Primerica, Inc. v. Todd McLean
Claim Number: FA1204001438765
Complainant is Primerica, Inc. (“Complainant”), represented by Adam M. Weaver of Primerica, Inc., Georgia, USA. Respondent is Todd McLean (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pfsinvestment.com>, registered with Godaddy.com, Inc.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2012; the National Arbitration Forum received payment on April 16, 2012.
On April 11, 2012, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <pfsinvestment.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 April 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@pfsinvestment.com. Also on April 19, 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 15, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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
1. Complainant has common law rights in the PFS INVESTMENTS mark.
2. Respondent’s <pfsinvestment.com> domain name is confusingly similar to Complainant’s mark.
3. The domain name incorporates Complainant’s famous mark in its entirety.
4. Respondent’s domain name is likely to confuse visitors by creating the impression that Respondent is somehow related to or affiliated with Complainant.
5. Respondent is not making a bona fide use of the disputed domains.
6. Respondent is not commonly known by the <pfsinvestment.com> domain name.
7. Respondent intended to divert customers and induce them to purchase its services instead of those of Complainant’s.
8. Respondent registered and is using the <pfsinvestment.com> domain name in bad faith.
9. Respondent registered the <pfsinvestment.com> domain name with the sole intent to profit from the customer’s confusion created by the confusing similarity of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant Primerica is a well-known provider of life insurance, investments, and other financial products and services that owns the common law mark PFS INVESTMENTS. Primerica’s predecessor organization registered the corporate entity “First American National Securities, Inc.” with the state of Georgia in 1981. In 1992, the entity changed its name to “PFS Investments Inc.”. PFS Investments Inc. is a wholly-owned subsidiary of Primerica. Since at least 1992, Primerica has used the PFS INVESTMENTS mark in interstate commerce through the provision of retail securities brokerage services. Since 2011, Primerica has used the PFS INVESTMENTS mark in interstate commerce through the provision of investment advisory services. Primerica has registered the entity as a securities broker-dealer with the Financial Industry Regulatory Authority (“FINRA”) and as an investment advisory firm with the U.S. Securities and Exchange Commission (“SEC”) as well as provided notice registration in all 50 states, Guam, and Puerto Rico.
Primerica has enjoyed customer relationships with over two million current and former clients under the PFS INVESTMENTS mark. The PFS INVESTMENTS mark has become widely known and associated with Complainant both in the financial services industry and in the general public. Currently the PFS INVESTMENTS mark is being used on a daily basis by over 15,000 registered securities broker-dealer representatives in all fifty states, Puerto Rico, and elsewhere.
Respondent Todd McLean registered the <pfsinvestment.com> domain name on November 10, 2011. Respondent purports to market investment-related financial services via the website at <pfsinvestment.com>.
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.”).
Complainant does not present the Panel with evidence of a trademark registration for its mark. However, a trademark registration is not required under the UDRP. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant has common law rights in the PFS INVESTMESTS mark. Complainant has offered insurance and financial products and services since 1977. Complainant’s predecessor organization registered the corporate entity “First American National Securities, Inc.” on July 7, 1981 with the state of Georgia. Effective July 1, 1992, the company changed its name to “PFS Investments Inc.” Complainant has used the PFS INVESTMENTS mark in interstate commerce and has registered the entity as a securities broker-dealer with the Financial Industry Regulatory Authority and as an investment advisory firm with the U.S. Securities and Exchange Commission. Further, the PFS INVESTMENTS mark is being used on a daily basis by registered securities broker-dealer representatives in the United States and other countries. Based on these facts showing previous use, the Panel finds that Complainant has common law rights in the PFS INVESTMENTS mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding common law rights in the BOND DIAMONDS mark because the complainant had used the mark in commerce for twelve years before the respondent registered the <bonddiamond.com> domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).
Respondent’s <pfsinvestment.com> domain name is confusingly similar to Complainant’s PFS INVESTMENTS mark the domain name eliminates the “s” from Complainant’s PFS INVESTMENTS mark, and includes the addition of the generic-top level domain (“gTLD”) “.com.” Respondent utilizes a common misspelling of the PFS INVESTMENTS mark. Based on previous UDRP cases holding that these alterations are insufficient to differentiate a disputed domain name from a mark, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s PFS INVESTMENTS mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).
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).
Respondent lacks rights and legitimate interest in the <pfsinvestment.com> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information identifies “Todd McLean” as registrant of the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); 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).
Also, Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use interest with the <pfsinvestment.com> domain name. Respondent’s <pfsinvestment.com> domain name resolves to a website which entirely incorporates Complainant’s mark as well as offers competing services. Respondent had knowledge of Complainant’s use of the PFS INVESTMENTS mark and therefore offered the <pfsinvestment.com> domain to use in an attempt to profit from the inevitable confusion cause by the similarities between the mark and disputed domain. The Panel finds that Respondent’s use of the disputed domain name to offer competing products and profit from Internet users does not constitute a bona fide offering of goods or services under policy ¶4(c)(i) or a legitimate noncommercial or fair use interest under Policy ¶4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
Respondent has engaged in bad faith registration and use according to Policy ¶ 4(b)(iii) by offering related services similar to those offered by Complainant under the PFS INVESTMENTS mark. The Panel finds that Respondent registered and uses the <pfsinvestment.com> domain name in bad faith under Policy ¶4(b)(iii) by using the domain name to compete with Complainant and disrupt its business. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent has shown bad faith registration and use according to Policy ¶4(b)(iv) by creating a likelihood of confusion with Complainant’s mark through its confusingly similar domain name, thereby misleading Internet users and diverting Internet traffic to the resolving website for commercial gain. Respondent registered the disputed domain name for the purpose of attracting business and offering related services similar to Complainant’s. The Panel finds that Respondent registered and uses the <pfsinvestment.com> domain name in bad faith under ¶4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).
Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. The Panel concludes 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pfsinvestment.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 29, 2012
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