Zawya Limited / Thomson Reuters Canada Limited / Thomson Reuters Global Resources v. Karen Jackson
Claim Number: FA1310001522432
Complainant is Zawya Limited / Thomson Reuters Canada Limited / Thomson Reuters Global Resources (“Complainant”), represented by Alexandre A. Montagu of MontaguLaw, P.C., New York, USA. Respondent is Karen Jackson (“Respondent”), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zawyathomsonreuters.com and <thomsonreuterszawya.com>, registered with GoDaddy.com, LLC.
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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2013; the National Arbitration Forum received payment on October 2, 2013.
On October 3, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <zawyathomsonreuters.com> and <thomsonreuterszawya.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@zawyathomsonreuters.com, postmaster@thomsonreuterszawya.com. Also on October 4, 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.
A timely Response was received and determined to be complete on October 7, 2013.
An Additional Submission was received on October 9, 2013.
On October 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are three Complainants. 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.”
There are three Complainants in this matter: Zawya Limited, Thomson Reuters Canada Limited, and Thomson Reuters Global Resources. The three Complainants are wholly-owned indirect subsidiaries of Thomson Reuters Corporations, and are all named herein because all Complainants can claim to have rights to the infringing domain names, as all Complainants hold rights in the trademarks contained in the infringing domain names.
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 & Paralympic Games & Int’l Olympic Committee v. 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 Am. Family Health Servs.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.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link among the Complainants, and treats them all as a single entity in this proceeding. Therefore, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant provides information for businesses and professionals in the financial, legal, tax, accounting, science, and media markets. Complainant’s THOMSON REUTERS mark is famous and well-respected throughout the world. Complainant owns trademark registrations for its mark in various jurisdictions throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,105,789 registered February 28, 2012), and the European Office of Harmonization in the Internal Market (“OHIM”) (Reg. No. 6,680,987 registered September 29, 2012). Complainant also has rights in the ZAWYA mark, which operates as a provider of business news, intelligence, research, and analysis on business in the Middle East and North Africa. Complainant owns rights in the ZAWYA trademark with the USPTO (Reg. No. 4,252,417 registered December 4, 2012). Complainant owns the <thomsonreuters.com> domain name, which has been registered since March 6, 2008, and the <zawya.com> domain name, registered since August 24, 1999.
Respondent registered the <zawyathomsonreuters.com> and <thomsonreuterszawya.com> domain names on August 19, 2013. Respondent uses the domain names to solicit offers to purchase the domain names by displaying a message indicating that the domain name is available through GoDaddy Auctions and accompanying links. Respondent also uses the domain names to offer other links that lead to websites promoting services competitive with those of Complainant. The <zawyathomsonreuters.com> and <thomsonreuterszawya.com> domain names are confusingly similar to both the THOMSON REUTERS and ZAWYA mark. Respondent lacks rights or legitimate interests in the domain names, which bear no relationship to Respondent’s business. Respondent is not commonly known by the disputed domain name, nor does it have license from Complainant to use the trademark. Respondent demonstrates bad faith registration and use is established by Respondent’s conduct in selecting confusingly similar domain names in order to make a commercial gain. Respondent’s bad faith is further shown by its attempt to sell the domain names at auction. Respondent demonstrates opportunistic bad faith registration of the domain names, considering the timing of the registration in relation to Complainant’s recent acquisition of Zawya Limited by Thomson Reuters. The fame associated with both of Complainant’s marks gives Respondent notice of Complainant’s rights in the mark.
B. Respondent
Respondent consents to the remedy Complainant requested and agrees to transfer the disputed domain names without a need for a decision rendered by the Panel unless necessary. Respondent was not aware of the trademarks associated with the domain names and had no intent to cause confusion or harm reputations.
Nonetheless, Respondent denies any claims of cybersquatting, and has ceased infringing use of the domain names and has taken proactive steps in requested that the domain provider remove any infringing ads or links. Respondent argues that the domain names are not identical to any registered business, and GoDaddy LLC did not warn or inform Respondent of any complications with regard to infringing on trademark rights. Respondent claims that it registered the domain name with the intention of “cyberinvesting,” not with the purpose of disrupting business. Respondent did not make any use of the domain anyway, as no content has been posted; and if content was posted, it was without Respondent’s knowledge or consent. Respondent derives no benefit from any posted advertisements.
Respondent has consented to transfer the <zawyathomsonreuters.com> and <thomsonreuterszawya.com> domain names to Complainant. However, after the initiation of this proceeding, GoDaddy LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending. However, in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees that the domain names in question be transferred to Complainant, the Panel will forego the traditional UDRP analysis and order an immediate transfer of the <zawyathomsonreuters.com> and <thomsonreuterszawya.com> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
The Respondent having consented to the transfer, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zawyathomsonreuters.com> and <thomsonreuterszawya.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: October 18, 2013
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