MIS Quality Management Corp. v. Venkatesh R Pai
Claim Number: FA1010001354430
Complainant is MIS Quality Management Corp. (“Complainant”), represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Venkatesh R Pai (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <moodysanalyticstraining.com>, registered with GoDaddy.com, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2010; the National Arbitration Forum received payment on October 25, 2010.
On October 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <moodysanalyticstraining.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@moodysanalyticstraining.com. Also on October 26, 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 November 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <moodysanalyticstraining.com> domain name is confusingly similar to Complainant’s MOODY’S ANALYTICS mark.
2. Respondent does not have any rights or legitimate interests in the <moodysanalyticstraining.com> domain name.
3. Respondent registered and used the <moodysanalyticstraining.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MIS Quality Management Corporation, is a subsidiary of Moody’s Corporation and owns the trademarks used by Moody’s Corporation and its subsidiaries including Moody’s Analytics, Inc. and Moody’s Investor Services, Inc. (“Moody’s”). Complainant uses its marks MOODY’S and MOODY’S ANALYTICS along with the domain name MOODYSANALYTICS.COM to provide and promote its financial information products and services. Moody’s Analytics, Inc. also offers financial training and educational products and services. Complainant holds multiple federal trademark registrations for its MOODY’S (e.g. Reg. No. 871,342 issued June 17, 1969) and MOODY’S ANALYTICS (e.g., Reg. No. 3,832,324 filed September 7, 2007; issued August 10, 2010) marks with the United States Patent Office (“USPTO”). Complainant also owns a trademark registration with the United Kingdom Intellectual Property Office (“UKIPO”) for its MOODY’S mark (e.g. Reg. No. 1,526,211 issued February 4, 1994).
Respondent, Venkatesh R. Pai, is one person in a long line of registrants that have held <moodysanalyticstraining.com> since June 19, 2010. The disputed domain name resolves to a site that includes links to many other financial and credit services websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it has established rights in the MOODY’S and MOODY’S ANALYTICS marks via registration and filing with a federal trademark authority. Previous panels have found that a trademark registration is sufficient to create rights in a given mark and that a complainant’s rights in the mark dates back to the filing date of the mark. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). Complainant provides evidence of trademark registrations for its MOODY’S mark with the USPTO (e.g. Reg. No. 871,342 issued June 17, 1969) and UKIPO (e.g. Reg. No. 1,526,211 issued Feb. 4, 1994). Complainant further includes evidence of trademark registrations for its MOODY’S ANALYTICS mark with the USPTO (e.g., filed Sept. 7, 2007; issued Aug. 10, 2010) and OHIM (Reg. No. 83,329 issued January 23, 2009). Based on the aforementioned trademark registrations, the Panel finds that Complainant has established rights in the MOODY’S and MOODY’S ANALYTICS marks under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <moodysanalyticstraining.com> domain name is confusingly similar to Complainant’s MOODY’S ANALYTICS mark. The disputed domain name includes the exact same words as the mark after removing the space separating the terms of the mark, but it adds the generic term “training,” along with the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that the addition of the gTLD, along with the generic term “training,” does not differentiate the disputed domain name from the Complainant’s mark. See 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 Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant asserts that Respondent lacks rights of legitimate interests in the <moodysanalyticstraining.com> domain name. Prior panels have found that the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant has made a prima facie case in support of its allegations. The Panel may find that Respondent does not have legitimate interests or rights in the domain name <moodysanalyticstraining.com> due to the fact that it failed to respond to the initial complaint. However, the Panel will determine if Respondent has rights or legitimate interests under Policy ¶ 4(c) by examining the entire record. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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.”).
Complainant asserts that Respondent is not commonly known by the <moodysanalyticstraining.com> domain name. Respondent has not presented any evidence that it is commonly known to the public by the <moodysanalyticstraining.com> domain name The WHOIS information in the record identifies respondent as “Vankatesh R Pai,” which is not similar to the <moodysanalyticstraining.com> domain name in any way. Based on the above mentioned, the Panel finds that Respondent is not commonly known as the <moodysanalyticstraining.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark)
Complainant also asserts that Respondent is not using the <moodysanalyticstraining.com> domain name for a legitimate non-commercial or fair use or as a tool for the bona fide offering of goods and services. Respondent uses <moodysanalyticstraining.com> domain name to resolve to a site that includes links to credit and finance providers. It is likely that Respondent collects click-through fees for each Internet user that goes uses his site to arrive at one of the linked sites. The Panel finds that the Respondent’s use of a confusingly similar disputed domain name to feature links to competing goods and service providers is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent’s <moodysanalyticstraining.com> resolves to a website featuring links to other credit and financial services. Complainant asserts that Internet users attempting to seek out its own credit and financial services may purchase similar services after being diverted to Respondent’s website. The Panel finds that the <moodysanalyticstraining.com> domain name does disrupt Complainant’s legitimate business interests and therefore constitutes bad faith registration on the part of Respondent under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”)
Due to the nature of Respondent’s site, the Panel infers that it collects some type of revenue via click-through fees. Respondent capitalizes on the Internet-user seeking out Complainant’s products by diverting them to its own site that offers what appears to be Complainant sponsored products and services. Respondent creates confusion among Internet users as to Complainant’s sponsorship of the disputed domain name, resolving website, and featured hyperlinks, due to the confusingly similar domain name. Therefore, the Panel finds Respondent’s registration and use of the <moodysanalyticstraining.com> domain name bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds the elements of Policy ¶ 4(a)(iii) have been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moodysanalyticstraining.com> domain name be TRANSFERRED.
Judge Harold Kalina (Ret.), Panelist
Dated: December 2, 2010
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