademark disputes); Enhance Mortgage Corporation and Templeton Mortgage Corp. v. Joseph Hayes, FA 1287900 (legal arguments under state and federal law disregarded, because proceeding is governed by UDRP). Aside from this failure to apply proper caselaw under the Policy, Complainants have similarly failed to present evidence sufficient to sustain a claim under the Policy, for Complainants cannot escape their fatal decision in selecting a trademark that is inherently weak and therefore entitled to a limited scope of protection. Moreover, Respondent registered and used the <nesteggadvisors.net> domain name (the “Domain Name”) before it had any knowledge of Complainants or their business, thereby quashing any attempt by Complainants to show that Respondent lacks any legitimate rights or interests in the Domain Name or registered or used it in bad faith. As such, it is impossible for Complainants to establish the three elements necessary to prevail in a UDRP proceeding. Accordingly, the Panel should deny Complainants’ request for transfer of the Domain Name.
Pursuant to Paragraph 4(a) of the Policy, Complainants must prove each of the following elements in order to prevail in this proceeding: (1) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (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. As is more fully set forth below, Complainants cannot establish all of those elements.
Complainants cannot demonstrate that Respondent lacks
legitimate rights or interests in the Domain Name. Respondent has done business under the trade
name “NestEgg Advisors, Inc.” since November 2006. Based on
Given the foregoing, it is impossible for Complainants to satisfy Paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy states that any of the following circumstances, if found by the Panel, shall demonstrate Respondent’s rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii): (1) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (2) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights in the name. Each of the foregoing is true with respect to Respondent.
Respondent did not become aware of Complainants’ business or their asserted rights in the NESTEGG marks until December 15, 2009, when Complainants first sent Respondent a cease and desist letter. Nevertheless, Complainants argue that Respondent had at least constructive, if not actual, notice of their asserted trademark rights on August 5, 2008. Complainants base that claim on the Office Action that the United States Patent and Trademark Office (USPTO) issued to Respondent on that date concerning its application to register NESTEGG ADVISORS, noting that the Office Action cited some of Complainants’ registrations as possible obstacles to registration. Even if the Panel were to assume that Respondent did have actual notice of Complainants’ asserted trademark rights as of August 5, 2008, it would still remain true that, before any notice to Respondent of this dispute, Respondent used or made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. As stated above, Respondent registered the Domain Name on July 28, 2005 and launched the website for its business under the Domain Name on December 2006 – all well before the earliest date on which Complainants assert that Respondent became aware of their trademark rights, and well before Respondents became aware of any dispute between the parties. Moreover, since it began using the “NestEgg Advisors, Inc.” trade name in November 2006, Respondent has been commonly known by the Domain Name. These facts show that Respondent has legitimate rights or interests in the Domain Name pursuant to Paragraph 4(c) of the Policy. See CRS Technology Corp. v. CondeNet, Inc., FA 93547 (transfer denied where respondent made use of <concierge.com> in connection with travel services after trademark availability search conducted by respondent disclosed existence of complainant’s trademark registration for CONCIERGE but before respondent received cease and desist letter from complainant).
Given that Respondent has legitimate rights or interests in the Domain Name, it follows that Respondent has not registered or used the Domain Name in bad faith, and the Panel’s consideration of this element is unnecessary. See MBO Partners, Inc. v. MyBizHomepage, Inc., FA 1319466 (“Once the determination is made that Respondent has rights to or legitimate interests in the disputed domain name <mybizhomepage.com>, the issue of bad faith is moot and need not be addressed by the Panel.”); Lockheed Martin Corp. v. Skunkworx Custom Cycle, WIPO D2004-0824 (“In light of the Panel’s finding that the Respondent has rights and legitimate interests in the disputed domain name, all issues of bad faith use and registration under paragraph 4(a)(iii) of the Policy are now moot.”); Vanguard Group Inc. v. Investors Fast Track, FA 863257; Leap Real Estate Systems, LLC. v. BytePlay Limited, WIPO Case No. D2009-1290. Nevertheless, Respondent asserts that it did not register or use the Domain Name in bad faith.
Respondent did not register the Domain Name primarily for the purpose of selling it to Complainants or one of their competitors. Respondent has not engaged in a pattern of registering Complainants’ or any other party’s trademarks as domain names in order to prevent such parties from reflecting their marks in corresponding domain names. Respondent has not registered the Domain Name primarily for the purpose of disrupting the business of Complainants, who, in any event, are not competitors of Respondent; Complainants offer mutual fund investment services to institutions, intermediaries and others whereas Respondent offers financial planning, estate planning and related services to individual consumers located in the geographic area of Long Island, New York. Respondent did not register the Domain Name to free ride on the goodwill associated with Complainants’ marks. In short, Respondent has not engaged in any of the examples of bad faith set forth in Paragraph 4(b) of the Policy.
As discussed above, Respondent was not aware of Complainants’ trademark rights before it registered and began using the Domain Name in connection with its bona fide offering of goods and services. But even if Respondent had registered and began use of the Domain Name with knowledge of Complainants’ trademarks, the fact remains that Complainants’ marks are inherently weak and any distinctive quality they may have is highly diluted by the existence of innumerable third-party uses of “nest egg” as a designation in connection with financial goods or services. Moreover, there are several third-party registrations in the United States Patent and Trademark Office for marks that contain the term “nest egg” and cover financial goods or services:
BUILD AND PROTECT YOUR NEST EGG, Reg. No. 3349931
SECURE NEST EGG, Reg. No. 3230957
NEST EGG NEWS, Reg. No. 2653937
THE NEST EGG FUND, Reg. No. 2527264
There are also several third-party registrations and uses of domain names that incorporate “nest egg” in connection with websites for financial goods or services, including, but not limited to, the following:
|
<nesteggfinancialplanners.com> <nesteggbuilders.com> <nesteggfinancial.com> <nestegginvestor.com> <nestegg-solutions.com> |
<nestegggameplan.com> <nestegginfo.com> <nesteggsoftware.com> <nestegginvesting.com> |
The abundance of such third-party uses and registrations no doubt results from the generic quality of “nest egg” as used in connection with financial goods and services, and they demonstrate that Complainants hold no monopoly on the use of “nest egg” as a part of a service mark or trade name for financial goods and services. The term in everyday use refers to money set aside for a future purpose, such as retirement. See definitions at http://dictionary.reference.com/browse/nest+egg. Respondent chose its trade name, “NestEgg Advisors, Inc.,” and the Domain Name to refer to that basic dictionary definition of the term “nest egg,” not to exploit any likelihood of confusion with Complainants’ marks. By choosing an inherently weak mark, the dominant element of which is a generic term, Complainants must accept the right of others to make legitimate use of the term in its generic sense. See Lockheed Martin Corporation v. The Skunkworx Custom Cycle, WIPO Case No. D2004-0824 (warning complainant of coming dangerously close to engaging in reverse domain name hijacking and denying transfer because “merely owning a trademark, whether registered or not, does not suffice, in and of itself, as a vehicle to halt all unauthorized third-party inclusion of that mark within a domain name”); CRS Technology Corp. v. CondeNet, Inc., FA 93547 (denying transfer because the “term ‘concierge’ is inherently weak due to its widespread descriptive use, and therefore is entitled only to a narrow ambit of protection”); PwC Business Trust v. Ultimate Search, WIPO Case No: D2002-0087 (finding multiple third-party uses of the acronym “pwc” and that “[t]his inherent lack of distinctiveness is what undermines the Complainant’s attempts to have the Panel regard mere registration of PWC.com by the Respondent as self evident bad faith.”); MBO Partners, Inc. v. MyBizHomepage, Inc., FA 1319466; The Vanguard Group Inc. v. Investors FastTrack, FA 863257. Therefore, Respondent has not registered or used the Domain Name in bad faith.
The Domain Name is not identical or confusingly similar to any of Complainants’ trademarks. Complainants own no trademark registration for NESTEGG ADVISORS, and all of their trademark registrations consist of composite marks featuring the combination of multiple words and/or a design. None of the registrations contain the term “nest egg” by itself, nor do any of them contain the term “advisors.” As such, the Domain Name is not identical to any of Complainants’ trademarks.
Furthermore, the Domain Name is not confusingly similar to Complainants’ trademarks. The parties have used their respective marks in the marketplace for nearly four years, yet there has been no evidence whatsoever of any actual confusion. Such an extensive period of time of concurrent use without actual confusion confirms that no confusing similarity exists.
As discussed above, Complainants’ marks are inherently weak and highly diluted by countless third-party uses of and registrations for marks that incorporate “nest egg.” Where numerous similar marks coexist, the scope of protection to which each mark is entitled should be narrowly construed. See The Knot, Inc. v. Julia Bitton, The Nest, WIPO Case No. D2006-0377 (complainant’s right to exclude others is considerably limited in scope where its mark is descriptive of the goods and services it offers). Given that the only component of the Domain Name that bears any identity or similarity to Complainants’ trademark is the generic term “nest egg,” the Domain Name is not confusingly similar to any of Complainants’ trademarks.
C. Additional Submissions
Complainants submitted the following additional information:
a.) This Submission
Confirms that Respondent’s Domain Name Is Confusingly Similar to Complainants’ Family of
Valuable and Famous Service Marks; Respondent’s
Contentions to the Contrary Lack Credibility.
The single source of inescapable confusion in this proceeding is Respondent’s usage of the non-generic part of Complainants’ distinctive, suggestive mark, “NestEgg,” in Respondent’s domain name and, as later adopted, in its unregistered trade name for financial services and investments offered on its web site accessed through that domain name. Thus, NestEgg is a source of web inquiries and financial gain for Respondent from the use of Complainants’ strong family of marks. The Response nevertheless purports to deem the mark weak because of a relatively small group of distinguishable descriptive Nest Egg uses.
The distinctive, suggestive feature of the mark at issue, however, is its combination of two words into one name, a combination that Complainants designed and that no lexicographer has included in a dictionary in that form. Respondent disregards this difference not only in the reference to a dictionary entry for “nest egg,” but also in four USPTO registrations in the two separated words and for uses that do not challenge Complainants’ rights. The marks BUILD AND PROTECT YOUR NEST EGG and SECURE NEST EGG are clearly not in the form of the domain name/mark at issue. NEST EGG NEWS is a Class 016 registration for children’s newsletters. The fourth mark cited, THE NEST EGG FUND is incontestable. Significantly, its owner is John Hancock Advisers, LLC, with whom Complainants[1] have long had a concurrent use agreement, and expressly distinguishing between the usages of “NestEgg” and “Nest Egg” forms to avoid confusion.
Complainants are familiar with Respondent’s examples of domain name usage by others. Complainants must and do serve cease-and-desist letters and defend their marks, as circumstances require, to maintain their value and strength. Users of several competing marks have withdrawn their usage within the past year. In certain instances, Complainants seek remedies appropriate to the perceived harm. Nest Egg Financial Planners has to date evaded Complainant A’s cease-and-desist letters by frequent changes of office address. Some unwitting infringers welcome the incentive to introduce a replacement name to the public and the consequent publicity enabled with funds saved by avoiding legal contest. Some such infringers respect Complainants’ rights as prior owners, express regret for inadvertent infringement, and make the necessary changes in good faith as promptly as possible.
Tellingly, Respondent provides no evidence of having made a bona fide mark search before adopting the domain name or the service mark for its business. Failure to conduct a proper trademark search is “willful blindness to the existence of the rights of others.” Compact Disc World v. Artistic, Inc., FA0097855 (Nat. Arb. Forum Aug. 15, 2001).
The Response states that “Complainants are not competitors of Respondent” and that “Complainants offer mutual fund investment services to institutions, intermediaries and others whereas Respondent offers financial planning, estate planning and related services to individual consumers.” But at the bottom of its initial “NestEgg” web page, Respondent announces investment offers:
“Securities offered through American Portfolios Financial Services, Inc.”
This exhibit, from which the NestEgg heading appears to have been removed, also counsels in a “Note” in small print that “Email should not be used to enter trades.”
Respondent’s
webpage belies its claim that its business is not competitive with
Complainants’. Contrary to Respondent’s
assertion, both Complainants use business names (American Independence
Financial Services and Intrust Bank) that make clear, as their Complaint
states, they render broad financial planning services. Similarly, most of first Complainant’s Nest
Egg marks includes “services” as uses of the
mark. The parties to this dispute are
all engaged in financial advisory services and investment offerings under the
distinctive NestEgg mark. Second
Complainant specifically provides investment education and counsel under its
NestEgg U and NestEgg Consulting marks.
Through the use of the internet, the parties’ market is far beyond the
location of any office. Respondent’s
location on
Complainants’
marks have been widely used in commerce since 1999 and have acquired secondary
meaning. Their investment services have
resulted not only in their solid growth (see
Certifications attached to Complaint), but in the concept of the name to
suggest their services. A “nestegg”
conceptualizes and suggests an investment.
Complainants’ services and offerings under the distinctive NestEgg marks
through the years and the expenditure of substantial sums have strengthened
their association with dependable performance and integrity. See
Regional Hospitality WorldWide, Inc. v. Regent Plaza Hotel, FA0097262 (Nat.
Arb. Forum June 25, 2001). (Complainant
invested substantial sums in developing and marketing, and developed
substantial good will and customer loyalty).
Adding further to the strength of Complainants’ marks, on July 24, 2010, the Wall Street Journal published ratings by prominent investment research firm, Morningstar, of the six leading “target date” funds. These funds are designed for investors who hope to retire by a certain target date. The article featured six such funds that outperformed a peer index for the past three years. Complainants’ “NestEgg series” of funds ranked fourth behind Wells Fargo’s Dow Jones series, American Century’s Livestrong series, and Vanguard’s Retirement series, equaled MFS Livetime series, and outranked J.P. Morgan’s Smart Retirement series.
This recognition is both testimony to, and extension of, the consistently growing fame of Complainants’ NestEgg marks since their first use in commerce in 1990. The appearance of the NestEgg series in the Wall Street Journal article emphasizes the extreme danger that potential investors may confront. Searching the Internet for the distinctive and famous “NestEgg” mark to access the NestEgg funds series and obtain related advisory services, they may well be misled by Respondent’s confusingly similar domain name, website mark and design, into fund transactions and advice on the assumption that there is a responsible relationship, which does not exist, between Complainants and Respondent.
Respondent’s “Web Page” Exhibit is further misleading in the absence of the mark that appears at the top on the screen at that site just seconds after it is accessed at www/nesteggadvisors.net. A photograph of the top three-fourths of the initial web page screen on July 30, 2010 shows the “NestEgg” mark prominently heading the page. This screen contains the mark in the identical script type set-up as in first Complainant’s design mark, “NestEgg Funds Life Simplified” on its USPTO Registration Record.
b.) The Response and This Additional Submission Confirm That Respondent Has No Legitimate Interest in the Domain Name or Service Mark.
Respondent
was never authorized to use the NestEgg mark.
The mark is identical to Complainants’ registered service marks in image
and formation, usage, purposes and market.
Even if Respondent offers investment funds and advisory services through
a third party, it can and surely does make financial gain by redirecting
inquiries about NestEgg funds to American Portfolio Financial Services, Inc., a
name not too different from that of first Complainant, American Independence
Financial Services, Inc. Respondent also
offers financial advice through American Portfolio Advisors, Inc. See
www.nesteggadvisors.net at 1-2 (bottom of pages).[2]
For the NestEgg family of marks in use since 1999, Complainants filed and obtained USPTO servicemarks for those marks beginning on August 12, 2002. These marks included both the joined words and the nest and egg design for NestEgg Funds LIFE SIMPLIFIED, registered on July 12, 2005. It should be noted that Respondent registered the domain name on July 28, 2005. Sixteen months later, in December 2006, Respondent adopted the same joined words, NestEgg, the identical lettering style, and a rotated nest and egg design. This seems hardly coincidental, since no other NestEgg mark of Complainants has this exact form and Respondent claims no use of the mark until long after 1999, the year when Complainants’ marks were first in recorded use.
Respondent has refused to cease the use of the NestEgg mark as a domain name and as an unregistered service mark. Complainants have therefore invoked the UDRP proceeding as the efficient process established for the express purpose of determining the respective rights in disputes between domain name and trademark owners in the shortest time. This process is not in lieu of a trademark infringement suit. It is the shortest route to cut off the current harm where likelihood of confusion prejudicially exists.
Respondent has objected to Complainants’ citation of federal cases (two in number) on likelihood of confusion. Rule 15A of the Rules for Uniform Domain Name Dispute Resolution Policy instructs the Panel “to decide a complaint on the basis of statements and documents submitted in accordance with the Policy, the rules and any rules and principles of law that it deems applicable.” Surely, federal and state trademark law is deemed applicable. Since trademark law offers Respondent no support, it cites only NAF and WIPO decisions, but its citations are inapposite. In the following decisions as cited by Respondent, the businesses, products, services, and/or markets of the opposing parties were found to differ: CRS Technology Corp. v. CondeNet, Inc., FA 0093547; MBO Partners, Inc. v. MyBizHomepage, Inc., FA 1319466; Lockheed Martin Corp. v Skunkworx Custom Cycle, WIPO D20003-0824; Vanguard Group Inc. v. Investors Fast Track, FA 0863257; Leap Real Estate Systems, LLC v. BytePlay Limited, WIPO D2009-1290 (also here, the Respondent’s search engine use was not for commercial gain.) In Tea Party Patriots Inc. v. Ulti-Media LLC, FA 1305291, Complainant’s first use was only two months prior to Respondent’s registration. In Enhance Mortgage and Templeton Mortgage Corp. v. Joseph Hayes, FA 1287900, there was no trademark registration and no evidence of that Complainant’s rights.
In the same industry and market as Complainants, Respondent knew or should have known of Complainants’ registered marks and could have ascertained the status of such marks, but failed to do so. Respondent, with no predating rights, had either actual and/or constructive knowledge of Complainants’ developed goodwill and customer loyalty.
Use of a protected name that constitutes clear trademark infringement does not result in any rights or legitimate business interest in the domain name. Legal rights and interests cannot accrue to Respondent by way of trademark infringement. Harcourt Inc. v. R &D Glassblowing, FA0095010 (NAF July 13, 2000); American Online, Inc. v Xianfeng Fu, D2000-1374 (WIPO Dec. 12, 2000) (apparent disregard); see also Underground Service, Inc. v. CSS Group, LLC, FA0968403 (Nat. Arb. Forum Apr. 27 200l) (“apparent failure to conduct a trademark search to discover Complainant owned a federal registration … in association with services highly related to Respondents”). As for Respondent’s production of the results of a current web search of the mark, these printouts do not illustrate the use of the mark at the time Respondent registered the domain name or activated a website using Complainants’ mark. Putative infringements by others on Complainants’ protected marks do not serve as a valid defense to Respondent’s acts nor do they affect Respondent’s rights in this matter in any way.
c.) The
Response and This Additional Submission Confirm that Respondent Has Registered and Continues Using the Domain
Name in Bad Faith.
It is highly unlikely that Respondent, who operates in
the same financial area, has an office in
After registering the NestEgg domain name, Respondent waited sixteen months to use the name. See Treeforms, Inc. v. Cayne Indus. Sales Corp. (FA0095856 Dec. 18, 2000) at 8C (Registration and Use in Bad Faith: “Given the Respondent’s inactivity toward the contested domain name for a 15-month period and its total lack, … of undertaking any demonstrable preparations during that time to utilize the name in an operational web site, the Panel believes that the Respondent registered the contested domain name in bad faith….”) Then, without a search, Respondent adopted the domain name (minus .net) as a service mark in which it had acquired no prior rights. That usage is a bad faith infringement for failure to make a bona fide search for its availability. It is also bad faith infringement for failure to cease its usage after the USPTO denial of Respondent’s application for a service mark for likelihood of confusion, issued with a full list of Complainants’ live marks. Respondent failed to heed Complainants’ cease-and-desist letters with the necessary information to verify Complainants’ senior rights.
Respondent had constructive, if not actual, knowledge of Complainants’ marks at the time of its registration of the domain name, and certainly actual knowledge after its adoption of NestEgg as a service mark on its website. Respondent had the obligation to perform a diligent search to determine whether the name might infringe on another’s intellectual property. See Digi Int’l v. DDI Sys.,, FA0124506 (Nat. Arb. Forum Oct. 24, 2002).
As in Compact Disc World v. Artistic Visions, Inc., FA0097855 (Nat. Arb.
Forum, Aug. 1, 2001), through the domain name and the infringing web site mark,
“Respondent attempted to attract, for commercial gain, Internet users to
Respondent’s web site …, by creating confusion with Complainant’s mark as to
the source, sponsorship, affiliation, or endorsement of Respondent’s web site
or service or investment offerings.”
Respondent’s initial selection and continued use of the
NestEgg mark after a USPTO finding of likelihood of confusion is conclusively
bad faith use of the domain name to attract to its web site for advisory
services and investment offers, that is, for its commercial gain, unwary consumers
that may be, or may already have been, mistaken for Complainants’ services or
offerings. Complainants, as the far
senior and registered users, have the obligation to prevent the likelihood of
confusion and possible injurious loss to the public. As they have served several cease-and-desist
letters upon Respondent, they have pursued and are pursuing a similar course to
defend the mark from infringement as it arises.
In most instances, its efforts are successful, since the goal of sound
professional investors is to build a unique name with a dedicated reputation
and following.
It is also to be questioned why Respondent chose to adopt a domain name it purports to deem “inherently weak.” Response at 1.[3] Yet Respondent filed a USPTO servicemark application in 2008 with a claimed first usage of November 2, 2006. Respondent did not use the mark in commerce for sixteen months thereafter, according to that application. Furthermore, Respondent chose to submit that application in a form it deems weak for USPTO registration, through counsel, on April 1, 2008. It is unusual for counsel to submit an application for a mark without conducting a search for confusingly similar marks. In 2008 such a search would have revealed the family of Complainants’ marks, as later supplied by the USPTO examiner in denying Respondent’s application as confusingly similar.
Respondent further submitted:
Pursuant to Paragraph 7(c) of the Supplemental Rules, Respondent files this Additional Submission in response to Complainants’ Additional Submission filed on August 4, 2010. As a preliminary matter, Respondent submits that Complainants’ Additional Submission was not timely filed in accordance with Paragraph 7(a) of the Supplemental Rules, which requires the filing of such additional submission “within five (5) Calendar Days after the date the Response was received by the Forum …” The Forum received the Response on July 28, 2010, making Complainants’ Additional Submission due August 2, 2010. However, the Forum did not receive Complainants’ Additional Submission until August 4, 2010, and Complainant offered no explanation for the late filing. Respondent requested that the Forum strike Complainants’ Additional Submission or, in the alternative, give Respondent the same benefit of extra time taken by Complainants, but the Forum deferred issues concerning Complainants’ late submission to the Panel and compelled Respondent to file this additional submission in less time than that taken by Complainants. As such, Respondent requests that the Panel strike Complainants’ Additional Submission so that they are not permitted to benefit from their dilatory tactics. See Commonwealth Communications Group, Inc. v. David Lahoti dba eSecure, FA 100124 (“Because Complainant failed to provide any justification for its untimely submission, the Panel agrees that the submission should be disregarded.”)
Even if the Panel were to consider Complainants’ Additional Submission, the Panel should give it little or no weight. Complainants rehash the failed arguments stated in their Complaint and fail again to grasp the difference between a federal trademark infringement lawsuit and the limited scope of a UDRP proceeding. They misapply UDRP precedents and offer nothing more than speculation while ignoring the following facts: (1) Respondent was not aware of Complainants or their purported trademark rights prior to its registration of the Domain Name and use of it in connection with a legitimate business; (2) Complainants’ inherently weak and highly diluted mark is entitled to little protection; and (3) the foregoing facts preclude the possibility of bad faith registration or use of the Domain Name by Respondent and a finding that the Domain Name is identical or confusingly similar to Complainants’ mark. Therefore, Complainants cannot prove the three elements necessary to prevail under the UDRP.
Respondent began conducting a legitimate business under
the “NestEgg Advisors, Inc.” trade name in November 2006, over three years
before Respondent became aware of the dispute that is the subject of this
proceeding. See American
Installation Company, Inc. d/b/a NationLink Wireless v. Missouri-Wide Cellular,
FA 583008 (respondent had legitimate rights or interests in
<nationlinkwireless.com> domain name, notwithstanding complainant’s
federal registrations for NATIONLINK, because respondent conducted business
under “NationLink Wireless” trade name).
Complainants do not dispute this, arguing instead that Respondent has
forfeited its legitimate rights or interests through its acts of
infringement. Complainants cite a number
of cases to support that claim, but none of them are on point.
In this proceeding, Complainants do not own a distinctive, let alone famous, mark, and the marks registered by Complainants are not identical to the Domain Name. Respondent registered <nesteggadvisors.net> as its Domain Name, not, for example, <nesteggfundslifesimplified.com>, <nesteggcapitalpreservationfund.com> or <nesteggfund2010.com>. Complainants, in short, claim to own a monopoly on the term “nest egg” for goods and services in the financial industry, such that no other provider of financial goods or services could legitimately use it as a dominant feature in its domain name. But the UDRP simply does not support Complainants’ excessively expansive view. See, e.g., State Fair of Texas v BigTex Sports, FA 95851 (“Its argument essentially is that, because the Complainant has registered ‘Big Tex’ as a mark, nobody can use it in any circumstance, and, therefore, the Respondent could not possibly have a legitimate interest in any name containing the words ‘Big Tex’. But I am not persuaded that the law is as simple as that.”) In any event, a UDRP proceeding is not the right forum to adjudicate which party has superior rights to a mark. See American Installation Company, Inc. d/b/a NationLink Wireless v. Missouri-Wide Cellular, FA 583008 (“The evidence is not sufficient to determine who has the better rights to the nationlink mark. This will require a full evidentiary hearing (including taking testimony and cross-examination) and is not suited to the summary proceedings used in the UDRP.”) Neither UDRP precedent nor the facts support the conclusion that Respondent lacks legitimate rights or interests in the Domain Name.
Even if Complainants could demonstrate that Respondent lacks legitimate rights or interests in the Domain Name, Complainants would still be unable to prevail in this proceeding because they cannot demonstrate that Respondent has registered or used the domain name in bad faith. In seeking to prove this element, Complainants’ Additional Submission introduces a different standard of knowledge from that required by Paragraph 4(a)(iii) of the UDRP, arguing that Respondent knew or should have known of Complainants’ mark before registering the Domain Name and that Respondent acted in bad faith by failing to conduct a trademark search before registering the Domain Name. Prior panels and the April 30, 1999 Final Report of the WIPO Internet Domain Name Process (the “WIPO Report”) make clear that a domain name registrant has no duty to conduct a trademark search before registering a domain name. See FormLinc Information d/b/a GroupLink v. Credit Suisse Group, FA 96750 (“Although Respondent acknowledges it was unaware of Complainant’s trademark at the time it registered its domain name, it could easily have learned of the trademark and thereby have avoided this dispute. Nevertheless, CSG’s failure to verify the existence of Complainant’s trademark is not, alone, evidence of bad faith.”); Alberto-Culver Co. v. Pritpal Singh Channa, WIPO Case No. D2002-0757 (“I reject the idea that some sort of ‘constructive notice’ is generated upon a trademark registration, and that this is sufficient to establish bad faith. To accept this idea is to accept that a trademark registration—without anything further—is enough to establish bad faith under the Policy. This is a ludicrous suggestion, and runs contrary to the clear intention of paragraph 4.a.(iii) which was intended to protect the interests of domain name holders who registered without bad faith.”); State Fair of Texas v BigTex Sports, FA 95851 (declining to hold that respondent’s failure to conduct trademark search constitutes bad faith); see also WIPO Report at Paras. 103-105 (performance of trademark search not prerequisite for domain name registration).
Relying on Treeforms, Inc. v. Cayne Industrial Sales, Corp., FA 95856, Complainants then assert that Respondent’s delay in launching a website under the Domain Name after registration suggests that Respondent registered the Domain Name in bad faith. But Treeforms is wholly distinguishable from the facts here. The respondent in Treeforms registered the domain name and held on to it for over 15 months without using it or making demonstrable preparations to use it for a legitimate purpose. In fact, the respondent still did not have a functioning website at that domain name when the complainant initiated the UDRP proceeding. Worse yet, the respondent attempted to sell the domain name to the complainant. Here, Respondent launched a website under the Domain Name in December 2006 – several years before learning about Complainants, has used it ever since in connection with its legitimate business, and has not offered to sell the Domain Name to Complainants.
Lacking support in UDRP precedent, Complainants turn next to delusional theories concerning the intent of Respondent to knock off their weak and diluted mark, latching on belatedly to a perceived similarity between the graphical representation of Respondent’s trade name on its website and Complainants’ Registration No. 2,965,514 in the United States Patent and Trademark Office for NESTEGG FUNDS LIFE SIMPLIFIED & Design. It seems Complainants reach that conclusion based in large part on the similarity of the fonts. But that fact is entirely unremarkable, given that the graphical representation of Respondent’s trade name is depicted in a Lucida font – one of the most popular fonts available.
Complainants attempt to rehabilitate the inherent weakness of their mark as shown by the many third-party uses and registrations for marks and domain names that feature “nest egg” by asserting that they will mount enforcement efforts against those parties as well, just as they allegedly have against others. They allege that numerous third parties have relented in their use of “nest egg” after being confronted by Complainants. That may be evidence of Complainants’ successful efforts at bullying others into submission with a superior war chest, but it is not evidence of Complainants’ superior rights.
With regard to John Hancock’s Registration No. 2,527,264 for THE NEST EGG FUND in the United States Patent and Trademark Office, Complainants advise that the three parties have executed a coexistence agreement concerning their various “nest egg” marks.[4] In doing so, Complainants appear to miss the very essence of a coexistence agreement, which is an acknowledgement amongst the parties that no likelihood of confusion exists. If THE NEST EGG FUND for mutual fund investment services can peacefully coexist with Complainants’ NESTEGG mark for identical services, then Respondents’ <nesteggadvisors.net> Domain Name for financial advisory services can peacefully coexist with Complainants’ mark as well.
With regard to other third-party uses and registrations disclosed in the Response, Complainants argue that what distinguishes their mark from those of others is their elimination of the space between “nest” and “egg.” Respondent submits that the mere elimination of a space is not novel, nor does it render an otherwise generic term distinctive. Furthermore, it would be impossible for Respondent or anyone else to use a space in a domain name. In any event, many of the third-party uses disclosed in the Response feature “nestegg” (i.e., “nest” and “egg” combined as a compound word), including: NESTEGG BUILDERS, NESTEGG FINANCIAL, NESTEGG INVESTING and NESTEGG SOLUTIONS. Given the inherent weakness and diluted nature of Complainants’ mark, it cannot be concluded that Respondent exhibited bad faith in its registration and use of the <nesteggadvisors.net> Domain Name.
Because Complainants’ mark is not distinctive and is in fact highly diluted, it is entitled to a very limited scope of protection. As stated earlier, this is not a case in which Respondent has registered domain names that are identical to Complainants’ registered marks, such as <nesteggfundslifesimplified.com>, <nesteggcapitalpreservationfund.com> or <nesteggfund2010.com>. Instead, Respondent has registered a Domain Name comprising the generic terms “nest egg” and “advisors” in a good-faith effort to communicate to the public that its website provides information related to its business of providing advice on saving for retirement. Accordingly, the Domain Name is not identical or confusingly similar to Complainants’ mark. See, e.g., American Airlines, Inc. v. MegaWeb.com Inc., FA 305263 (<americanairways.com> found not identical or confusingly similar to complainant’s famous AMERICAN AIRLINES mark).
FINDINGS
Complainants have failed to satisfy their
burden of proof on all three required elements for UDRP proceedings.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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.
The disputed domain name
is not identical to Complainant’s mark.
Complainant does not own a mark for “NestEgg Advisors” and all of
Complainant’s marks consist of composite marks featuring a combination of words
and/or designs. Further, none of
Complainant’s registered marks contain the term “NestEgg” alone and none of the
marks contain the term “advisors.” This
Panel finds Respondent’s disputed domain name is not confusingly similar to
Complainant’s mark under Policy ¶4(a)(i). See Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (“[I]n
light of the common use of the words ‘nations’ and ‘banking,’ this Panel fails to see how there
is a likelihood of confusion between NATIONSBANK and <nationsbanking.com>.”);
see also FloridaFirst Bank v. Carlson, FA
143677 (Nat. Arb. Forum Apr. 10, 2003) (“Complainant has failed to establish
that the words ‘FloridaFirst,’ apart from the registered service mark as a
whole, ha[d] acquired a secondary meaning such that the relevant public
exclusively associates the words with Complainant as a source of services”).
The Panel finds Policy ¶4(a)(i) has not been satisfied.
Complainant has established a prima facie case in support of its
arguments Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See Terminal Supply, Inc. v.
HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006)
(holding that the complainant did not satisfactorily meet its burden and as a
result found that the respondent had rights and legitimate interests in the
domain name under UDRP ¶4(a)(ii)); see
also Workshop Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
Respondent has done business under the “NestEgg Advisors,
Inc.” name since November 2006.
Respondent provides financial planning, estate planning and related
services to individual consumers located in the Long Island,
Respondent has been conducting its financial services business under the NestEgg Advisors, Inc. name since 2006. Respondent registered the disputed domain name on July 28, 2005 and launched its website in December 2006. Respondent did not know of Complainant’s mark or rights in that mark until it received Complainant's cease and desist letter on December 15, 2009. This Panel finds Respondent is making a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) through its business offerings that have been available to the public since 2006. See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶4(a)(ii) has not been satisfied.
Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
This Panel finds Respondent did not use the disputed domain
name in bad faith pursuant to Policy ¶4(a)(iii) in
part because it had rights under Policy ¶4(a)(ii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding
that the issue of bad faith registration and use was moot once the panel found
the respondent had rights or legitimate interests in the disputed domain name);
see also Vanguard Group Inc. v. Investors Fast Track, FA 863257
(Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate
interests in the disputed domain name, his registration is not in bad faith.”).
Respondent did not register or use the <nesteggadvisors.net> domain name in bad faith because
Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute
bad faith registration and use pursuant to Policy ¶4(a)(iii). See Societe des Produits Nestle S.A. v.
Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that
where the respondent has not attempted to sell the domain name for profit, has
not engaged in a pattern of conduct depriving others of the ability to obtain
domain names corresponding to their trademarks, is not a competitor of the
complainant seeking to disrupt the complainant's business, and is not using the
domain name to divert Internet users for commercial gain, lack of bona fide
use on its own is insufficient to establish bad faith); see also Starwood
Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat.
Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that
respondent registered and used the disputed domain name in bad faith because
mere assertions of bad faith are insufficient for a complainant to establish
UDRP ¶4(a)(iii)).
Respondent did not register the <nesteggadvisors.net> domain name to disrupt the business of
Complainant. Furthermore, the registered
marks are not confusingly similar to the disputed domain name. Respondent is not a competitor of Complainant
because Complainant offers mutual fund investment services to institutions,
intermediaries and others while Respondent offers financial planning, estate
planning and related services to individual consumers in the geographic area of
Respondent is using the disputed domain name for a legitimate business purpose and did not mean or try to cause confusion with Complainant’s marks. The Panel finds Respondent did not register the domain name in bad faith under Policy ¶4(b)(iv) where it has been making a legitimate use of the domain name since 2006. See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).
The Panel finds Policy ¶4(a)(iii) has not been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Dated: September 2, 2010
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[1] Complainant A executed this Agreement under its former name, Arrivato Advisors, LLC.
[2] It is conceivable that at least part of Respondent’s business is as a conduit of NestEgg inquiries intended for Complainants over to Respondent-related providers.
[3] In scrupulous adherence to Evidence Rule 408, Complainants have not produced a letter from Respondent which only purports to be in settlement, but may shed light on the reason for this choice. Complainants determined not to raise the claim in filing this proceeding, but will make the letter available to the Panel for consideration on this issue at Panel’s request.
[4] Complainants are also parties to a coexistence agreement between themselves concerning their registration and use of their NESTEGG marks. See Complaint at 1.