ITG Software Solutions, Inc. v. Valle Navarre
Claim Number: FA1206001449566
Complainant is ITG Software Solutions, Inc. (“Complainant”), represented by Leo M. Loughlin of Rothwell, Figg, Ernst & Manbeck P.C., Washington, D.C., USA Respondent is Valle Navarre (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <itgmarketsfx.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2012; the National Arbitration Forum received payment on June 20, 2012.
On June 20, 2012, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <itgmarketsfx.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 June 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@itgmarketsfx.com. Also on June 21, 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 July 20, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 makes the following assertions:
1. Respondent’s <itgmarketsfx.com> domain name is confusingly similar to Complainant’s ITG mark.
2. Respondent does not have any rights or legitimate interests in the <itgmarketsfx.com> domain name.
3. Respondent registered or used the <itgmarketsfx.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant owns trademark registrations for its ITG mark internationally, including with IP Australia (Reg. No. 938,838 registered Dec. 31, 2002).
2. Complainant also owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,581,518 registered June 18, 2002).
3. Respondent’s <itgmarketsfx.com> domain name is confusingly similar to Complainant’s ITG mark.
4. Respondent’s <itgmarketsfx.com> domain name contains Complainant’s mark in its entirety with the addition of the generic word “markets” and the letters “fx.”
5. Respondent has no rights or legitimate interests with respect to the <itgmarketsfx.com> domain name.
6. Respondent is attempting to trade off Complainant’s reputation.
7. Respondent’s resolving website is a fraudulent website purporting to be associated with Complainant and Complainant’s sister company ITG Derivatives.
8. Respondent is not commonly known by the <itgmarketsfx.com> domain name.
9. Respondent is not making a legitimate, noncommercial fair use of the <itgmarketsfx.com> domain name.
10. Respondent is intentionally misleading and diverting consumers and tarnishing Complainant’s trademarks.
11. Respondent registered and is using the <itgmarketsfx.com> domain name in bad faith because it is disrupting Complainant’s business and intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion.
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 presents the Panel with evidence of its trademark registrations for the ITG mark with trademark authorities around the world, including the following:
IPAustralia
Reg. No. 938,838 registered Dec. 31, 2002;
Reg. No. 738,136 registered July 1, 1997;
Canadian Intellectual Property Office (“CIPO”)
Reg. No. TMA631,868 registered Feb. 2, 2005;
European Union OHIM
Reg. No. 2,993,640 registered Nov. 18, 2004;
Israeli Patent Office (“IPO”)
Reg. No. 195,709 registered Nov. 5, 2008;
Intellectual Property Office of New Zealand (“IPONZ”)
Reg. No. 284,451 registered Jan. 29, 1999;
Reg. No. 284,452 registered Jan. 29, 1999;
Reg. No. 284453 registered Jan. 29, 1999;
United States Patent and Trademark Office (“USPTO”)
Reg. No. 2,581,518 registered June 18, 2002.
Based on this evidence, the Panel finds that complainant has established rights in the ITG mark pursuant to Policy ¶ 4(a)(i) through its international trademark registrations. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant contends that the <itgmarketsfx.com> domain name is confusingly similar to Complainant’s ITG mark. Complainant states that the <itgmarketsfx.com> domain name contains Complainant’s ITG mark in full with the addition of the generic word “markets” and the letters “fx.” Complainant wishes to note that “fx” is a known abbreviation in the financial securities industry signifying the generic term “foreign exchange.” The Panel notes that the <itgmarketsfx.com> domain also contains the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels have found that these alterations are insufficient to differentiate a disputed domain name from a registered trademark. 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 Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).
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 asserts that Respondent has no rights or legitimate interests with respect to the <itgmarketsfx.com> domain name. Specifically, Complainant contends that Respondent is not commonly known by the <itgmarketsfx.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant points out that Respondent does not even use the ITGMARKETSFX term anywhere on the website other than in the domain name. The Panel notes that Respondent does not provide any evidence that it is commonly known by the disputed domain name. Based on what is submitted, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further claims that Respondent is not making a legitimate, noncommercial fair use or a bona fide offering of goods or services of the <itgmarketsfx.com> domain name because it is hosting a fraudulent website, posing as Complainant’s sister company, ITG Derivatives, and attempting to trade off Complainant’s reputation. Complainant states the website even contains ITG Derivatives’ NFA registration number (0313260). Previous panels have held that using a complainants full mark in a disputed domain name and posing as Complainant is not a bona fide offering of goods or services or legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”)
Complainant asserts that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iii). Complainant claims that Respondent has registered the <itgmarketsfx.com> domain name for the primary purpose of disrupting Complainant’s business. Complainant states that Respondent’s resolving website uses Complainant’s ITG mark to fraudulently entrap potential customers of Complainant and its affiliate to advertise purported services in direct competition with Complainant’s products. Previous panels have found that using a confusingly similar domain name to operate a website competing with complainant’s business is bad faith pursuant to Policy ¶4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶ 4(b)(iii)”). Based on this analysis, the Panel finds that Respondent registered the <itgmarketsfx.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant further claims that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iv). Complainant contends that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s ITG mark. The Panel notes that Respondent uses Complainant’s ITG mark frequently throughout the resolving website. The Panel also notes that the resolving website contains tabs such as, “Open demo account,” “Open live account,” “Online Customer Service,” as well as other links aimed to deceive Internet users into believing that Respondent’s resolving website belongs to, and is operated by, Complainant. Based on Complainant’s assertions and evidence, the Panel finds that Respondent registered and uses the <itgmarketsfx.com> domain name in bad faith under Policy ¶ 4(b)(iv) when attracting consumers and financially profiting by creating a likelihood of confusion with Complainant’s mark. 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); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <itgmarketsfx.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 2, 2012
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