Alliance Data Systems Corporation v. Market Companion
Claim Number: FA1205001445243
Complainant is Alliance Data Systems Corporation (“Complainant”), represented by John C. Cain of Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P., Texas, USA. Respondent is Market Companion (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alliancedata.org>, registered with GoDaddy.com, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2012; the National Arbitration Forum received payment on May 22, 2012.
On May 22, 2012, GoDaddy.com, LLC. confirmed by e-mail to the National Arbitration Forum that the <alliancedata.org> domain name is registered with GoDaddy.com, LLC. and that Respondent is the current registrant of the name. GoDaddy.com, LLC. has verified that Respondent is bound by the GoDaddy.com, LLC. 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 May 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@alliancedata.org. Also on May 23, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 makes the following contentions:
a) Complainant has rights in the ALLIANCEDATA mark, which it uses in connection with financial and marketing services;
b) Complainant owns United States Patent and Trademark Office (“USPTO”) trademark registrations for the ALLIANCEDATA mark (e.g., Reg. No. 3,224,452 registered April 3, 2007);
c) The <alliancedata.org> domain name is identical to the ALLIANCEDATA mark;
d) Respondent is not commonly known by the <alliancedata.org> domain name;
e) The <alliancedata.org> domain name resolves to a website that advertises Respondent’s services, which are similar to Complainant’s;
f) The <alliancedata.org> domain name disrupts Complainant’s business;
g) Respondent intentionally attempts to attract, for commercial gain, Internet users to the <alliancedata.org> domain name by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website;
h) Respondent had constructive and/or actual knowledge of Complainant’s rights in the ALLIANCEDATA mark prior to Respondent’s registration of the <alliancedata.org> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its ALLIANCEDATA mark.
2. Respondent’s <alliancedata.org> is identical to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the 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 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 contends that it has rights in the ALLIANCEDATA mark, which Complainant claims Complainant’s financial and marketing services are affiliated with. Complainant asserts, and provides supporting evidence, that it has trademark registrations for the ALLIANCEDATA mark (e.g., Reg. No. 3,224,452 registered April 3, 2007) with the USPTO. Panels have found that the required showing of rights in a mark is satisfied with proof of registration of the mark with a federal trademark authority. See 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 rights in the ALLIANCEDATA mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <alliancedata.org> domain name is identical to the ALLIANCEDATA mark. Complainant contends that Respondent merely took Complainant’s mark and added the generic top-level domain (“gTLD”) “.org” to create the <alliancedata.org> domain name. The Panel finds that Respondent’s addition of a gTLD fails to create any distinction between the <alliancedata.org> domain name and the ALLIANCE mark. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark). As such, the Panel finds that Respondent’s <alliancedata.org> domain name is identical to the ALLIANCEDATA mark under Policy ¶ 4(a)(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); 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 argues that Respondent is not commonly known by the name “AllianceData.” Complainant contends that Respondent does not operate a business or organization under that name and that Respondent is not licensed or otherwise authorized to use the ALLIANCEDATA mark in any way. Finally, Complainant notes that the WHOIS record for the <alliancedata.org> domain name lists “Market Companion” as the domain name registrant, which Complainant argues is further evidence that Respondent is not known by the <alliancedata.org> domain name. Based on the information available regarding Respondent’s identity, the Panel finds that Respondent is not commonly known by the <alliancedata.org> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant asserts that Respondent does not have rights or legitimate interests in the <alliancedata.org> domain name. The <alliancedata.org> domain name, Complainant contends, resolves to Respondent’s website where services similar to those offered by Complainant in the financial and marketing industries are offered by Respondent. The panels in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), held that the use of a disputed domain name to offer services in competition with the complainant’s does not fall within Policy ¶¶ 4(c)(i) and 4(c)(iii) and thus does not give the respondent rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that Respondent’s use of the <alliancedata.org> domain name to promote its own services in the financial and marketing industries is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that the <alliancedata.org> domain name is disruptive to Complainant’s business. Complainant asserts that the <alliancedata.org> domain name resolves to a website where Respondent advertises its services that are similar to those that Complainant offers under the ALLIANCEDATA mark. Panels have held that the registration and use of a domain name that resolves to the competing business of the respondent’s is disruptive to the complainant’s business. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion). Therefore, the Panel finds that Respondent registered and uses the <alliancedata.org> domain name in bad faith. Tthe Panel finds that the <alliancedata.org> domain name is disruptive pursuant to Policy ¶ 4(b)(iii).
Complainant next asserts that Respondent’s bad faith registration and use of the <alliancedata.org> domain name is demonstrated by Respondent’s attempt to attract, for commercial gain, Internet users to the <alliancedata.org> domain name by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <alliancedata.org> domain name. Complainant states that Respondent’s <alliancedata.org> domain name is identical to the ALLIANCEDATA mark and resolves to a website where Respondent advertises its own competing services. Therefore, the Panel finds that Respondent registered and is using the <alliancedata.org> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent intentionally created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the <alliancedata.org> domain name so as to attract Internet users to the website for Respondent’s commercial gain. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant asserts that, due to its federal trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the ALLIANCEDATA mark when Respondent registered the disputed domain name. Complainant further argues that the extensive advertising and well-known nature of the ALLIANCEDATA mark indicate that Respondent had actual knowledge of Complainant and its rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, concluding that Respondent registered the <alliancedata.org> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <alliancedata.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 3, 2012
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