Thomson Reuters Global Resources v. NELSON Kurland
Claim Number: FA1304001494162
Complainant is Thomson Reuters Global Resources (“Complainant”), represented by Alexandre A. Montagu of MontaguLaw, P.C., New York, USA. Respondent is NELSON Kurland (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <isi-thonsomreuters.org>, registered with GoDaddy.com, LLC (R91-LROR).
The undersigned certifies that he has acted independently and impartially and to the best of his 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 April 10, 2013; the National Arbitration Forum received payment on April 10, 2013.
On April 11, 2013, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <isi-thonsomreuters.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) 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 April 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2013 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@isi-thonsomreuters.org. Also on April 16, 2013, 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 May 16, 2013, 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’s THOMSON REUTERS mark is currently among the most well-known and respected marks in the world. The THOMSON REUTERS brand has been listed consistently as one of the top fifty global brands, according to an annual survey of brand recognition. Complainant owns trademark registrations for its THOMSON REUTERS mark with various global trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,105,789 registered February 28, 2012).
Complainant acquired the ISIS mark in 1992 when it purchased The Institute for Scientific Information. The Institute for Scientific Information was founded in 1955, which today offers a selection of information solutions under the ISI trademark, to search, analyze, evaluate, and collaborate, in order to research, teach, publish papers, review manuscripts, make budgetary decisions, evaluate, and analyze research impact, among other purposes. Complainant’s ISI mark have become recognized and relied upon by the public over the last fifty years. Complainant actively uses its ISI mark, and owns numerous domain names incorporating the ISI mark, including <isithomson.com>, <isi-esource.com>, <isinet.com>, and <isiresearch.com>. Complainant owns the trademark registration for the ISI WEB OF KNOWLEDGE mark, registered with the USPTO (Reg. no. 2,743,528 registered July 29, 2003).
Respondent registered the <isi-thonsomreuters.org> domain name on June 1, 2012.
Respondent operates a website wherein Respondent attempts to pass itself off as Complainant in order to confusion website visitors by creating the appearance of Complainant’s website.
The <isi-thonsomreuters.org> domain name is confusingly similar to Complainant’s mark.
Respondent’s lack of rights or legitimate interests in the disputed domain name is shown by the fact the Respondent is not commonly known by the domain name and does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, and Respondent has no authorization from Complainant to use the disputed domain name.
Respondent registered and uses the <isi-thonsomreuters.org>
domain name in bad faith, as shown by Respondent’s efforts to pass itself off
as Complainant, and seek personal information from website visitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for THOMAS REUTERS and for ISI WEB OF KNOWLEDGE.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in THOMAS REUTERS and ISI WEB OF KNOWLEDGE.
The <isi-thonsomreuters.org> domain name was used by Respondent to impersonate Complainant, improperly seek personal information, and offer Respondent’s services online.
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 shows it has rights in the THOMSON REUTERS and ISI WEB OF KNOWLEDGE marks for the purposes of Policy ¶ 4(a)(i) through its USPTO trademark registrations as well as its registrations with foreign trademark authorities. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The at-issue domain name fully incorporates a portion of Complainant’s ISI WEB OF KNOWLEDGE mark, “ISI” along with an intentional misspelling of the THOMSON REUTERS mark. The domain name insignificantly fails to include the space within the THOMSON REUTERS mark, includes a hyphen between “isi” and “thonsonreuters,” and appends the generic top-level domain “.org.” Combining two marks in one domain name, and making changes such as removing spaces, adding a hyphen, misspelling a mark, and including a top level domain name do not differentiate the at-issue domain name from Complainant’s mark under Policy ¶ 4(a)(i) and therefore the domain name is confusingly similar to Complainant’s trademarks. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding that the <glencoemcgrawhill.com> domain name is confusingly similar to the complainant’s GLENCOE and MCGRAW-HILL marks under Policy ¶ 4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark 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 respect of the domain name.
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 an 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 and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information associated the <isi-thonsomreuters.org> domain name indicates that “NELSON Kurland” is the domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the <isi-thonsomreuters.org> domain name to pass itself off as Complainant by operating a website that appears similar to Complainant’s, including referring to itself as “ISI” on the “About Us” page, and displaying a summary of services that appear substantially similar to those Complainant offers under its marks. Furthermore, Respondent seeks to gain personal information by inviting website visitors to “Login,” by providing an e-mail and password. These circumstances constitute a “phishing” scheme. Using the domain name in this manner 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). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) ( finding that where a confusingly similar domain name to the complainant’s mark imitates the complainant’s website and is used to acquire personal information from the complainant’s potential customers, such use does not fall within the parameters of the Policy).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, bad faith circumstance other than those considered within Policy ¶ 4(b) are present and compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
First, Respondent’s bad faith registration and use is shown by its efforts to pass itself off as Complainant by copying text directly from Complainant’s website and including references to Complainant’s marks. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Next, Respondent’s <isi-thonsomreuters.org> website includes a form where visitors are asked to submit personal information. The information is later used for unauthorized purposes. As mentioned above with regard to rights and interests, Respondent’s use of the domain name in this manner amounts to “phishing.” Respondent’s foul scheme demonstrates bad faith registration and use of the <isi-thonsomreuters.org> domain name under Policy ¶4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (concluding that the respondent demonstrated bad faith registration because it attempted to acquire personal and financial information of website visitors by using a confusingly similar domain name to the complainant’s mark).
Finally, Respondent is engaged in typosquatting since the <isi-thonsomreuters.org> domain name consists of an intentional misspelling of Complainant’s THOMSON REUTERS mark. Respondent replaced the letter “m” in the mark with the letter “n” in forming the domain name. Altering a mark by a single letter within a domain name constitutes typosquatting, and Respondent’s intentional misspelling of Complainant’s mark is additional evidence of Respondent’s bad faith registration and use of the <isi-thonsomreuters.org> domain name under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <isi-thonsomreuters.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 16, 2013
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