national arbitration forum

 

DECISION

 

American Funds Distributors, Inc. and The Capital Group Companies, Inc. v. Lee Kania

Claim Number: FA1305001501149

PARTIES

Complainant is American Funds Distributors, Inc. and The Capital Group Companies, Inc. (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA.  Respondent is Lee Kania (“Respondent”), Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americafunds.org>, registered with Wild West Domains, LLC.

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2013; the National Arbitration Forum received payment on May 22, 2013.

 

On May 23, 2013, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <americafunds.org> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name.  Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 May 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@americafunds.org.  Also on May 23, 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 June 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

          Complainant made the following contentions.

    1. Complainant, American Funds Distributors, Inc. and The Capital Group Companies, Inc., provides investment management services, particularly in relation to mutual funds in the United States.
    2. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN FUNDS mark (Reg. No. 2,627,929, registered October 1, 2002).
    3. The disputed domain name <americafunds.org> is identical or confusingly similar to Complainant’s mark, AMERICAN FUNDS, because it appropriates Complainants’ mark with the exception of the omission of the “n” in “AMERICAN.”
    4. Respondent has no rights or legitimate interests in the disputed domain name.

                                          i.    There is no evidence that Respondent has been commonly known by the domain name <americafunds.org>.

                                        ii.    Respondent’s use of the disputed domain name is to redirect Internet users to sponsored listings, or advertisements, featuring links to third-party websites, some of which directly compete with Complainant. Respondent’s blatant attempt to pass itself off as Complainant is not a legitimate use.

                                       iii.    Respondent has engaged in typosquatting, as Respondent’s domain name consists only of Complainant’s mark with a slight misspelling.

    1. Respondent has registered and is using the disputed domain name in bad faith.

                                          i.    Respondent is diverting Internet users seeking information about Complainant’s AMERICAN FUNDS mutual funds and related services.

                                        ii.    Respondent registered and is using the disputed domain name in bad faith by intentionally attempting to attract Internet users, presumably for commercial gain, by creating a likelihood of confusion with Complainant’s AMERICAN FUNDS marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s domain name and resolving website.

                                       iii.    Respondent’s blatant attempt to pass itself off as an official website of Complainant constitutes bad faith.

                                       iv.    Respondent has engaged in typosquatting.

                                        v.    Respondent acted in bad faith when it registered the domain name <americafunds.org> because it had constructive, if not actual, knowledge of Complainants’ rights in the AMERICAN FUNDS mark when it registered the disputed domain name on February 20, 2011.

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

PRELIMINARY ISSUE—MULTIPLE COMPLAINANTS

 

In the instant proceeding, there are two Complainants. The lead Complainant, American Fund Distributors, Inc., is an indirect wholly-owned subsidiary of the second-named Complainant, The Capital Group Companies, Inc. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”  

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”

 

In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them both as a single entity in this proceeding.  Accordingly, throughout this decision, the Complainants will be collectively referred to as “Complainant.” 

 

FINDINGS

 

1.    Complainant, American Funds Distributors, Inc. and The Capital Group Companies, Inc., provides investment management services, particularly in relation to mutual funds in the United States.

2.    Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN FUNDS mark (Reg. No. 2,627,929, registered October 1, 2002).

 

3.    Respondent registered the disputed domain name on February 20, 2011.

Respondent uses the disputed domain name to redirect Internet users to sponsored listings, or advertisements, featuring links to third-party websites, some of which directly compete with Complainant.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends that it provides investment management services, particularly in relation to mutual funds in the United States. Complainant asserts that it is the owner of a trademark registration with the USPTO for the AMERICAN FUNDS mark (Reg. No. 2,627,929, registered October 1, 2002). See Exhibit C. The Panel notes that Respondent appears to reside within the United States. In Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), the panel concluded that Complainant had established rights in the MICROSOFT mark through registration of the mark with the USPTO. Accordingly, the Panel finds that Complainant’s registration of the AMERICAN FUNDS mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).

 

The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AMERICAN FUNDS mark referred to above. Complainant asserts that the disputed domain name <americafunds.org> is identical or confusingly similar to Complainant’s mark, AMERICAN FUNDS, because it appropriates Complainant’s mark with the exception of the omission of the “n” in “AMERICAN.” The Panel finds that Respondent’s removal of a letter from Complainant’s AMERICAN FUNDS mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel notes that Respondent deletes the space in Complainant’s AMERICAN FUNDS mark and adds the generic top-level domain (“gTLD”) “.org.” The Panel holds that Respondent’s omission of spaces and addition of a gTLD to a mark is inconsequential to a Policy ¶ 4(a)(i) determination. 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.”). Thus, the Panel finds that Respondent’s <americafunds.org> domain name is confusingly similar to Complainant’s AMERICAN FUNDS mark under Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well-established that 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 shifts to Respondent to show it does have 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s AMERICAN FUNDS 

 

trademark and used it in its domain name, thus giving the false impression

 

that the domain name is an official domain name of Complainant and that it

 

will lead to an official website of Complainant; 

 

(b)  Respondent has then used the domain name to redirect Internet users to sponsored listings, or advertisements, featuring links to third-party websites, some of which directly compete with Complainant and to pass itself off as

Complainant;

 

(c) Respondent has engaged in these activities without the consent or approval

 

     of Complainant;

 

(d) Complainant contends that there is no evidence that Respondent has been commonly known by the domain name <americafunds.org>. The Panel notes that the WHOIS record lists the registrant of the domain name as “Lee Kania.” See Exhibit D. Complainant asserts that Respondent is in no way connected with Complainant and has no authority, license, permission, or other arrangement from Complainant to use the AMERICAN FUNDS mark to identify Respondent’s domain name, website, or services. As the Panel finds that nothing in the record indicates that Respondent is known by the domain name, including the WHOIS information, and that Complainant has not authorized or licensed Respondent to use its AMERICAN FUNDS mark in a domain name, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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);

 

(e) Complainant argues that Respondent uses the disputed domain name to redirect Internet users to sponsored listings, or advertisements, featuring links to third-party websites, some of which directly compete with Complainant. The Panel notes that Respondent’s website located at the <americafunds.org> domain name provides “AdChoices” links titled “Bond Funds,” “Growth Fund,” “Mutual Fund,” and “Forex Funds,” which may be considered to be in direct competition with Complainant’s business. See Exhibit E. The Panel determines that Respondent’s use of the disputed domain name to provide competing hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”);

 

(f) Complainant also alleges that Respondent’s blatant attempt to pass itself off as Complainant is not a legitimate use. The Panel notes that Respondent’s domain name resolves to a webpage with the banner “America Funds” along the top of the webpage. Id. The Panel also notes that Respondent’s webpage features a “What is American Funds?” webpage on its disputed domain name, where it says “American Funds is a division of the Capital Group Companies…” Id. As the Panel finds that Respondent is attempting to pass itself off as Complainant, the Panel finds that Respondent is not using the <americafunds.org> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website);

 

(g) Complainant contends that Respondent has engaged in typosquatting, as Respondent’s domain name consists only of Complainant’s mark with a slight misspelling. Complainant claims that Respondent appropriates Complainants’ mark with the exception of the omission of the “n” in “AMERICAN.” Complainant argues that this intentional misspelling seeks to capitalize on typographical errors made by Internet users attempting to type in a URL address. As the Panel finds that Respondent has typosquatted Complainant’s mark in its disputed domain name, the Panel holds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent is diverting Internet users seeking information about Complainants’ AMERICAN FUNDS mutual funds and related services. The Panel notes that Respondent’s <americafunds.org> domain name resolves to a website providing hyperlinks that directly compete with Complainant’s mutual fund business. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel found that “[r]espondent’s disputed domain name resolved to a parking website which provided click through revenue to [r]espondent and which displayed links to travel-related products and services that directly competed with [c]omplainant’s business. Accordingly, [r]espondent’s competing use of the disputed domain name was additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” Therefore, the Panel finds that Respondent’s use of the <americafunds.org> domain name disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii).

 

Secondly, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith by intentionally attempting to attract Internet users, presumably for commercial gain, by creating a likelihood of confusion with Complainants’ AMERICAN FUNDS marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website housed at the disputed domain name. The Panel notes that Respondent is using the disputed domain name to provide a competing hyperlink directory, providing links such as “Bond Funds,” “Growth Fund,” “Mutual Fund,” and Forex Funds.” See Exhibit E. As the Panel finds that Respondent’s use of the <americafunds.org> domain name is to provide competing hyperlinks with the intention of misleading Internet users for commercial gain, the Panel holds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Thirdly, Complainant claims that Respondent’s blatant attempt to pass itself off as an official website of Complainant constitutes bad faith. The Panel notes that Respondent’s disputed domain name links to a website stating “America Funds” along the top of the webpage. See Exhibit E. The Panel also notes that Respondent’s webpage includes a “What is American Funds?” page on its disputed domain name, where it says “American Funds is a division of the Capital Group Companies…” and “The company comprises more than thirty mutual funds…” Id. The Panel finds that Respondent is purporting to be Complainant through its use of the <americafunds.org> domain name, demonstrating further bad faith under Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).

 

Fourthly, Complainant contends that Respondent has engaged in typosquatting. The Panel notes that Respondent’s <americafunds.org> domain name uses Complainant’s AMERICAN FUND in its entirety and merely deletes one letter. As the Panel finds that Respondent is merely capitalizing on a typographical error that some Internet users seeking Complainant’s legitimate website are likely to make, the Panel holds that Respondent is typosquatting, showing bad faith use and registration 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.).

 

Fifthly, Complainant claims that Respondent acted in bad faith when it registered the domain name <americafunds.org> because it had constructive, if not actual, knowledge of Complainants’ rights in the AMERICAN FUNDS mark when it registered the disputed domain name on February 20, 2011. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s attempt to pass itself off as Complainant, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).

 

Sixthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s AMERICAN FUNDS mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <americafunds.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  June 22, 2013

 

 

 

 

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