DLJ Long Term Investment Corporation v.
Buydomains.com a/k/a Buy This Domain a/k/a RareNames/WebReg
Claim
Number: FA0302000144646
Complainant is
DLJ Long Term Investment Corporation, Chicago, IL (“Complainant”)
represented by James E. Griffith, of McDermott Will & Emery.
Respondent is Buy This Domain a/k/a RareNames/WebReg, Washington,
DC (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <stockscan.com> and
<stockscans.net>, registered with Registration Technologies, Inc.
& Domain Discover.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 6, 2003; the Forum received a hard copy of the
Complaint on February 6, 2003.
On
February 7, 2003 & February 20, 2003, Registration Technologies, Inc. &
Domain Discover confirmed by e-mail to the Forum that the domain names <stockscan.com>
and <stockscans.net> are registered with Registration
Technologies, Inc. & Domain Discover and that Respondent is the current
registrant of the names. Registration Technologies, Inc. & Domain Discover
has verified that Respondent is bound by the Registration Technologies, Inc.
& Domain Discover registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
February 20, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 12, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@stockscan.com and
postmaster@stockscans.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 27, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <stockscan.com> and
<stockscans.net> domain names are identical and/or confusingly
similar to Complainant’s STOCKSCAN mark.
2. Respondent does not have any rights or
legitimate interests in the <stockscan.com> and
<stockscans.net> domain names.
3. Respondent registered and used the <stockscan.com>
and <stockscans.net> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, DLJ
Long Term Investment Corporation, has continually used the STOCKSCAN mark in
association with its financial services and securities information and
assistance since March 1997.
Complainant owns a registered trademark with the United States Patent
and Trademark Office (“USPTO”) for the STOCKSCAN mark (Reg. No.
2,373,240).
Complainant asserts that its widespread, continuous and
prominent use of the STOCKSCAN mark has resulted in a high level of consumer
recognition and source association. As
a result, Complainant contends that the STOCKSCAN mark holds a significant
amount of goodwill.
Respondent
registered the domain name on June 17, 2002.
Respondent registered the <stockscan.com> and
<stockscans.net> domain names on July 28, 2002. Respondent uses the domain names to link to
the <buydomains.com> website, where the domain name registrations may be
purchased. When the <stockscan.com>
domain name is clicked on at the <buydomains.com> website, a purchase
price between $688 and $10,000 is quoted.
Similarly, the <stockscans.net> domain name is offered for
sale at the <buydomains.com> website for $288.
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.
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.
Complainant has established its rights in the STOCKSCAN mark
through proof of trademark registration with the USPTO.
Respondent’s <stockscan.com>
domain name wholly incorporates Complainant’s STOCKSCAN mark. The only variation between the domain name
and the mark is the addition of the generic top-level domain “.com.” For purposes of a Policy ¶ 4(a)(i)
“identical” analysis, generic top-level domains are irrelevant. Therefore, Respondent’s domain name is
identical to Complainant’s STOCKSCAN mark.
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
Respondent’s <stockscans.net>
domain name is comprised of Complainant’s entire STOCKSCAN mark with the letter
“s” added as a suffix. Adding an “s” to
a trademark does not take the domain name out of the realm of confusing
similarity. See Nat’l Geographic Soc. v. Stoneybrook Inv.,
FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to Complainant’s
“National Geographic” mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)
(finding that “the addition of an ‘s’ to the end of the Complainant’s mark,
‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of
the remaining identical mark. The domain name <creampies.com> is similar
in sound, appearance, and connotation”).
Hence, Respondent’s domain name is confusingly similar to Complainant’s
STOCKSCAN mark.
The Panel finds
that Policy ¶ 4(a)(i) is satisfied.
Complainant has
submitted a prima facie Complaint, which contains assertions that Respondent
lacks rights or legitimate interests in the <stockscan.com> and
<stockscans.net> domain names.
Complainant’s submission shifts the burden to Respondent to come forward
and articulate such rights or legitimate interests. Respondent, however, has failed to file a Response, and thus the
Panel presumes that Respondent has no rights or legitimate interests in the
subject domain names. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Furthermore, the
Panel will accept all reasonable allegations as true and draw all reasonable
inferences in Complainant’s favor due to the lack of response. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence); see also
Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent uses
both <stockscan.com> and <stockscans.net> domain
names to direct traffic to a website that sells domain name registrations,
<buydomains.com>. The Internet
user that ends up at this website may purchase either domain name for as low as
$288 for <stockscans.net> or $688 for <stockscan.com>. When attempting to purchase the <stockscan.com>
domain name a disclaimer notifies the potential buyer that the domain name
could cost as much as $10,000. The
solicitation of domain names that are identical and/or confusingly similar to
the marks of others for a price in excess of the original purchase price does
not represent rights or legitimate interests in the domain names. Thus, Respondent’s sales solicitations do
not represent rights or legitimate interests in the subject domain names
pursuant to Policy ¶¶ 4(c)(i) or (iii).
See J. Paul Getty Trust v.
Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding
rights or legitimate interests do not exist when one has made no use of the
websites that are located at the domain names at issue, other than to sell the
domain names for profit); see also Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
Respondent’s conduct purporting to sell the domain name suggests it has no legitimate
use).
No evidence
exists that establishes the <stockscan.com> and
<stockscans.net> domain names as Respondent’s common identity. The WHOIS information for both subject
domain names indicates a common contact as “RareNames, WebReg.” The Panel infers that this is Respondent’s
common business identity, and Respondent did not come forward to demonstrate
otherwise. Therefore, Respondent has no
rights or legitimate interests in the <stockscan.com> and
<stockscans.net> domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Accordingly, the
Panel finds that Respondent has no rights or legitimate interests in the <stockscan.com>
and <stockscans.net> domain names; thus, Policy ¶ 4(a)(ii) is
satisfied.
As previously
mentioned, Respondent offers the subject domain name registrations for sale at
the website that users access when entering the domain names in the
web-browser. The subject domain name
registrations are quoted for as low as $288 and as high as $10,000. Both prices are typically in excess of the
general cost associated with domain name registration. In fact, Respondent itself offers domain
name registrations for as low as $16 per year.
The Panel infers that Respondent’s costs associated with the domain
names are far less than $288, the lowest quoted price. In addition, Respondent has not come forward
to explain or justify the high prices for the subject domain name
registrations. Therefore, Respondent’s
efforts to sell the registrations of the subject domain names in excess of
out-of-pocket costs evidences bad faith registration and use pursuant to Policy
¶ 4(b)(i). See Nabisco Brands Co. v. Patron Group,
D2000-0032 (WIPO Feb. 23, 2000) (finding that the Respondent registered and
used the domain names to profit where Respondent offered to sell the domain
names for $2,300 per name); see also Randstad
Gen. Partnet, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24,
2000) (finding bad faith where the Respondent offered the domain name for sale
on its website <internetdomains4u.com> for $24,000).
The Panel finds
that Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <stockscan.com> and <stockscans.net>
domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch , Panelist
Dated:
May 6, 2003
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