Thomson Reuters Global Resources v. PrivacyProtect.org / Domain Admin
Claim Number: FA1208001460784
Complainant is Thomson Reuters Global Resources (“Complainant”), represented by Alexandre A. Montagu, New York, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thomsoreuters.com>, registered with RegisterMatrix.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 30, 2012; the National Arbitration Forum received payment August 30, 2012.
On September 7, 2012, RegisterMatrix confirmed by e-mail to the National Arbitration Forum that the <thomsoreuters.com> domain name is registered with RegisterMatrix and that Respondent is the current registrant of the name. RegisterMatrix verified that Respondent is bound by the RegisterMatrix registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@thomsoreuters.com. Also on September 12, 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 October 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
1) Complainant, Thomson Reuters, is a leading provider of information for businesses and professionals in the financial, legal, tax and accounting, science, and media markets.
2) Complainant owns trademark registrations around the world for the THOMSON-REUTERS mark, including those with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 6474341 registered March 30, 2009).
3) Respondent registered the <thomsoreuters.com> domain name June 26, 2012.
4) Respondent’s <thomsoreuters.com> domain name is confusingly similar to Complainant’s THOMSON-REUTERS mark.
5) Respondent has no relationship with Complainant and is not commonly known by the disputed domain name. Respondent has not been given permission to use any form of Complainant’s mark.
6) Respondent is using the disputed domain name to resolve to a website filled with third-party links to various other websites, some of which offer products similar to Complainant’s.
7) Respondent’s registration and use of the disputed domain name to display links to third-party websites that offer goods and services in competition with Complainant constitutes a disruption of Complainant business.
8) Respondent’s efforts to generate revenue through the use of “sponsored” advertisements at a confusingly similar domain name is evidence of bad faith registration and use.
9) Respondent’s registration and use of the disputed domain name that contains a misspelling of Complainant’s mark is also evidence of bad faith registration and use.
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel 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 its THOMSON-REUTERS mark worldwide. The Panel notes that Complainant supplied a table with its various registrations of the THOMPSON REUTERS and THOMSON-REUTERS marks, but the table contains incomplete information. Further, the Panel notes that the only trademark certificate supplied by Complainant is from the OHIM for the THOMSON-REUTERS mark (Reg. No. 6474341 registered March 30, 2009). Nevertheless, the Panel finds that Complainant’s trademark registration with the OHIM is sufficient for it to establish rights in the mark under a Policy ¶ 4(a)(i) analysis, irrespective of Respondent’s location. See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <thomsoreuters.com> domain name is confusingly similar to Complainant’s THOMSON-REUTERS mark. The Panel notes that the disputed domain name removes the hyphen and letter “n” from Complainant’s mark while adding the generic top-level domain (“gTLD”) “.com.” Despite those changes, the Panel finds that Respondent’s disputed domain name is confusingly similar to the THOMPSON-REUTERS mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN 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 of proof shifts to Respondent to show it does have such 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 has no relationship with Complainant and is not commonly known by the disputed domain name. Further, Complainant asserts that Respondent has not been given permission to use any form of Complainant’s mark. The Panel notes that the WHOIS information for the disputed domain name identifies the disputed domain name’s registrant as “PrivacyProtect.org / Domain Admin.” The Panel finds that no evidence on record indicates that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <thomsoreuters.com> domain name pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant also argues that Respondent is using the disputed domain name to resolve to a website filled with third-party links to various other websites, some of which offer products that are similar to Complainant’s Complainant contends that Respondent’s use of sponsored links for commercial gain does not amount to a legitimate use of the disputed domain name. The Panel finds that Respondent’s links are contained under headings, such as “Online Banking,” “Credit,” “Personal Finance,” “Money Management,” etc. See Complainant’s Exhibit F. The Panel finds that Respondent’s use of the disputed domain name has been found by prior UDRP panels not to constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Therefore, the Panel here finds 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 <thomsoreuters.com> domain name under Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s registration and use of the disputed domain name to display links to third-party websites that offer goods and services in competition with Complainant constitutes a disruption of Complainant’s business. Complainant contends that such disruptive tendencies indicate that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). The Panel notes that prior UDRP panels have found that bad faith exists in similar situations. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel agrees with this prior precedent, and with Complainant’s unchallenged arguments, and finds bad faith under Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent’s efforts to generate revenue through the use of “sponsored” advertisements through a confusingly similar domain name is evidence of bad faith registration and use. Complainant alleges that such use “demonstrates that Respondent is attempting to generate commercial gain by creating confusion as to the affiliation of the Infringing Domain with Complainant’s marks.” Again, the Panel finds that prior UDRP panels have held that bad faith exists where a respondent is using a disputed domain name in a similar manner. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant contends that Respondent’s registration and use of the disputed domain name that contains a misspelling of Complainant’s mark is also evidence of bad faith registration and use. The Panel may note that the <thomsoreuters.com> domain name removes the hyphen and the letter “n” from Complainant’s mark. The Panel finds that such changes are evidence of typosquatting, which supports a finding by the Panel that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <thomsoreuters.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 18, 2012.
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