Morningstar, Inc. v. Above.com Domain Privacy
Claim Number: FA1211001473431
Complainant is Morningstar, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <monrningstar.com> and <norningstar.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on November 29, 2012; the National Arbitration Forum received payment on November 29, 2012.
On November 29, 2012, ABOVE.COM PTY LTD. confirmed by e-mail message addressed to the National Arbitration Forum that the <monrningstar.com> and <norningstar.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. 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 November 30, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of December 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, adminis-trative, and billing contacts, and to both postmaster@monrningstar.com and to postmaster@norningstar.com. Also on November 30, 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 December 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 names be transferred from Respondent to Complainant.
A. Complainant
Since its founding in 1984, Complainant has continuously used the trademark MORNINGSTAR in connection with the marketing of financial investment pub-lications recorded in electronically readable formats, and of computer software for analyzing financial and investment information.
Complainant has rights in the MORNINGSTAR trademark by reason of its regis-tration of the mark with the United States Patent and Trademark Office (herein-after “USPTO”), as Registration No. 1,866,773, registered December 13, 1994.
Respondent registered the disputed <monrningstar.com> and <norningstar.com> domain names on or about August 8, 2008.
The domain names are confusingly similar to Complainant’s MORNINGSTAR trademark.
Respondent has not been commonly known by either of the domain names.
Complainant has not given Respondent permission to register domain names incorporating the MORNINGSTAR mark.
Respondent uses each of the disputed domain names to redirect unsuspecting Internet users to websites displaying links to the websites of Complainant’s business competitors.
Respondent presumably receives pay-per-click fee income from the operation of these websites.
Respondent has no rights to or legitimate interests in either of the contested do-main names.
Respondent’s employment of the domain names amounts to typo-squatting, which is done in order to take advantage of common typographical errors made by Internet users seeking Complainant’s MORNINGSTAR website.
Respondent’s use of the domain names in this manner disrupts Complainant’s business.
Respondent both registered and uses each of the contested domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are being used by Respond-ent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the MORNINGSTAR trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent operates or resides (here Australia). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that for purpos-es of the Policy, it is irrelevant whether a complainant has registered its trade-mark in the country of a respondent’s residence).
Turning then to the central question arising under Policy ¶ 4(a)(i), from a review of the record we conclude that both of Respondent’s contested domain names, <monrningstar.com> and <norningstar.com>, are confusingly similar to Com-plainant’s MORNINGSTAR trademark. Each of the domain names merely slightly misspells the MORNINGSTAR mark and adds the generic top-level do-main (“gTLD”) “.com.” These alterations of the mark, made in forming the do-main names, are insufficient to avoid a finding of confusing similarity under the standards of the Policy. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the re-sult reflects a very probable typographical error”). See also Belkin Compon-ents v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the domain name <belken.com> to be confusingly similar to a complainant's BELKIN mark be-cause the name merely replaced the letter “i” in that complainant's mark with the letter “e”). Further seeTrip 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).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <monrningstar.com> and <norningstar.com> domain names, and that Complainant has not given Re-spondent permission to use the MORNINGSTAR mark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain names only as “Above.com Domain Privacy,” which does not resemble the domain names. On this record, we conclude that Respondent has not been commonly known by either of the domain names so as to have demonstrated that it has rights to or legitimate interests in either of them within the contemplation of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had failed to show that it had rights to or legitimate interests in it under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain names to redirect unsuspecting Internet users to websites featuring links to the websites of enterprises compet-ing with the business of Complainant, and that Respondent likely receives pay-per-click fees from the operation of those websites. This employment of the do-main names is neither a bona fide offering of goods under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (finding that the operation of a pay-per-click website at a website resolving from a domain name confusingly similar to the mark of another was 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)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s registration and use of the disputed domain names as alleged in the Complaint disrupts Complainant’s business. This stands as evidence that Respondent has both registered and uses the domain names in bad faith as described in Policy ¶ 4(b)(iii). See, for example, Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using a website resolving from a domain name that was con-fusingly similar to the mark of a UDRP complainant to divert Internet users to the websites of that complainant’s competitors showed bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii)).
We are likewise convinced from the evidence that Respondent’s employment of domain names which are confusingly similar to Complainant’s MORNINGSTAR trademark to deceive Internet users as to the possibility of Complainant’s assoc-iation with the domain names and their resolving website, thus to profit from such deception, is evidence of bad faith registration and use of the domain names un-der Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring links to third-party websites that offered services similar to those of a UDRP complainant).
Finally, we take note that Respondent’s use of domain names that are plainly deliberately misspelled variations on Complainant’s MORNINGSTAR trademark is a species of “typo-squatting,” which is itself evidence of bad faith registration and use of the domain names. See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the domain name <dermatalogica.com> was a “simple misspelling” of a UDRP complainant’s DERMALOGICA mark, which indicated typo-squatting, and, therefore, bad faith registration and use of the domain name under Policy 4 ¶ (a)(iii)).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <monrningstar.com> and <norningstar.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 11, 2013
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