Thomson Reuters Global Resources v. Private Registration / Private Registration DO
Claim Number: FA1208001460785
Complainant is Thomson Reuters Global Resources (“Complainant”), represented by Alexandre A. Montagu, New York, USA. Respondent is Private Registration / Private Registration DO (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thomsonreutes.com>, registered with Bargin Register, Inc.
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 31, 2012.
After numerous requests, the Registrar, Bargin Register, Inc., has not confirmed to the National Arbitration that the <thomsonreutes.com> domain name is registered with Bargin Register, Inc. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On September 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 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@thomsonreutes.com. Also on September 19, 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 16, 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.
Parties’ Contentions
I. Complainant makes the following allegations in this proceeding:
a. Complainant is a leading provider of information for businesses and professionals in the financial, legal, tax and accounting, science, and media markets.
b. Complainant owns trademark registrations for its THOMPSON REUTERS mark around the world.
c. Complainant owns the THOMPSON-REUTERS mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 6474341 registered March 30, 2009).
d. Respondent registered the <thomsonreutes.com> domain name January 2, 2009.
e. Respondent’s <thomsonreutes.com> domain name is confusingly similar to the THOMPSON REUTERS mark.
f. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent is not commonly known by the disputed domain name and has not been granted permission to use the disputed domain name.
ii. Respondent is using the disputed domain name to present Internet users with a series of “Sponsored” links to companies and products in competition with Complainant.
g. Respondent registered and is using the disputed domain name in bad faith.
i. Respondent’s disputed domain name is being used to disrupt the business of Complainant in bad faith.
ii. Respondent is intentionally attempting to attract, for commercial gain, Internet users, to the resolving website by creating confusion in the minds of Internet users as to Complainant’s affiliation with the disputed domain name.
iii. Respondent’s registration of a domain name consisting of an intentional misspelling of Complainant’s mark is evidence of bad faith.
iv. Respondent had knowledge of Complainant’s rights in the THOMPSON REUTERS mark, as Complainant’s mark is famous and well known.
II. Respondent did not submit a Response.
Complainant established that it has rights in the mark used in its entirety, however misspelled, in 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 containing Complainant’s mark.
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 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 asserts that it is a leading provider of information for businesses and professionals in the financial, legal, tax and accounting, science, and media markets. Complainant contends that it owns trademark registrations for its THOMPSON REUTERS mark around the world. However, Complainant only supplies evidence indicating that Complainant owns the THOMPSON-REUTERS mark with the OHIM (Reg. No. 6474341 registered March 30, 2009). See Complainant’s Exhibit D. Therefore, the Panel finds that Complainant established its rights in the THOMPSON-REUTERS mark under Policy ¶ 4(a)(i), as Complainant provided evidence of its trademark registration with the OHIM. 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)).
Complainant also urges that Respondent’s <thomsonreutes.com> domain name is confusingly similar to the THOMPSON REUTERS mark. The Panel notes that Complainant established rights in the THOMPSON-REUTERS mark, per Complainant’s submitted evidence. The Panel notes as well that the disputed domain name removes the hyphen from the mark, omits the letter “r,” and adds the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s 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 that 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 is not commonly known by the disputed domain name and has not been granted permission to use the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name identifies “Private Registration / Private Registration DO” as the registrant, and no further evidence on record indicates that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Further, Complainant asserts that Respondent’s lack of rights and legitimate interests in the disputed domain name is clear as Respondent is using the disputed domain name to present Internet users with a series of “Sponsored” links to companies and products in competition with Complainant. The Panel notes that Complainant’s Exhibit F contains two screenshots of the resolving website that appear to support Complainant’s claims. Based upon this evidence, the Panel finds that Respondent is not using the <thomsonreutes.com> domain name for 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 Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use 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).
Registration and Use in Bad Faith:
Complainant contends that Respondent’s disputed domain name is being used to disrupt the business of Complainant in bad faith. Complainant argues that the displayed competing hyperlinks on Respondent’s website divert Internet users to other websites and products, thereby disrupting Complainant’s business. The Panel notes that Respondent’s resolving website does feature hyperlinks under various headings that appear to compete with Complainant’s business. See Complainant’s Exhibit F. Therefore, the Panel finds that Respondent’s disputed domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant argues that Respondent is intentionally attempting to attract, for commercial gain, Internet users to the resolving website by creating confusion in the minds of Internet users as to Complainant’s affiliation with the disputed domain name. The Panel notes that the disputed domain name contains a misspelling of Complainant’s mark, thereby potentially creating confusion in the minds of Internet users about the domain name being affiliated with Complainant. Further, the Panel notes that prior panels have held that the display of competing hyperlinks, and the presumed profit from such use, is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds that Respondent registered and is using the <thomsonreutes.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that Respondent’s registration of a domain name consisting of an intentional misspelling of Complainant’s mark is evidence of bad faith. The Panel notes that prior panels have held that the use of typosquatting in registering a domain name is evidence, in and of itself, of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel finds accordingly in the present proceedings.
Lastly, Complainant argues that Respondent had knowledge of Complainant’s rights in the THOMPSON REUTERS mark, as Complainant’s mark is famous and well known. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); see also 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).
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 <thomsonreutes.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 29, 2012.
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