Thomson Reuters Global Resources v. Russell Magee / intach
Claim Number: FA1204001438247
Complainant is Thomson Reuters Global Resources (“Complainant”), represented by Alexandre A. Montagu of Montagulaw, P.C., New York, USA. Respondent is Russell Magee / intach (“Respondent”), British Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <isi-thomsonreuters.org>, registered with Web Commerce Communications Limited d/b/a Webnic.cc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2012; the National Arbitration Forum received payment on April 5, 2012.
On April 5, 2012, Web Commerce Communications Limited d/b/a Webnic.cc confirmed by e-mail to the National Arbitration Forum that the <isi-thomsonreuters.org> domain name is registered with Web Commerce Communications Limited d/b/a Webnic.cc and that Respondent is the current registrant of the names. Web Commerce Communications Limited d/b/a Webnic.cc has verified that Respondent is bound by the Web Commerce Communications Limited d/b/a Webnic.cc 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 April 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@isi-thomsonreuters.org. Also on April 10, 2012, 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 May 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant has made the following contentions.
1. Complainant, Thomson Reuters Global Resources, is a leading provider of information for businesses and professional in the financial, legal, tax, and accounting, healthcare and science, and media markets.
2. Complainant owns the THOMSON REUTERS mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,105,789 filed December 7, 2007; registered February 28, 2012).
3. Complainant owns numerous worldwide trademark registrations for its mark.
4. Complainant has acquired the rights to the ISI WEB OF KNOWLEDGE mark with the USPTO (Reg. No. 2,743,528 registered July 29, 2003).
5. Respondent, Russell Magee / intach, registered the <isi-thomsonreuters.org> domain name on August 29, 2011.
6. Respondent’s domain name resolves to a website that resembles Complainant’s websites and features entire sections that were copied from Complainant’s websites.
7. Respondent’s domain name is confusingly similar to the THOMSON REUTERS and ISI WEB OF KNOWLEDGE marks.
8. Respondent is attempting to pass itself off as Complainant and has no rights or legitimate interests in the domain name.
9. Respondent is also attempting to phish for Internet user’s personal information through a “login” form.
10. Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a leading provider of information for businesses and professional in the financial, legal, tax, and accounting, healthcare and science, and media markets.
2. Complainant owns the THOMSON REUTERS mark registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,105,789 filed December 7, 2007; registered February 28, 2012) and the ISI WEB OF KNOWLEDGE mark registered with the USPTO (Reg. No. 2,743,528 registered July 29, 2003). Complainant has also held common law trademark rights in THOMSON REUTERS since at least December 7, 2007.
3. Respondent registered the <isi-thomsonreuters.org> domain name on August 29, 2011. It resolves to a website that resembles Complainant’s websites and features entire sections that were apparently copied from Complainant’s 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."
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.
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.”).
The first issue that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has rights in the THOMSON REUTERS mark (Reg. No. 4,105,789 filed December 7, 2007; registered February 28, 2012) and ISI WEB OF KNOWLEDGE mark (Reg. No. 2,743,528 registered July 29, 2003) through its various trademark registrations with the USPTO. The Panel therefore finds that Complainant has rights in the THOMSON REUTERS and ISI WEB OF KNOWLEDGE marks under Policy ¶ 4(a) (i) by virtue of its trademark registrations with the USPTO, despite Respondent’s location. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Further, the Panel finds that Complainant’s rights in the THOMSON REUTERS mark date back to its time of filing its trademark application with the USPTO. 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 Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). The evidence has also established that Complainant has held common law trademark rights in THOMSON REUTERS since at least prior to December 7, 2007.
The second issue is whether the disputed domain name is identical or confusingly similar to either or both of the two trademarks. Complainant argues that the <isi-thomsonreuters.org> domain name is a combination of its THOMSON REUTERS and ISI WEB OF KNOWLEDGE marks. The Panel notes that the domain name contains only the “ISI” portion of the ISI WEB OF KNOWLEDGE mark while also including a hyphen. Further, the domain name contains the entire THOMSON REUTERS mark, apart from the space, in addition to the generic top-level domain (“gTLD”) “.org.” The Panel therefore finds that the disputed domain name is confusingly similar to the THOMSON REUTERS mark under Policy ¶ 4(a)(i), where the domain name contains that mark entirely while adding an abbreviated from of another of Complainant’s well known marks, namely ISI, a hyphen and a gTLD. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s THOMSON REUTER mark and part of another trademark of Complainant, namely the “ISI” component of the ISI WEB OF KNOWLEDGE mark and to use it in its domain name, creating the likelihood that internet users would assume that it was an official domain name of Complainant and that, if used, it would lead to an official website of Complainant;
(b) Respondent has then used the domain name to resolve to a website which is a clear attempt to pretend that Respondent is Complainant and that the website is Complainant’s website;
(c) Respondent has clearly engaged in these activities without the consent or authority of Complainant;
(d) Complainant also submits that Respondent is not commonly known by the disputed domain name and that the domain name bears no relationship to Respondent. The WHOIS information identifies “Russell Magee / intach” as the registrant of the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii). See 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); see also 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).
(e) Complainant also claims that Respondent’s domain name resolves to a website that contains several copies of Complainant’s official website pages. Complainant asserts that Respondent is attempting to pass itself off as Complainant through the use of these direct copies. Further, Complainant has alleged that Respondent is also attempting to obtain personal information from Internet users via a login page contained in the website pages. The Panel has compared the disputed domain name screenshots in Exhibit J and K to Complainant’s website screenshots in Exhibit L. As the Panel finds that Respondent is attempting to pass itself off and phish for Internet user’s personal information, the Panel finds that Respondent is therefore not making 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 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 Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name fraudulently to acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (I) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c) (iii)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. See Digit Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith) Thus, a UDRP Panel may find bad faith beyond the perimeters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Having regard to those principles, the Panel finds that Complainant registered and has used the disputed domain name in bad faith. That is so for the following reasons.
First, Complainant argues that the disputed domain name is being used to pass off as Complainant’s website. Complainant argues that Respondent is using the disputed domain name in a bad faith effort to pass itself and its website off as Complainant. Complainant argues that Respondent’s resolving website which also contains a web page that asks Internet users for personal information in order to log in. Complainant contends that both uses are evidence of Respondent’s bad faith registration and use of the domain name. The Panel agrees and finds that Respondent’s use of the disputed domain name is evidence of bad faith under Policy ¶ 4(a) (iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); 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).
Secondly, Complainant also contends that in light of the fame and notoriety of Complainant's THOMSON REUTERS mark, it is inconceivable that Respondent could have registered the <isi-thomsonreuters.org> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a) (iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the domain name using the THOMSON REUTERS mark and part of the ISI WEB OF KNOWLEDGE mark, and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
For the avoidance of doubt the Panel also finds that Respondent’s acts of bad faith in registration and use of the disputed domain name on August 29, 2011 occurred at a time when Complainant had trademark rights in the THOMSON REUTERS mark by virtue of its registration of that trademark on February 28, 2012, its rights to the mark having effect from the filing of its application on December 7, 2007 and its common law rights in the THOMSON REUTERS mark since at least December 7, 2007.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <isi-thomsonreuters.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
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