national arbitration forum

 

DECISION

 

Cass Information Systems, Inc. v. Domain Administrator

Claim Number: FA1012001365350

 

PARTIES

Complainant is Cass Information Systems, Inc. (“Complainant”), represented by David B. Jennings of Armstrong Teasdale LLP, Missouri, USA.  Respondent is Domain Administrator (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cassinformationsystems.com>, registered with Moniker Privacy Services.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2010; the National Arbitration Forum received payment on December 29, 2010.

 

On December 30, 2010, Moniker Privacy Services confirmed by e-mail to the National Arbitration Forum that the <cassinformationsystems.com> domain name is registered with Moniker Privacy Services and that Respondent is the current registrant of the names.  Moniker Privacy Services has verified that Respondent is bound by the Moniker Privacy Services 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 January 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2011 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@cassinformationsystems.com.  Also on January 5, 2011, 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 January 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

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 <cassinformationsystems.com> domain name is confusingly similar to Complainant’s CASS mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Cass Information Systems, Inc., markets and sells software and services for the organization and analysis of freight and transportation expense management.  Complainant owns several federal trademark registrations in its mark through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,665,200 issued November 19, 1991). 

 

Respondent, Domain Administrator, registered the <cassinformationsystems.com> domain name on June 3, 2005.  The disputed domain name resolves to a site offering links to the third party sites of 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 contends that it has established its rights in the CASS mark by registering the mark with a federal trademark authority, the USPTO.  Previous panels have found that obtaining a registration through a federal trademark authority provides affirmative evidence of a parties rights in that mark.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).  Therefore, the Panel finds that Complainant has established its rights in the mark pursuant to Policy ¶ 4(a)(i), by registering it with the USPTO (e.g., Reg. No. 1,665,200 issued November 19, 1991). 

 

Complainant also asserts that Respondent’s <cassinformationsystems.com> domain name is confusingly similar to its own CASS mark.  The disputed domain name incorporates the entirety of Complainant’s mark while only adding the descriptive terms “information” and systems, along with the generic top-level domain (“gTLD”) “.com.”  The Panel finds that Respondents addition of the gTLD and descriptive terms not only fails to differentiate the disputed domain name from Complainant’s CASS mark but serve to further the confusion between the two.  See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business);  see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to 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.”).  Therefore, the panel finds that Respondent’s  <cassinformationsystems.com> domain name is confusingly similar to Complainant’s CASS mark under Policy ¶ 4(a)(i).

 

The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent.  Previous panels have found that once Complainant has made it prima facie case the burden then shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).  When Respondent failed to answer the initial complaint the Panel is then allowed to presume that Respondent lacks any rights or legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  However, the Panel will still fully examine the record to make its determination on whether Respondent does in fact have rights or legitimate interests in the <cassinformationsystems.com> domain name according to the factors listed in Policy ¶ 4(c).

 

Complainant asserts that Respondent is not commonly known by the <cassinformationsystems.com> domain name.  Respondent has brought forth no evidence to establish the fact that it is commonly known by the disputed domain name.  The WHOIS information identifies Respondent as “Domain Administrator.”  Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See  Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant also asserts that Respondent is not engaging in a bona fide offering of goods and services or making a legitimate noncommercial or fair use of the <cassinformationsystems.com> domain name.  Respondent’s disputed domain name resolves to a site offering links to many third-party links which lead to Complainant’s competitors.  The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to its own site offering links to Complainant competitors is not a bona fide offering of goods and services or a legitimate or noncommercial fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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)).

 

The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.  

 

Registration and Use in Bad Faith

 

Respondent’s <cassinformationsystems.com> domain name resolves to a website offering links to Complainant’s competitors.  Complainant alleges that this constitutes bad faith registration and use because the confusingly similar domain name disrupts its business.  The Panel finds that Respondent’s chosen usage of the disputed domain name does disrupt Complainant’s business and is therefore affirmative evidence of its bad faith use and registration pursuant to Policy ¶ 4(b)(iii).  See 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)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Complainant also contends that Respondent’s use of the <cassinformationsystems.com> domain name for its own commercial gain supports the finding of bad faith use and registration.  Respondent’s <cassinformationsystems.com> domain name resolves to a website offering links to Complainant’s competitors, for which it presumably receives click-through fees when Internet users are diverted to the competitors sites.  The Panel finds that Respondent’s use of the disputed domain name for its own pecuniary gain does provide affirmative evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also 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)(iv) 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).

 

The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.

 

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

 

James A. Carmody, Esq., Panelist

Dated:  January 31, 2011

 

 

 

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