Thomson Reuters v. Above.com Domain Privacy
Claim Number: FA1207001454510
Complainant is Thomson Reuters (“Complainant”), represented by Alexandre Montagu of MontaguLaw, P.C., New York, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <knowledgereuters.com>, registered with ABOVE.COM PTY LTD.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2012; the National Arbitration Forum received payment on July 20, 2012.
On July 31, 2012, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <knowledgereuters.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 July 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@knowledgereuters.com. Also on July 31, 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 August 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant Thomson Reuters is the world's leading source of information for businesses and professionals in the fields of finance, law, tax and accounting, science and media. The company has been in existence since the nineteenth century. Thomson Reuters is listed on both the Toronto Stock Exchange and the New York Stock Exchange, and employs 55,000 people with locations in 100 countries. Its revenues exceeded thirteen billion dollars (USD$13.1 Billion) in 2010 alone. In 2011, Thomson Reuters was ranked number 37 in Interbrand's survey of the 100 Best Global Brands.
Complainant registered the REUTERS KNOWLEDGE mark with United States Patent Office (“USPTO”) (Reg. No. 3,140,820 registered September 12, 2006). Complainant also registered the REUTERS KNOWLEDGE mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 2,948,248 registered July 15, 2005). Similarly, Complainant has several trademark registrations for its REUTERS mark with various registries throughout the world.
Respondent’s <knowledgereuters.com> domain name is confusingly similar to Complainant’s REUTERS KNOWLEDGE mark.
Respondent is not commonly known by the disputed domain name and has no relationship with Complainant.
Respondent is not making a noncommercial or fair use of the disputed domain name.
Respondent uses the disputed domain name to provide links to third-party websites that sell products that compete with those offered by Complainant.
Respondent prominently displays a slogan used by Complainant to confuse Internet users.
Respondent is attempting to generate commercial gains by creating confusion as to the affiliation of the disputed domain name with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has, and had, trademark rights in the marks REUTERS KNOWLEDGE and REUTERS at all times relevant to this proceeding by virtue of its registration of such marks with national trademark authorities, and otherwise.
Respondent is not commonly known by the at‑issue domain name.
Respondent was aware of Complainant and its trademarks, REUTERS KNOWLEDGE and REUTERS, at the time it registered the at‑issue domain name.
Respondent is not authorized to use either Complainant’s REUTERS KNOWLEDGE or its REUTERS trademark.
Respondent uses the at‑issue domain name to provide links to third-party websites that sell products that compete with those offered by Complainant.
Respondent prominently displays a slogan used by Complainant on Respondent’s <knowledgereuters.com> website.
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 at‑issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant registered both the REUTERS KNOWLEDGE mark and the REUTERS mark with the recognized trademark authorities and thereby establishes its rights in the such marks under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <knowledgereuters.com> domain name is confusingly similar to Complainant’s REUTERS KNOWLEDGE mark as well as its REUTERS mark. The at‑issue domain name includes the entire REUTERS KNOWLEDGE mark, albeit with the terms reversed, while adding the generic top-level domain, “.com.” Similarly, the at‑issue domain name contains Complainant’s entire REUTERS mark with the addition of the term “knowledge” and “com” top level. These alterations to Complainant’s trademarks are insufficient to differentiate the at‑issue domain name from either trademark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark(s) in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in either of the at‑issue domain names.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
There is no evidence that Respondent is commonly known by the disputed domain name and WHOIS information identifies the registrant of the domain name as “Above.com Domain Privacy.” The Panel thus concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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). Additionally, Respondent uses the disputed domain name to provide links to third-party websites that sell products that compete with those offered by Complainant. Using the at‑issue domain name in this manner demonstrates that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
In light of the uncontroverted evidence of record, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Respondent is attempting to financially gain by creating confusion as to the affiliation of the disputed domain name with Complainant. As mentioned above, Respondent uses the disputed domain name to provide links to third-party websites that sell products that compete with those offered by Complainant. It is reasonable to assume that such links generate income to Respondent when clicked on. What’s more, Respondent prominently displays a slogan used by Complainant on the <knowledgereuters.com> website. The unauthorized use of the slogan adds to Internet users’ confusion as to the website’s sponsorship. These circumstances show that Respondent is attempting to commercially gain by confusing Internet users into believing that Complainant is somehow affiliated with Respondent. Given the foregoing, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Furthermore, in light of the fact that Respondent uses the domain names to trade on Complainant’s goodwill via the at‑issue domain name’s affiliate website, there can be little doubt that Respondent had actual knowledge of Complainant’s rights in the disputed domain name at the time of its registration. There is also little doubt that those rights are what inspired Respondent to register and use the at‑issue domain name. Respondent’s knowledge of Complainant and Complainant’s trademarks additionally urges that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <knowledgereuters.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 23, 2012
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