ITG Software Solutions, Inc. v. Cheng hao
Claim Number: FA1201001427294
Complainant is ITG Software Solutions, Inc. (“Complainant”), represented by Anne M. Sterba of Rothwell, Figg, Ernst & Manbeck P.C., Washington D.C., USA. Respondent is Cheng hao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <itgforex.com>, registered with OnlineNIC Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 31, 2012; the National Arbitration Forum received payment January 30, 2012. The Complaint was submitted in both Chinese and English.
On February 2, 2012, OnlineNIC Inc confirmed by e-mail to the National Arbitration Forum that the <itgforex.com> domain name is registered with OnlineNIC Inc and that Respondent is the current registrant of the name. OnlineNIC Inc verified that Respondent is bound by the OnlineNIC Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 13, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 5, 2012, 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@itgforex.com. Also on February 13, 2012, the Chinese language 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 March 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Pursuant to Rule 11(a), the Panel finds that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant urges the following in this proceeding:
1. Respondent registered the disputed domain name using a mark in which Complainant has exclusive rights.
2. Respondent has no rights to or legitimate interests in the disputed domain name.
3. Respondent registered and used the disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ITG mark through registrations of the mark with the USPTO and multiple international agencies.
The <itgforex.com> domain name is confusingly similar to Complainant’s ITG mark.
Respondent has no rights to or legitimate interest in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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."
Paragraph 4(a) of the Policy requires Complainant to 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.
(4) 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."
Given 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 will draw such inferences as the Panel 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.”).
Complainant alleges that it owns trademark registrations from around the world for the ITG mark and submits trademark certificates with various agencies, including the Chinese State Administration of Industry and Commerce (“SAIC”) (Reg. No. 1,336,370 registered Nov. 1, 2008), the Hong Kong Intellectual Property Department (“HKIPD”) (e.g., Reg. No. 2004B01524AA registered Jan. 3, 2003), and the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,581,518 registered June 18, 2002). Complainant asserts that the <itgforex.com> domain name is confusingly similar to its ITG mark. Complainant also urges that Respondent previously and currently uses the disputed domain name to resolve to a fraudulent website that purports to be associated with Complainant and Complainant’s sister company and that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent registered the disputed domain name in bad faith for the purpose of disrupting Complainant’s business by fraudulently entrapping potential customers of Complainant, and its affiliates, and promoting purporting services that seek to compete with Complainant’s products.
Complainant urges that it registered its ITG mark with various trademark agencies around the world and provided the Panel with its registration certificates with numerous various trademark authorities. Complainant claims that these registrations confer rights in the mark. Previous panels have found that registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Based on the proof before it, the Panel finds that Complainant established rights in the ITG mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <itgforex.com> domain name is confusingly similar to Complainant’s ITG mark for the purposes of Policy ¶ 4(a)(i). Complainant asserts that the disputed domain name contains Complainant’s mark, while adding the descriptive term “forex,” a generic term in the financial industry signifying “foreign exchange,” and the generic top-level domain (“gTLD”) “.com.” Addition of a term with a clear relationship to Complainant’s business does not create a unique domain name. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). In this case, Complainant contends that the term “forex” is clearly descriptive of Complainant’s securities brokerage management and trading strategies businesses. Additionally, UDRP precedent indicates that the affixation of a gTLD cannot defeat a confusingly similar claim. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent did not submit a Response and makes no contentions relative to Policy¶ 4(a)(i).
The Panel finds that the disputed <itgforex.com> domain name is confusingly similar to a mark in which Complainant has established rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must make a prima facie case to support its allegations that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant does so, which the Complainant has done here, the burden of proof shifts to Respondent to show it does have such rights to or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <itgforex.com> domain name within the meaning of Policy ¶ 4(c)(ii). The Panel finds that the WHOIS information for the disputed domain name identifies the domain name registrant as “Cheng hao,” which the Panel finds is not nominally similar to the <itgforex.com> domain name. Further, the Panel notes that Respondent in this case failed to file a Response, therefor offering no proof of rights or legitimate interests. Without such a submission, the Panel finds no evidence in the record indicates that Respondent is in fact commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Given the Panel’s foregoing findings, the Panel finds that Respondent is not commonly known by the disputed domain name within the meaning of 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant urges that the disputed domain name resolves to a website, which attempts to pass itself off as being affiliated with Complainant and Complainant’s sister company NFA’s marks and provide information about Complainant’s business. This type of use demonstrates a respondent’s lack of rights or legitimate interests in a domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent is not using the disputed domain name for 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration and use of the disputed domain name supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). Under the facts of this case, the Panel may make an inference that Respondent realizes financial gain from the operation of the disputed website, thereby making its existence economically viable. Respondent’s use of a confusingly similar domain name seems calculated to create confusion as to Respondent’s affiliation with Complainant and to benefit from the goodwill associated with Complainant and its products and services. Such confusion is likely to lead to greater user traffic at the disputed website. The Panel finds it likely as well that greater traffic to Respondent’s site in turn generates greater monetary profit for Respondent. The Panel finds that Respondent’s creation of confusion in order to generate commercial gain constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also 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).
Complainant further alleges that Respondent purports to be Complainant through the use of a confusingly similar domain name and the display of information and marks relating to Complainant and Complainant’s sister company. The Panel finds that Respondent has wrongfully attempted to pass itself off as Complainant, conduct that also supports findings of bad faith. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Such “passing off” supports an inference that Respondent acted with actual awareness of Complainant’s rights in its mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <itgforex.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 23, 2012.
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