national arbitration forum

 

DECISION

 

American Funds Distributors, Inc. and The Capital Group Companies, Inc. v. Daina Trading Company Limited

Claim Number: FA1306001503289

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 Daina Trading Company Limited (Respondent), represented by Anatoly Ostrovsky, Latvia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americafunds.com>, registered with DOMAIN.COM, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Mr. Maninder Singh as Panelist.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum electronically on June 4, 2013; the National Arbitration Forum received payment on June 5, 2013.

 

On June 5, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <americafunds.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name.  DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNs Uniform Domain Name Dispute Resolution Policy (the Policy).

 

On June 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents registration as technical, administrative, and billing contacts, and to postmaster@americafunds.com.  Also on June 7, 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 Respondents registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on June 26, 2013.

 

Timely Additional Submissions were received and determined to be complete on July 1, 2013.

 

On July 4, 2013, pursuant to Complainants' request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh 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.

 

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainants.

 

PARTIES' CONTENTIONS

A. Complainant

Contentions regarding Identical and/or Confusingly Similar

 

·        Complainants, American Funds Distributors, Inc. and The Capital Group Companies, Inc., provide investment management services, particularly in relation to mutual funds in the United States.

·        Complainants provide investment management services, particularly in relation to mutual funds in the United States.  The Capital Group Companies, Inc. has been managing investors' assets since 1931, and is one of the world's most successful and experienced investment management organizations.  Complainants are, and have been, using the name and mark AMERICAN FUNDS in relation to their services since at least February 1970.  The Lead Complainant's AMERICAN FUNDS family of mutual funds has more than $900 billion in investments and over 50 million shareholder accounts making it one of the nation's largest mutual fund families.  True and correct copies of representative samples of informational brochures and marketing material describing Complainants' AMERICAN FUNDS services are attached as Exhibit B hereto.

·        Complainants are owners 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) and for the AMERICAN FUNDSLINE mark (Reg. No. 1,582,924, registered February 13, 1990) for financial services. The Complainant no.1 also has also registered various other marks containing AMERICAN FUNDS, which are still in operation and use. A list of such marks has been given in the Complaint.

·        Complainants have been managing investors assets since 1931 and are one of the worlds most successful and experienced investment management organizations.

·        The Second Named Complainant, The Capital Group Companies, Inc.,
is the registrant of various domain names incorporating AMERICAN FUNDS,
including <americanfunds.com> (from 1995), <americanfunds.org> (dating from
1998), <americanfunds.net> (from 1998), and <americanfunds.info> (from 2001).  (WHOIS records for these four domain names are at Exhibit D). Complainants operate a website at <americanfunds.com> through which Internet users can obtain information about Complainants' AMERICAN FUNDS mutual funds and related services.

·        Complainants contend that through its extensive use and advertising of their mark AMERICAN FUNDS for mutual funds and related services, AMERICAN FUNDS marks have developed considerable goodwill and a strong reputation with consumers as being associated with a highly respected and successful investment company. Their marks AMERICAN FUNDS are well-known and famous, particularly within the United States.

·        Complainants contend that it is their belief that the Respondent, who is located in Seychelles in Africa, is in the business of warehousing domain names incorporating trademarks owned by others, and appears to be a known cybersquatter. A Reverse WHOIS search (Exhibit-E) on the DomainTools website shows that Respondent is the owner of some 3,000 domain names.

·        The disputed domain name, <americafunds.com>, is identical or confusingly similar to Complainants mark, AMERICAN FUNDS, and to the website address of the primary website used by Complainants for their AMERICAN FUNDS mutual funds and related services at  Complainants <americanfunds.com> domain name, because it appropriates Complainants mark with the omission of the n in the word AMERICAN.

·        Complainants, in this regard, have relied upon the decision of this Forum in - Diners Club Intl. Ltd. v. Daina Trading Co. Ltd., Nat. Arb. Forum Claim No. FA 1012001362620 (Nat. Arb. Forum Jan. 7, 2011) holding transferring the disputed domain name, dinerclub.corn, to the complainant, the owner of the registered trademark DINERS CLUB, because, in part, respondent's use of the domain name to resolve to a website with third-party links to complainant's competitors constituted bad faith use and registration.

·        It has been contended by Complainants that they have been using the name and mark AMERICAN FUNDS in relation to their services since at least February 1970.  Because Complainants AMERICAN FUNDS mark was well known at that time Respondent registered the Disputed Domain Name, Complainants assert that Respondent knowingly incorporated Complainants' well-known mark in the Disputed Domain Name, constituting registration in bad faith.

·        Another plea has been raised by Complainants regarding Respondent' s previous history of bad faith use and registration in the prior UDRP proceeding suggesting that Respondent has engaged in bad faith use and registration in this case as well. 

 

Contentions regarding Rights or Legitimate Interests

 

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

·        Respondents use of the disputed domain name to redirect Internet users to sponsored listings, or advertisements, featuring links to third-party websites, is not a bona fide offering of goods and services and does not constitute a legitimate noncommercial or fair use. Complainants rely upon the following decisions in this regard : -

(i)   Meadowbrook, LLC v. Venkateshawara Distrib. Privae Ltd., Nat. Arb. Forum Claim Number FAI 112001419361 (Nat.  Arb.  Forum Jan.  24, 2012) - holding that  using a  domain name to display hyperlinks to the complainant's competitors and unrelated business is not a bona fide  offering  of goods  or  services  or  a  legitimate  noncommercial  or  fair  use); 

(ii)  State Farm Mut. Auto. Ins. Co. v. LaFaive, Nat. Arb. Forum Claim Number FA95407 (Nat. Arb. Forum Sept. 27, 2000) holding that "The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.";

(iii)   America Online, Inc. v. Tenceqt Commc'o., Nat. Arb. Forum Claim Number FA93668 (Nat. Arb. Forum Mar. 17, 2000) - holding that use of the complainant's well known mark "as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate".

(iv)  Alaska Air Group, Inc. v. Private Whois Service, Nat. Arb. Forum Claim
Number FA1303001488941 (Nat. Arb. Forum Apr. 10 2013) - holding that use by respondent of a disputed domain name to promote goods and services in competition with those of the complainant is not a bona fide offering of goods and services, nor is it a legitimate noncommercial or fair use, "because it cannot give rise to a right or any legitimacy to pretend that a domain name is an official domain name of a trademark owner when it is not".

·        The act of typosquatting is an evidence that Respondent has no rights or legitimate interest in the disputed domain name.

 

Contentions regarding Registration and Use in Bad Faith

 

·        Respondents previous history of bad faith use and registration in the prior UDRP proceeding suggests that Respondent has engaged in bad faith use and registration in this case as well. In this regard, Complainants rely upon the following decisions of this Forum : - 

(i)   Time Warner Cable Inc. v. Restl, Nat. Arb. Forum Claim No. FA 1302001484030 (Nat. Arb. Forum March 25, 2013) holding that where the respondent is in the business of warehousing domain names and has been the loser of other UDRP proceedings, "such previous history of bad faith use and registration is evidence of respondent's Policy 4(b)(ii) bad faith in this proceeding";

(ii)  Liberty Mut. Ins. Co. v. Bin. Glu, Nat. Arb. Forum Claim No.  FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) - holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations.

·        Respondent is diverting Internet users seeking information about Complainants mutual funds and related services, and Internet users seeking to access Complainants long-time site at <americanfunds.com>, to a commercial website through the use of a domain name that is confusingly similar to Complainants AMERICAN FUNDS mark. Such conduct disrupts operation of a portion of Complainants' activities. Such disruption and diversion evidences registration and use in bad faith pursuant to ICANN Policy 4(b)(iv). In this regard, the Complainants rely upon the following decisions of this Forum : -

(i)   Bausch & Lomb lnc. v. Tsu, Nat. Arb. Forum Claim Number FA247973 (Nat. Arb. Forum May 5, 2004) - hold that using a domain name that is confusingly similar to complainant's mark to divert Internet users to respondent's commercial website constitutes diversion, motivated by commercial gain, and is evidence of bad faith registration and use pursuant to Policy 4(b)(iv). 

(ii)  Wal-Mart Stores, Inc. v. Private Whois mywalmartcom.corn, Nat. Alb. Forum Claim No. FA1108001402076 (Nat. Arb. Forum Sept. 13, 2011) - holding that the respondent's use of the domain name mywalmartcom.corn to drive Internet users to a site containing third-party links was evidence of bad faith because the respondent presumably received click-through fees for diverting Internet users to the unrelated third-party websites;

(iii)   Allianz of Am. Corp. v. Bond, Nat. Arb. Forum Claim Number FA680624 (Nat. Arb. Forum June 2, 2006) - holding bad faith registration and use under Policy 4(b)(iv) where a respondent was diverting Internet users searching for a complainant to its own website and likely profiting from click-through fees.

·        Respondent has 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 with Complainants.

·        Complainants contend that previous panels have found bad faith when a respondent knowingly takes advantage of a well-known mark to attract users to respondent's own website. In this regard it has placed reliance on a decision of this Forum in AOL LLC v. iTech Ent. LLC, Nat. Arb. Forum Claim No. FA 726227 - (Nat. Arb. Forum July 21, 2006) - holding that the respondent took advantage of the confusing similarity between the domain names theotheraol.com and theotheraol.net and the complainants AOL mark, which indicates bad faith registration and use pursuant to Policy 4(b)(iv).

·        Respondent has engaged in typosquatting. To substantiate typosquatting by Respondent, Complainants have relied upon following decisions of this Forum : -

(i)   Zone Labs, Inc. v. Zuccarini, Nat. Arb. Forum Claim Number FA 190613 (Nat. Arb. Forum Oct. 15, 2003) holding that "Respondent's registration and use of [a domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting." In typosquatting situations, such as this one, the intentional misspelling does not negate or otherwise dispel the confusing similarity between the domain name and the Complainant's trademark.

(ii)  Alaska Air Group Inc, v. Private Whois Servi, Nat. Arb. Forum Claim Number FA1303001488941 (Nat. Arb. Forum Apr. 10, 2013) holding that in a case involving complainant's trademark ALASKA AIR, finding that the domain names akaskaair.com and alskaair.com are typosquatting and do not negate the confusing similarity with the trademark that is clearly present."

(iii)   Zone Labs Inc. v. Zuccarini, Nat. Arb. Forum Claim Number FA 190613 (Nat. Arb. Forum Oct. 15, 2003) - holding that the domain name zonelarm.com is confusingly similar to complainant' s ZONEALARM mark;

(iv)  Victoria's Secret v. Zuccarini, Claim Number FA 95762 (Nat. Arb. Forum Nov. 18, 2000) - holding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless fenders the domain name confusingly similar to the complainant's marks.

·        As the Complainants AMERICAN FUNDS mark was well-known at that time Respondent registered the disputed domain name, Complainants assert that Respondent knowingly incorporated Complainants well-known mark in the disputed domain name. In this regard, Complainants rely upon the following decisions of this Forum : -

(i)   Trader Jos Co. v. Ausmus, Nat. Arb. Forum Claim No.FA1212001475320 (Nat. Arb. Forum Jan. 18, 2013) - holding that "the mere fact of knowingly incorporating a third party's well-known mark in a domain name constitutes registration in bad faith";

(ii)  Immiation Equality v. Brent, Nat. Arb. Forum Claim No. FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) holding "That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy 4(a)(iii)."

·        The Complainants contend that the act of typosquatting is evidence that Respondent has no rights or legitimate interest in the disputed domain name. Complainants rely upon the following decisions of this Forum in

(i)   TD Commodities LC v. Party Night, Inc. Nat. Arb. Forum Claim Number FA 165155 (Nat. Arb. Forum Aug. 14, 2003) - holding that the domain names Itdcommadities.com, Itdcommmodities.com, and Itdcommodaties.com were intentional misspellings of complainant's LTD COMMODITIES mark and such " typosquatting" is evidence that the respondent lacks rights or legitimate interests in the disputed domain name.  Respondent has affirmatively chosen to use Complainants' AMERICAN FUNDS mark in the Disputed Domain Name, with only a minor spelling alteration, giving the false impression by the construction of domain name the Disputed Domain Name will lead Internet users to the official website of Complainants' AMERICAN FUNDS mutual funds and related services.  Such conduct does not give rise to a right or legitimate interest in the domain name.

(ii)  Alaska Airou Inc. V. Private Whois Service, Nat. Arb. Forum Claims
Number FA1303001488941 (Nat. Arb. Forum Apr. 10 2013).

 

B. Respondent

Submissions regarding Identical and/or Confusingly Similar

 

·        Complainants lack unique and exclusive trademark rights to AMERICAN FUNDS as it consists of a geographic and a generic term. It is unknown out of United States and to an ordinary Internet user it would appear to describe what it means and he/she would unlikely associate its use with Complainants' mark. Complainants' rights in AMERICAN FUNDS' trademark require "a sufficiently strong identification of mark such that there would be recognition among Internet users that identifies goods or services unique to Complainant. The Respondent has relied upon the following decisions of this Forum in this regard : -

(i)   Vietnam Venture Group, Inc. v. Cosmos Consulting_GmbH, FA 102610 (Nat. Arb. Forum, Feb. 6, 2002). Given the generic nature of the terms, the Complainants do not have an exclusive monopoly of the terms on the Internet, which grants Respondent rights or legitimate interests in the disputed domain name pursuant to Policy.

(ii)  Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat Arb. Forum January 22, 2010).

(iii)   B2B Works, Inc. v. Venture Direct Worldwide, Inc., FA97119 (Nat Arb. Forum June 5, 2001) - holding that Complainant did not have exclusive rights to use of the terms B2B' and Works' in association with other words, even with a registered trademark for B2Bworks'). Furthermore, it is not clear that Internet users (other than clients of Complainant) interpret American funds' as referring to Complainant.

(iv)  ISL Marketing AG, and the Fed 'n Int 'I de Football Assn. v. Chung, Case No. D2000-0034 (WIPO Apr. 3, 2000) - holding that although one may argue that WC' is an abbreviation of WORLD CUP, it is not likely the meaning most people would give to those letters). The common sense interpretation of American funds' is a reference to financial assets, whether private equity, a stock or a fund, located in and/or otherwise tied to America.

 

Submissions regarding Rights or Legitimate Interests

·        Respondent has legitimate interests in respect of the domain name because AMERICAN FUNDS is a generic term that can be used to describe a vast number of financial assets, whether private equity, a stock or fund, located in and/or otherwise tied to America. In a similar case, an earlier Panel has established that "Northwest Territories' are a vast area of wilderness where outdoor activities are a predominant feature, which warrants the use of link relating to this element on Respondent's website." In this regard, Respondent once again places reliance upon the decision in a decision of this Forum in - Sears Brands, LLC v. DomainAsset Holdings (supra).

 

Submissions regarding Registration and Use in Bad Faith

·        There is no evidence that Respondent registered the domain name primarily for the purpose of disrupting a competitors business.

·        There is no evidence that Respondent is using its domain name to intentionally attempt to attract Internet users to its website by creating a likelihood of confusion with Complainants mark.

·        The record presented does not support the presumption that Respondent had actual or constructive knowledge of Complainants unique and exclusive trademark rights in AMERICAN FUNDS at the time of domain name registration.

·        In 1998, AMERICA FUNDS was a combination of a geographic term and a generic term, and its registration as a domain name was fair and legitimate.

·        The registration of the contested domain name predates registration of Complainants AMERICAN FUNDS trademark by 4 years. The Respondent in this regard relies upon the following decisions : -

(i)   Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) - holding that "[W]e are of the unanimous view that the trademark must predate the domain name");

(ii)  Open Sys. Computing AS v. degli Alessandri, D200O-1393 (WIPO Dec. II, 2000) - holding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant). Nor is it established that Complainants were using American funds' trademark in 1998.

·        The Respondent contends that the actual trademark used by Complainants' was AMERICAN FUNDS GROUP' and AMERICAN FUNDS' was used by Complainants only as a domain name, which presumably attracted customers seeking investment in AMERICAN FUNDS. This fact is betrayed by the keywords meta-tag of their website on February 11, 1998, which lists the following keywords for search engines to index their site : "American Funds, Mutual Funds, Growth Funds, Growth and Income Funds, Capital Group Companies, American Funds Group, Capital Research and Management Company, American Funds Distributors, Inc., American Legacy, financial advisers, brokers, shareholders". The information that the search engines displayed at the time can be found in the description meta-tag: The American Funds Group is a family of 28 mutual funds with a wide range of investment objectives and a unique approach to investment management. Over the last 15 years, Complainants have dropped the use of the term group' and switched to using AMERICAN FUNDS' directly. Nowadays, Complainants use the following description in their meta-tag to refer to themselves. Since 1931, American Funds has helped investors pursue long-term investment success with a diverse family of mutual funds". The switch in Complainants' use of the mark occurred after the registration of the contested domain name, which means that Complainants would not make the same claims in 1998 that they are making today.

·        Respondent relies upon the decision of this Forum in - Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) - holding that Respondent does have a legitimate interest in the domain name where Complainant applied for registration of the mark after Respondent registered the domain name and Complainant has not proven any earlier use of the mark.

·        Respondent submits that it has not misled any of Complainants' customers and did not tarnish Complainants' trademark. There is no evidence that Respondent has registered the contested domain name for the purpose of resale to Complainants or to a competitor of Complainants throughout the 15 years that domain name has remained in Respondent's possession. Similarly, there is no evidence that Respondent registered the domain name primarily for the purpose of disrupting a competitor's business. Respondent submits that Complainants and Respondent are not competitors.

·        There is no evidence that Respondent is using its domain name to intentionally attempt to attract Internet users to its web site by creating a likelihood of confusion with Complainants' mark. Respondent is using the domain name to attract users that may be interested in financial assets, whether private equity, a stock or a fund, located in and/or otherwise tied to America, and provides a portal via search engines for advertisement by parties that want to capitalize on the brand that is America', which is entirely consistent with the nature of the generic terms America' and funds'.

·        See Shirmax Retail Ltd. v. CES Marketing, Inc., AF-O1O4 (eResolution Mar. 20, 2000) - stating that "given the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark".

 

Submissions regarding Reverse Domain Name Hijacking

·        Complaint was brought in bad faith in order to wrongly acquire the contested domain name and thus constitutes reverse domain name hijacking.

·        Complainants clearly know that when Respondent registered the contested domain on June 28, 1998, Complainants did not have exclusive rights in the AMERICAN FUNDS trademark, nor was the AMERICAN FUNDS trademark used by Complainants in commerce at the time of the contested domain name registration, nor has the AMERICAN FUNDS trademark been, outside of the client base of Complainants or outside of America and is primarily associated by Internet users with Complainants.

·        Given the fact that multiple entities use variations of AMERICAN FUNDS to sell financial products, Complainants unique and exclusive claims about AMERICAN FUNDS trademark among Internet users solely on the ground that the size of their client base betray both malicious intent and recklessness or knowing disregard of the likelihood that Respondent possessed legitimate interests in the contested domain name.

 

C. Additional Submissions

Complainant :

Additional submissions regarding Identical and/or Confusingly Similar

 

·        Respondent does not dispute that the Disputed Domain Name is confusingly similar to AMERICAN FUNDS.  Rather, Respondent claims that Complainants "lack unique and exclusive trademark rights in AMERICAN FUNDS, as it consists of a geographic and generic term."

·        Complainants contend that it has held common law rights in the mark AMERICAN FUNDS since as early as February 1970. Complainants' continuous use of AMERICAN FUNDS in connection with their services since 1970 has resulted in Complainants becoming one of the world's largest, most well-known and successful investment management organizations. Complainants have also held various domain names incorporating its mark AMERICAN FUNDS, including <americanfunds.com> (from 1995) and prior to Respondent's registration of the Disputed Domain Name).  In addition, the Complainants are the owners of a federal registration for AMERICAN FUNDS, as well as a dozen other federal registrations for marks incorporating AMERICAN FUNDS. It is well established that "trademark registration with a federal trademark authority is sufficient to establish rights in a mark.

·        See Haas Automation Inc.machinetools.com, FAO 106001393128 (Nat. Arb. Forum July 15, 2011. Moreover, Respondent's claim that AMERICAN FUNDS is not worthy of protection because it is merely descriptive is also belied by the fact that AMERICAN FUNDS has achieved acquired distinctiveness based on Complainants' long and continuous use of AMERICAN FUNDS for approximately 43 years. Notably, this claim of acquired distinctiveness has been repeatedly accepted by the USPTO under Section 2(f) of the Lanham Act for AMERICAN FUNDS and its family of marks. 

·        Complainants contend that Respondent has attempted to challenge the incontestable registration of AMERICAN FUNDS mark of the Complainants by claiming that AMERICAN FUNDS is not sufficiently strong to allow exclusive use of this mark on the Internet. Further, the case law brought out by Respondent to support its contention are inapposite and easily distinguishable on the facts. Complainants place reliance on the following decisions : -

(i)   Vietnam Venture Group Inc., v. Cosmos Consulting GmbH, FA 102610 (Nat. Arb. Forum, Feb. 6, 2002), - holding that unlike here, the complainant did not hold a trademark registration and respondent began using the same mark prior to complainant in connection with different services than those offered by complainant. 

(ii)  B2BWorks Inc. v. Veure Direct Worldwide Inc., FA 97119 (Nat. Arb. Forum June 5, 2001), unlike here, there was no evidence that complainant achieved acquired distinctiveness in its mark. 

(iii) ISL Marken   AG and the Fedn Int'l de Football Assn. v. Chung, Case No. D2000-0034 (WIPO Apr. 3, 2000), holding that - Respondent cites to the panel's refusal to transfer domain names incorporating WC based on its finding that WC was not a known abbreviation for complainant's WORLD CUP mark. However, that very same panel also ordered transfer of all domain names that incorporated WORLD CUP based on, among other things, respondent's bad faith warehousing of these domains. Accordingly, Complainants have established sufficient common law and federal rights in AMERICAN FUNDS, and Respondent's claim that Complainants have no rights in AMERICAN FUNDS - is unfounded.

 

Complainants additional submissions regarding Rights or Legitimate Interests

 

·        Respondent does not dispute that

-     it is in the business of warehousing domain names incorporating trademarks owned by others,

-     that it is the owner of 3,000 domain names, or

-     that he lost in at least one UDRP decision relating to a domain name consisting of a misspelling of a third-party trademark.

Respondent also does not dispute that it is using the Disputed Domain Name to divert Internet users seeking information about Complainants' AMERICAN FUNDS mutual funds and related services to its website containing third-party advertisements and sponsored listings to generate revenue through click-through fees.  Indeed, Respondent's website prominently displays - without authorization - the AMERICAN FUNDS mark. If the AMERICAN FUNDS mark was not well known, then why would Respondent prominently display AMERICAN FUNDS on a website using "americafunds.com", the purpose of which is to generate money through click-through fees from visitors to the site.

·        See Disnters., Inc. v. Ramble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bonaflde offering of goods or services or a legitimate noncommercial or fair use under Policy 4(c)(i) or (iii).

·        Respondent has not provided any legitimate reason for registering a domain name that omits the "N" from the AMERICAN FUNDS mark. It is well established that Respondent's act of typosquatting constitutes evidence that Respondent has no rights or legitimate interest in the Disputed Domain Name. See LTD Commodities LLC v. Party Night Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003).

·        Similarly, Respondent does not make any claim that it has been commonly known by the domain name <americafunds.com> Respondent has also taken down its website since the filing of the complaint. Complainants contend that the Respondent has failed to provide any evidence of having rights or legitimate interests in the Disputed Domain Name. Respondents claim of holding legitimate rights in the Disputed Domain Name is only based upon its contention that mark AMERICAN FUNDS is a generic term.

 

Complainants additional submissions regarding Bad Faith Registration & Use

 

·        Respondent contends that Complainants cannot establish bad faith use and registration of the Disputed Domain Name because there is no evidence that Respondent had actual or constructive knowledge of Complainants' AMERICAN FUNDS mark when the Disputed Domain Name was registered by the Respondent on June 28, 1998. Complainants reiterate their submission that given their extensive and long-standing use of their well-known AMERICAN FUNDS family of mark, there could be little dispute that Respondent was aware of AMERICAN FUNDS prior to registration of the disputed domain name.  In this regard, it has placed reliance on the following decisions -

(i)   Netflix, Inc. v. Miroslaw Cyganek, FA 1305001499631 (Nat. Arb. Forum June 12, 2013) holding that "complainants extensive use of the NETFLIX mark and the general fame and notoriety associated with the mark lead to the conclusion that respondent had actual knowledge of the mark prior to registering the disputed domain name").  In addition, Respondent's failure to make any legitimate use of this domain name since it was registered along with its failure to identify any good faith intent to use the domain name evidences bad faith use and registration of the Disputed Domain Name. 

(ii)  Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (respondent's failure to identify good faith intent to use the domain name combined with its passive holding of the domain name demonstrates bad faith use and registration of the domain name).  Indeed, Respondent is offering the Disputed Domain Name for sale on its website.

·        Respondent also contends that because registration of the Disputed Domain Name occurred four years prior to Complainants' registration of AMERICAN FUNDS, there can be no bad faith. Complainants claim that this argument of Respondent is misleading. 

·        Complainants contend that they have held common law rights in AMERICAN FUNDS since 1970, well prior to Respondent's registration of the disputed domain name. Moreover, the USPTO records reveal that on April 1, 2012, the application for AMERICAN FUNDS was approved for publication with a Section 2(f) statement of acquired distinctiveness. To establish acquired distinctiveness, the USPTO accepted evidence submitted by Complainant no.1 showing substantially exclusive and continuous use of AMERICAN FUNDS on or in connection with Complainants' services since at least as early as April 1, 1997 - five years prior to the claim of distinctiveness. Respondent did not register his domain name until more than a year later on June 28, 1998.

·        Complainants contend that Respondent also seeks to prove that a screenshot taken from Complainants' website from the web archive from February 11, 1998 which reveals that the Complainants were not using the AMERICAN FUNDS mark. This archived screenshot contains several broken links and does not display any of the images or other content displayed on the page in February 1998, thereby rendering it unreliable and incomplete depiction of what the website displayed at that time. Regardless of the fact whether or not Complainants were using the mark on its website - does not demonstrate that it was not using AMERICAN FUNDS, and does not overcome the fact that the USPTO accepted evidence of substantially exclusive and continuous use of AMERICAN FUNDS since at least as early as April 1, 1997.

 

Complainants Additional submissions regarding Reverse Domain Name Hijacking

 

·        Complainants contend that the Respondents allegation that Complainant has engaged in reverse domain name hijacking ("RDNH") by seeking to enforce its well-known AMERICAN FUNDS mark, is misleading. Complainants contend that Respondent does not offer any legitimate basis for the Panel to find this rare remedy. Under Paragraph 1 of the Rules, a finding of RDNH is appropriate only where the Complainant is found to use "the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." In this regard, Complainants have placed reliance on -

(i)   Arrigo Enters v. PortMedia, FA 1493536 (Nat. Arb. Forum May 21, 2013) holding that there must be a showing that the complainant has engaged in bad faith for RDNH to exist);

(ii)  Plan.Net v. Yikilmaz, 02006-0082 (WIPO Mar. 24, 2006) holding that a reverse domain hijacking finding is intended only for the worst cases where there is bad faith such as malice or dishonesty or some other abuse of process.;

(iii)   True Value Company v. Andrew Bucklin d/b/a True Value Web, FA 1305001497691 (Nat. Arb. Forum June 13, 2013) holding that no RDNH where complainant has "put forth plausible arguments as to whether respondent has rights or legitimate interests in the disputed domain name";

(iv)  McLaren Health Care Corporation v. Vertical Axis Inc., FA1212001475557 (Nat. Arb. Forum Apr. 23, 2013) holding that no RDNH where complainant held both federal and common law rights in its mark and the mark and the disputed domain name differ by only one letter, but there was an insufficient finding of bad faith by the respondent;

(v)   Gallup PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) holding that no RDNH where a complainant demonstrates identical or confusingly similarity.

·        Complainants hold common law rights in the AMERICAN FUNDS mark dating back to 1970. Complainant No.1 is the owner of more than two dozen federal registrations for the AMERICAN FUNDS family of marks. The disputed domain name differs from AMERICAN FUNDS by only one letter, and is confusingly similar to AMERICAN FUNDS. Respondent is not using the disputed domain name to make a bona fide offering of goods or services. Respondent has also engaged in bad faith by engaging in typosquatting and intentionally attempting to attract internet users by causing a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent with Complainants. Respondent also has a previous history of bad faith use and registration in a prior UDRP proceeding. Accordingly, Respondent has not produced any evidence to prove that Complainants have acted in bad faith by bringing this proceeding, and the Panel should reject this frivolous argument.

·        Respondents only claim to holding legitimate rights in the Disputed Domain Name is based on AMERICAN FUNDS being a generic term.  Respondent has failed to provide any evidence of rights or legitimate interests in the Disputed Domain Name.

·        Respondent also contends that because registration of the Disputed Domain Name occurred four years prior to Complainants' registration of AMERICAN FUNDS, there can be no bad faith. It is the plea of the Claimant that this argument of the Respondent is misleading.  The Complainants submit that the inquiry which deserves to be undertaken is not whether Complainants registered its domain name prior to registration of the Disputed Domain Name, but rather whether Complainants were using AMERICAN FUNDS prior to registration of the Disputed
Domain Name. Moreover, the USPTO records reveal that on April 1, 2012, the application for AMERICAN FUNDS was approved for publication with a Section 2(f) statement of acquired distinctiveness.  To establish acquired distinctiveness, the USPTO accepted evidence submitted by Lead Complainant showing substantially exclusive and continuous use of
AMERICAN FUNDS on or in connection with Complainants' services since at least as early as April  I,  1997 - five years prior to the claim of distinctiveness. Respondent did not register his domain name until more than a year later on June 28, 1998.  On this basis Complainants contend that there is no substance or merit in the arguments on behalf of the Respondent.

 

Respondent :

·        Respondent contends that the Complainants have not brought forth any new evidence which supports its claim in the contested domain name, but it does point to a conclusive assessment regarding its merits.

·        Complainants do not contest that mark AMERICAN FUNDS is a generic term, but instead relegates the matter to the authority of the USPTO Examiner who had approved the mark for publication based on a statement and evidence of acquired distinctiveness. In other words, USPTO Examiner has confirmed that Complainants use of the mark is capable of serving the essential trademark function of distinguishing Complainants products or services from the products or services of other businesses (e.g. from First American Funds). This use of the mark has no effect on the generic use of the term appropriated by the mark; the latters identity remains unmoved. A statement “’X has American funds has the exact same meaning today that it did two centuries ago. In this regard, the Respondent has relied upon the following decisions of this Forum : -

(i)   Aspden v. Nixon, 45 U.S. 467, 1846 holding that As American executor, Nixon had American funds. His rights were wholly distinct. The funds were distinct. The British courts had no jurisdiction over the American funds (emphasis added)). There is nothing in that statement that is affected by Complainants mark having acquired distinctiveness because there is nothing in that statement that would give rise to confusion as to the source of origin. A value for any asset in being American in origin is completely separate of whatever value that Complainants add to their own products and services.

(ii)  Martin Container, Inc., 65 USPQ2d 1058, 1060-1061 (TTAB 2002) - holding that "To the average customer seeking to buy or rent containers, "CONTAINER.COM" would immediately indicate a commercial web site on the Internet which provides containers."  It is this value that Complainants seek to deny others to unfairly tip the competition in their favor.

·        Respondent has used the disputed domain name for displaying generic links to a variety of financial service providers that wish to attract users seeking investment in AMERICAN FUNDS. The present dispute is a typical trademark fair use case allowing all interested parties to present their products to the public seeking AMERICAN FUNDS. If fair use is denied to this domain name under present circumstances then fair use of the term in commerce is not possible under any circumstances be that a domain name, a hyperlink, or plain text on some third party website.

·        Regarding bad faith registration, the Respondent submits that it could not have registered the domain name in bad faith because there is no record to support Complainants common law rights claims to unique and exclusive use of American funds mark.

·        Although Complainants claim to have allegedly been using the mark for 44 years, yet there is not so much as a pamphlet to support this fact. By failing to provide at least a partial copy of their website, whose record they surely would have possessed, Complainants indirectly admit that they were not using the mark as a primary identifier of their products on their website at the time of contested domain name registration and/or were merely using it as a descriptive term.

·        While referring to Complainants original trademark application (Exhibit-A), the Respondent states that the Complainants point to the fact that the USPTO accepted evidence of substantially exclusive and continuous use of AMERICAN FUNDS since as early as April 1, 1997. But the Complainants in the original trademark application have given January 31st, 2000 as the date of its first use of the mark in commerce. After one year, the Complainants amended their original statement regarding usage to February 1st, 1970 with an assurance to provide proof at first request (Exhibit B), however, no proof was provided, as it appears that the Examiner deemed current - circa 2001 specimens to be sufficient for the purpose. Respondent further contends that Complainants current website and their specimens claim 1931 as the year AMERICAN FUNDS was engaged in commerce (Exhibit C) and then making a claim of usage to Feb. 1, 1970, are inherently contradictory.

·        Even if the contradictory statements are accepted prima facie, Complainants argument would still present a glaring omission without supporting evidence, as it is impossible to establish the time from the point of first use in commerce, even an approximate date when the mark became primarily associated with Complainants. Respondent further contends that at what point in time can Complainants begin claiming that Respondent should have been aware about their (Complainants) common law mark? The type of evidence is generally required to support a finding of common law rights in a mark which includes business sales figures, revenues, advertising expenditures, number of consumers served, and the evidence that there is strong customer identification of the mark with Complainants goods or services. In this regard, the Respondent has relied upon the following decisions of this Forum in the following cases : -

(i)   Weatherford Intl, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) and Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001). In Weatherford International, the Panel concluded that Although Complainants WELLSERV product and related services may be well-known among relevant consumers, that is a finding that must be supported by evidence and not self-serving assertions. Precedent does not support merely protecting Complainants assertions in lieu of any supporting evidence, statements or proof (e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications). Simply operating under a business name does not, per se, constitute secondary source identification sufficient to warrant a finding of common law rights in the WELLSERV mark. Complainants burden requires proffering supportive evidence or information that indicates relevant consumers identify its alleged WELLSERV mark as representative of its services and identity Even if the Panel accepted Complainants contention that it has common law rights in the WELLSERV mark as true, such rights must be established prior to Respondents registration of the disputed domain name. Although Complainant asserts that it has used the WELLSERV mark since 1988, no external evidence corroborates this statement. Id. Like Weatherford International, Complainants fail to meet their burden of proof by a preponderance of relevant, admissible, and credible evidence (e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications) and merely appeals to the authority of information recorded in USPO registration.

(ii)  Transpark LLC v. Network Admr, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) - holding that Complainant failed to provide any evidence that would indicate vested common law rights in the TRANSPARK mark prior to Respondents December 7, 1998 domain name registration date.;

(iii) DJR Holdings, LLC v. Paul Gordon a/k/a IQ Mgmt. Corp., FA 141813 (Nat. Arb. Forum Mar. 4, 2003). Allegations of use in commerce, even when they are statements made by an attorney before a Trademark Board, do not establish retroactive trademark rights, let alone trademark rights in a generic term.

·        Respondent further submits that there is only one plausible explanation for the lack of evidence of Complainants trademark use Complainants were not using AMERICAN FUNDS directly in 1998 because it is not a very distinctive mark. Looking forward from that vantage point, there is nothing in Complainants website or their public material that suggests that in 4 years they will shorten their brand name and in 15 years will begin policing the use of a generic term on the Internet at the expense of history. There is nothing on the record that would have suggested to a bona fide registrant that registering the contested domain name was an intentional misspelling on American Funds Group a family of funds offered by American Funds because the latter enjoys unique, exclusive and uncontestable common law trademark rights to any website, hyperlink or text containing the terms America and funds.

 

PRELIMINARY ISSUEMULTIPLE COMPLAINANTS

 

·        In the instant proceedings, there are two Complainants : American Funds Distributors, Inc. and The Capital Group Companies, Inc. Complainants allege that the lead Complainant, American Funds 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 any person or entity may initiate an administrative proceeding by submitting a complaint. The National Arbitration Forums 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.

·        The Panel finds that previous Panels have interpreted the Forums Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. The Panel finds the following decisions of this Forum to be relevant in this regard : -

(i)   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 that : 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.

(ii)  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.

(iii) 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. 

 

The Panel accepts the evidence in the Complaint sufficient to establish that there is sufficient nexus / link between the Complainants, and therefore, would like to treat them all as a single entity in this proceeding.

 

Preliminary Issue : Deficient Additional Submission

·        Complainants submitted Additional Submissions, the payment of which was received after the deadline for payment had passed, so it been deemed deficient by the National Arbitration Forum pursuant to Supplemental Rule 7.  The attention of the Panel was drawn to determine as to what amount of weight should be given to Complainants deficient Additional Submission. In this regard, the following decisions of WIPO would be relevant : -

(i)   Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) - holding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made);

(ii)  SuNyx Surface Nanotechnologies GmbH v. Primmer, D2002-0968 (WIPO Jan. 20, 2003) - choosing not to consider either the complainants or the respondents additional submissions that were received after the stated deadline where neither set out any new facts or other circumstances that would justify the late submissions.

·        The Panel is of the view that it would be in the interest of equity and justice that the additional submissions of Complainants and Respondent are considered on merits.

 

FINDINGS

·        The Panel finds that the domain name <americafunds.com> registered by Respondent by deleting the character n from the Complainants domain name - in bad faith, is confusingly similar to the AMERICAN FUNDS marks; Respondent has no rights or legitimate interests in relation to the disputed domain name; and the domain name is being used in bad faith.

·        The Panel also finds that the domain name <americafunds.com> deserves to be transferred to the Complainants and the Respondent is not entitled to use this domain name. The Complaint deserves to be allowed and the Panel decides accordingly. In terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.

 

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.

 

Identical and/or Confusingly Similar

·        Complainants assert that they provide investment management services, particularly in relation to mutual funds in the United States. Complainants argue that they are owners of a trademark registration with the USPTO for the AMERICAN FUNDS mark (Reg. No. 2,627,929, registered October 1, 2002) and for the AMERICAN FUNDSLINE mark (Reg. No. 1,582,924, registered February 13, 1990) (Exhibit C). The Panel observes that Respondents has registered the <americafunds.com> domain name on June 28, 1998, approximately four years before Complainants registration of its AMERICAN FUNDS mark in 2002 (Exhibit D). The Panel finds that the Complainants have established rights in its AMERICAN FUNDS and AMERICAN FUNDSLINE marks through its USPTO registrations, in satisfaction of Policy 4(a)(i). In this regard, the Panel relies upon the following decisions : -

(i)   Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) - holding that Policy 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

(ii)  Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) holding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

·        The Panel notes that although Respondent appears to reside in Seychelles, the Panel finds that Complainant does not need to register the mark in the country in which Respondent resides so long as it establishes its rights in the mark in some jurisdiction under Policy 4(a)(i).

 

·        The Panel observes that Complainants in their complaint and Additional Submissions, have argued that they have common law rights in AMERICAN FUNDS since as early as February 1970. Complainants also argue that they have been managing investors assets since 1931. Also in the Complaint, Complainants have claimed that their AMERICAN FUNDS family of mutual funds has more than $900 billion in investments and over 50 million shareholder accounts. Complainants allege in their Complaint and Additional Submission that their continuous use of the AMERICAN FUNDS mark in connection with their services since 1970 has resulted in Complainants becoming one of the worlds largest and most well-known and successful investment management organization. Complainants also assert in their Complaint and Additional Submission that they have held various domain names incorporating AMERICAN FUNDS, including <americanfunds.com> (dating from 1995 and prior to Respondents registration of the disputed domain name). The Panel observes that the Complainants have registered the AMERICAN FUNDSLINE mark in 1990 {besides other registered marks on various dates thereafter from 2001 to 2012 [Exhibit-C]}, which predates Respondents registration of the disputed domain name <americafunds.com>. The Panel is, therefore, of the view that the disputed domain name is similar to Complainants AMERICAN FUNDSLINE mark. The Panel also finds that the Complainants have common law rights in the AMERICAN FUNDS mark under Policy 4(a)(i). The Panel finds that an earlier Panel of this Forum in its decision in - Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) has held that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy 4(a)(i), as a result of complainants continuous use of the CAM4 mark since 1999.

·        The Panel observes that Complainants have argued confusing similarity. Admittedly, the mark AMERICAN FUNDSLINE had been registered in 1990, which predates the registration of the disputed domain name of the Respondent. This position, when examined with reference to the AMERICAN FUNDS mark; the Panel finds that Complainants claim of confusing similarity is well founded. The Panel observes that the Respondent has removed the letter n from Complainants AMERICAN FUNDSLINE mark. The Panel holds that Respondents omission of a letter from a mark for its domain name does not differentiate a domain name from a mark pursuant to Policy 4(a)(i). In this regard, the Panel draws strength from the decision of WIPO in Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) - holding that the <pfzer.com> domain name was confusingly similar to the complainants PFIZER mark, as the respondent simply omitted the letter i). The Panel observes that the Respondent has removed the space in Complainants AMERICAN FUNDSLINE mark and added the generic top-level domain (gTLD) .com to the disputed domain name. The Panel finds that the Respondents omission of a space and addition of a gTLD is irrelevant to a Policy 4(a)(i) determination. The Panel notices that an earlier Panel of this Forum in U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) has held that Elimination of punctuation and the space between the words of Complainants mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy 4(a)(i).).

·        The Panel also notes that Respondent has omitted the word line from Complainants AMERICAN FUNDSLINE mark. The Panel finds that the Respondents removal of terms from Complainants mark does not distinguish the disputed domain name from the registered marks of the Complainants pursuant to Policy 4(a)(i). The Panel observes that an earlier Panel of this Forum in - Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) - holding the <americaneaglestores.com> domain name to be confusingly similar to the complainants AMERICAN EAGLE OUTFITTERS mark).

·        While Respondent contends that the disputed domain name <americafunds.com> is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainants marks, the Panel finds that such a determination is not necessary under Policy 4(a)(i) as this portion of the Policy considers only whether Complainants have rights in the marks and whether the disputed domain name is identical or confusingly similar to Complainants marks. The Panel in this regard relies upon the following decisions of this Forum : -

(i)   Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) - examining Respondents generic terms arguments only under Policy 4(a)(ii) and Policy 4(a)(iii) and not under Policy 4(a)(i);

(ii)    Also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) - holding that the respondents disputed domain name was identical to complainants mark under Policy 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy 4(a)(ii) and 4(a)(iii).

·        Therefore, the Panel finds that the Respondents <americafunds.com> domain name is confusingly similar to Complainants AMERICAN FUNDSLINE mark under Policy 4(a)(i).

 

Rights or Legitimate Interests

·        The attention of the Panel is drawn towards the fact that the Complainants must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and then the burden would shift to the Respondent to show that it does have rights or legitimate interests. In this regard, the attention of the Panel is drawn towards the following decisions of this Forum : -

(i)   Hanna-Barbera Prods., Inc. v. Entmt 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;

(ii)  AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) - holding that 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.

·        Complainants assert that there is no evidence that Respondent has been commonly known by the disputed domain name <americafunds.com>. The Panel observes that the WHOIS record identifies Daina Trading Company Limited (Respondent herein) as the registrant of the disputed domain name (Exhibit D). Complainants contend that Respondent is in no way connected with Complainants and has no authority, license, permission, or other arrangement from Complainants to use any variety of the marks AMERICAN FUNDS to identify Respondents disputed domain name, website, or services provided by Respondent.

·        The Panel observes that in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Accordingly, the Panel finds that the Respondent is not commonly known by the disputed domain name <americafunds.com> pursuant to Policy 4(c)(ii).

·        The Panel observes that the Complainants have argued that Respondents use of the disputed domain name to redirect internet users to sponsored listings, or advertisements, featuring links to third-party websites, is not a bona fide offering of goods and services and does not constitute a legitimate noncommercial or fair use. The Panel notes that Respondents <americafunds.com> domain name leads to a website offering competing links titled American Funds, American Funds 401k, Retirement Funds, and others (Exhibit F). The Panel holds that Respondents 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.

·        In this regard, the Panel relies upon the decision of this Forum in United Servs. Auto. Assn v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) - holding that The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainants marks and contains links to Complainants 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).

·        Complainants claim that the act of typosquatting is evidence that Respondent has no rights or legitimate interest in the disputed domain name. Complainants allege that Respondent has affirmatively chosen to use Complainants AMERICAN FUNDS mark in the disputed domain name, with only a minor spelling alteration, giving the false impression that the disputed domain name will lead internet users to the official website of Complainants mutual funds and related services. The Panel concludes that the Respondent has engaged in typosquatting and finds that the Respondent has no rights or legitimate interests in the <americafunds.com> domain name under Policy 4(a)(ii).

·        The Panel, in this regard, refers to a decision of this Forum in - IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) - holding that the respondent lacked rights and legitimate interests in the disputed domain names because it engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter x instead of the letter c’”.

·        The Panel finds that the Respondent does not have any right or legitimate interests in the disputed Domain name.

 

Registration and Use in Bad Faith

·        The Panel observes that Complainants claim that because Complainants AMERICAN FUNDS mark was well-known at that time Respondent has registered the disputed domain name. Complainant asserts that Respondent knowingly incorporated Complainants well-known mark in the disputed domain name. Complainants also contend that they have been using the name and mark AMERICAN FUNDS in relation to their services since at least February 1970. The Panel observes that the Complainants AMERICAN FUNDSLINE mark was registered in 1990 - which in the facts of the present case, would be sufficient to accept knowledge / constructive notice to the Respondent. The Panel further observes that in their Additional Submission, Complainants argue that if the AMERICAN FUNDS mark was not well-known, as Respondent contends, why would Respondent prominently display AMERICAN FUNDS on a website using <americafunds.com>, the purpose of which is to generate money through click-through fees from visitors to the site.

·        Panel finds merit in the contentions of Complainants including the contention that Respondent is diverting Internet users seeking information about Complainants mutual funds and related services, and Internet users seeking to access Complainants long-time site at <americanfunds.com>, to a commercial website through the use of a domain name that is confusingly similar to Complainants AMERICAN FUNDS mark. Such conduct disrupts operation of a portion of Complainants' activities. Such disruption and diversion evidences registration and use in bad faith pursuant to ICANN Policy 4(b)(iv).

·        Complainants contend that previous panels have found bad faith when a respondent knowingly takes advantage of a well-known mark to attract users to respondent's own website. In this regard it has placed reliance on a decision of this Forum in AOL LLC v. iTech Ent. LLC, Nat. Arb. Forum Claim No. FA 726227 - (Nat. Arb. Forum July 21, 2006) - holding that the respondent took advantage of the confusing similarity between the domain names theotheraol.com and theotheraol.net and the complainants AOL mark, which indicates bad faith registration and use pursuant to Policy 4(b)(iv).

 

·        The Panel observes that Complainants have asserted that Respondents previous history of bad faith use and registration in the prior UDRP proceeding suggests that the Respondent has engaged in bad faith use and registration in this case as well. In the Complaint and Additional Submission, Complainants claim that a reverse WHOIS search on the DomainTools website shows that Respondent is the owner of some 3,000 domain names. Also in the Complaint and Additional Submission, Complainants argue that Respondent has been the loser of at least one UDRP decision relating to a domain name consisting of a misspelling of a third-party trademark. See Diners Club Intl. Ltd. v. Daina Trading Co. Ltd., FA 1362620 (Nat. Arb. Forum Jan. 7, 2011).

·        The Panel  holds that Respondents prior UDRP proceedings resulting in findings of bad faith and transfer demonstrates Respondents bad faith use and registration under Policy 4(b)(ii). In this regard, the Panel refers to the decision of this Forum in - Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) - holding that prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations.

·        The Panel in this regard refers to a decision of this Forum in - Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) - holding that using the resolving website to divert Internet users to the complainants competitors constituted bad faith registration and use under Policy 4(b)(iii).

·        The Panel observes that Complainants argue that Respondent has engaged in typosquatting. Complainants contend that the Respondent has chosen to use Complainants AMERICAN FUNDS mark in the disputed domain name, <americafunds.com> with only a minor misspelling, giving internet users the false impression that the disputed domain name will lead to the official website of Complainants AMERICAN FUNDS mutual funds and related services.

·        The Panel also observes that in their Additional Submission, Complainants assert that Respondent has provided no legitimate reason for registering a domain name that omits the letter n from Complainants AMERICAN FUNDS mark. The Panel finds that although Complainants refer to their AMERICAN FUNDS mark, the disputed domain name could not be considered typosquatted with reference to the AMERICAN FUNDSLINE mark, which existed at the time Complainants registered their mark. Therefore, the Panel declines to make a finding on typosquatting under Policy 4(a)(iii).

·        Thus, the Panel finds that Respondents domain name disrupts Complainants business according to Policy 4(b)(iii).

·        Complainants contend that Respondent has 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 with Complainants. The Panel observes that the Respondents <americafunds.com> domain name resolves to a webpage providing competing hyperlinks titled American Funds, American Funds 401k, Retirement Funds, and more (Exhibit F). Further, in their Additional Submission, Complainants argue that the Respondent does not dispute that it is using the disputed domain name to divert internet users seeking information about Complainants AMERICAN FUNDS mutual funds and related services to its website containing third-party advertisements and sponsored listings to generate revenue through click-through fees.

·        The Panel observes that an earlier Panel of this Forum in - Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), - held that Respondent's prior use of the <mailonsunday.com> domain name was evidence of bad faith pursuant to Policy 4(b)(iv) because the domain name provided links to Complainants' competitors and Respondent presumably commercially benefited from the misleading domain name by receiving click-through-fees.’”

·        Accordingly, the Panel finds that Respondents use of the domain name to attract Internet users to its own website for commercial gain evidences bad faith use and registration under Policy 4(b)(iv).

·        Thus, the Panel finds that Respondents registration of the disputed domain name constitutes bad faith under Clause 4(b)(iv) of the Policy.

 

Reverse Domain Name Hijacking

·        With regard to reverse domain name hijacking, the Panel finds that the Complainants have asserted that the Respondent does not offer any legitimate basis for the Panel to find the remedy of reverse domain name hijacking. Complainants argue that under Paragraph 1 of the Rules, a finding of Reverse Domain Name Hijacking is appropriate only where Complainant is found to use the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. The Panel observes that Complainants have satisfied all the elements of para 4(a) of the Policy. The Panel finds that Complainants have not engaged in reverse domain name hijacking.  This finding of the Panel is strengthened by the following decisions of this Forum : -

(i)   World Wrestling Fedn Entmt, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) holding that Because Complainant has satisfied [all of] the elements of the Policy, Respondents allegation of reverse domain name hijacking must fail);

(ii)  Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the identical/ confusingly similar prong of the Policy).

 

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.com> domain name be TRANSFERRED from Respondent to the Complainants.

 

(MANINDER SINGH)

Panelist
Dated: 21.07.2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page