Riskmetrics Solutions, Inc. v. Global Risk Management Network, LLC
Claim Number: FA1103001377718
Complainant is Riskmetrics Solutions, Inc. (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Global Risk Management Network, LLC (“Respondent”), represented by Yogesh Malhotra, Ph.D. of Global Risk Management Network, LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com>, registered with Pair Networks Inc. d/b/a pairNIC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2011; the National Arbitration Forum received payment on March 14, 2011.
On March 14, 2011, Pair Networks Inc. d/b/a pairNIC confirmed by e-mail to the National Arbitration Forum that the <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com> domain names are registered with Pair Networks Inc. d/b/a pairNIC and that Respondent is the current registrant of the names. Pair Networks Inc. d/b/a pairNIC has verified that Respondent is bound by the Pair Networks Inc. d/b/a pairNIC 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 March 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2011 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@globalriskmetrics.com, postmaster@quantriskmetrics.com, postmaster@brokenriskmetrics.com, postmaster@notriskmetrics.com, and postmaster@riskmetricssuck.com. Also on March 14, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 April 5, 2011.
On April 11, 2011, an Additional Submission was timely received from Complainant in compliance with Supplemental Rule 7.
On April 18, 2011, an Additional Submission was timely received from Respondent in compliance with Supplemental Rule 7.
On April 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Prof. Darryl C. Wilson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it has protectable rights in the mark RISKMETRICS based on a variety of registrations in numerous countries and that the disputed domain names registered by the Respondent, specifically, <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com> are virtually identical or confusingly similar to Complainant’s mark. Complainant also contends that Respondent does not have any rights or legitimate interests in the disputed domain names and that the domain names at issue were registered and used in bad faith.
B. Respondent
Respondent sets forth twenty-nine (29) contentions in the main body of its Response and supplements the same with hundreds of pages of exhibits that it deems relevant to the issues in controversy. Respondent’s contentions cover a veritable plethora of facts and assertions which are set forth to support its general claim that Complainant is unable to prove its contentions. After Respondent’s initial list of contentions, Respondent addresses UDRP ¶ 4(a)(i) regarding “the manner in which the domain name(s) are not identical or confusingly similar to a trademark or service mark in which Complainant has rights.” Respondent then contends that “Facts establish that domain names are not at all identical or confusingly similar to mark” and then states that “Complainant’s allegations about any similarity with Respondent are rejected based upon facts established in prior sections Respondent’s Bona Fide Not-for-Profit Non-Commercial Public Education Business and Complainant and its For-Profit, Commercial Business Focus on Narrow Trademark.”
The italicized references are headings at various points in the list of twenty-nine (29) contentions but none directly speak to the similarity between the Complainant’s mark and Respondent’s registered domain names. Respondent further contends that “Clearly visible contrasts between the fundamentally different content, focus, audience, and business purpose with totally different products and services with no similarity at all between Complainant and Respondent further support no finding of similarity.”
Respondent also contends that “Complainant did not adduce sufficient evidence to show that it has trade mark rights in the term ‘RiskMetrics’ (or ‘Risk Metrics’) and associated use of RISKMETRICS.COM” because the Complainant does not own the mark nor is Complainant the registrant of the domain name. In addition, Complainant does not identify itself with its trademark in the use of RISKMETRIC.COM and its other domain names don’t show a bona fide use. Respondent further asserts that Complainant uses Complainant’s own domain name to resolve to competitor websites promoting only competitor products without any apparent related trademark use.
Respondent also argues that “Risk Metrics” is a generic phrase and that if not, and instead Complainant has a protected mark, that Respondent only engaged in fair use. Further, Respondent states that “factual evidence unequivocally establishes that respondent is making legitimate noncommercial and fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service marks at issue.” Respondent also argues that Complainant has falsified publicly known material facts and distorted facts with the intent of reverse domain hijacking. Respondent further generally references factual evidence submitted to show that it has refuted Complainant’s each and every allegation about Respondent’s bad faith indicating it “registered disputed domain names in good faith to advance its not-for-profit, non-commercial public education focus.” Respondent also contends that “factual evidence of Respondent’s due diligence before registration of domains also establishes clearly no prior claim or prior use by any entity.”
C. Additional Submissions
Complainant’s Additional Submission contends that Respondent is inconsistent in its responses as it alternates between stating it is a “not-for-profit social enterprise” that provides free material online “for the benefit of students, educators and researchers” through unidentified websites while stating on its “About Us” page that it “emphasizes public education oriented research focus on risk management related to “information and computational systems”. Complainant asserts that both parties are in the same business of risk assessment and management in the financial sector thus the products and services of each company are of potential interest to the same types of consumers.
Complainant notes that Respondent admits to participating in Google’s Ad Word program and earning revenue from the program and that one or more of the disputed domain names are used as search links to direct users to secondary pages which Complainant believes are part of the Ad Word system.
Complainant further notes that Respondent is the owner of fifty (50) domain names including several which resolve to the same website(s) providing commercial links of Complainant’s competitors, that additionally a number of the domain names are being offered for sale on the same website(s), or they resolve to companies which the Respondent appears to have no association with.
Complainant goes into some detail to dispute, discuss, respond to, and clarify many points from the list of Respondent’s contentions regarding the nature of the parties’ respective businesses and the details of such as shown by the voluminous exhibits provided by both. The discussion includes lengthy remarks directed towards Complainant’s registered domain names <riskmetrics.com>, <riskmetrics.org>, <riskmetrics.net>, and < riskmetrics.info>, all of which are noteworthy but not at issue in this proceeding. Complainant does argue that Respondent improperly conflates Complainant’s RISKMETRICS mark, with its domain names generally and its <riskmetrics.com> mark in particular and in doing so fails to address the specific issues as directed by the UDRP overall and Policy ¶ 4(a)(i) in particular.
Complainant also provides a timeline to further substantiate its rights in the RISKMETRICS mark while noting that the best reference it can find of any marks that Respondent allegedly has an interest in are self-serving statements such as “Our registered and in use trade marks and service marks include ‘Instant Intelligence for Business, Information, Technology, and Knowledge Management’ TM…Global Risk Metrics TM…Quant Risk Metrics TM…, and ‘Your Survival Network for The Brave New World of Business TM’.” Complainant notes that it can find no evidence of any marks registered by Respondent or evidence of the use of the marks or the domain names in dispute.
Complainant further argues against Respondent’s assertions that Complainant’s mark is generic or that Respondent is in anyway engaged in the fair use of the mark. Complainant contends that Respondent’s assertions regarding its demonstrable preparations to use some of the disputed domain names in connection with a bona fide offering of goods or services is unsubstantiated and also the fact that the disputed domain names are returned in a Google search is insufficient proof that Respondent is or has been commonly known by the disputed domain names. Complainant further contests Respondent’s assertions regarding proof of legitimate use of any type and reasserts its claim of Respondent’s bad faith registration and use. Finally, Complainant disputes Respondent’s allegations of reverse domain hijacking.
Respondent’s Additional Submissions purport to provide a summary overview of factual evidence along with more specific contentions. Respondent emphasizes that Complainant’s allegations “focus on: association of RISKMETRICS.COM with RISKMETRICS mark, and, generic and descriptive phrases: ‘Risk Management’ and ‘Risk Metrics.’” Respondent contends that Complainant has not provided any factual evidence whatsoever to support any of the relevant UDRP requirements. Respondent then goes into great detail about the Complainant’s failings; however, the statements made generally reiterate the original Response. To the extent that they supplement the Response, they do so primarily by adding more discussion regarding the relative business focus of each company. Respondent does renew his claims of the genericness of Complainant’s mark or Respondent’s fair use as well as the contention that Complainant falsely claims ownership of RISKMETRICS and <riskmetrics.com> for purposes of “misleadingly diverting consumers interested in RISKMETRICS mark to its self-reported most direct competitor’s Web domain and site with no visible RISKMETRICS mark.” Respondent also reiterates its claim that Complainant is engaged in Reverse Domain Name Hijacking.
Complainant, Riskmetrics Solutions, Inc., provides risk management products and services to enable clients to measure and quantify portfolio risk throughout the world for various types of markets. The company was formerly a division of JP Morgan, later becoming an independent company in 1998 and thereafter was acquired in 2010 by MSCI Inc., a provider of investment decision and support tools. Complainant is headquartered in New York, USA and has twenty (20) offices around the world in countries such as Belgium, France, Germany, and the United Kingdom. Complainant and its predecessors state that they have common law rights in the mark RISKMETRICS dating back to at least as early as August 1994 and that due to extensive use, promotion and advertisement the mark has become well-known to consumers. Complainant owns a US incontestable federally registered trademark based on Registration No. 2,018,866 with the United States Patent and Trademark Office (USPTO). Complainant also owns registrations for the RISKMETRICS mark in the European Union (EU) based on its Community Trademark Registration issued January 25, 1999 and in the United Kingdom (UK) based on its registration issued there on March 15, 1996. Complainant is also the owner of numerous top level domains including <riskmetrics.com>, <riskmetrics.org>, <riskmetrics.net>, and <riskmetrics.info>.
Respondent is Global Risk Management, LLC, formerly known as BRINT Institute, LLC, who states it is a ”not-for-profit and non-commercial social enterprise” renowned for its free public education focus offering free online services for the benefit of students, educators, and researchers. Respondent claims to have award-winning websites that have received high-profile prestigious reviews. Respondent includes documentation of alleged testimonials as proof of the renown of its websites and services. The testimonials all refer to a BRINT website and there is nothing regarding awards or testimonials pertaining to the sites to which the disputed domain names resolve. Respondent states that millions of students, educators, researchers, scholars and professionals benefit from its sites and lists Harvard, MIT, Stanford, Princeton, the Wharton School, the American Bar Association, NASA, and the US Army/Navy/Air Force among its list of beneficiaries although there is no specific reference to the site(s) or services allegedly used by these entities in any instance. Respondent participates in the Google Ad Word Program as states it was approached by Google about “channeling pro bono informational messages relevant to its academic audience.” Respondent also claims its “costs far exceed the miniscule and negligible revenues, if any, derived from channeling informational messages through Google’s AdWords.”
In January 2011, Respondent registered the domain names, <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com>. Respondent states that it did so as part of the launch of the “next phase of its two-decade long research on proprietary “global” [‘IT, systemic, and strategic’] risk management focus on factors underlying global financial crisis.” At the same time, Respondent adopted its new name, Global Risk Management Network, LLC. Respondent also stated that its “use of generic phrase ‘Risk Metrics’ in its Web domains is consistent with the public education focus on re-thinking measurement and management of ‘global’ risk. It has historically used several Web domains to redirect traffic to its main website, which constitutes a bona fide offering of goods and services.”
Respondent’s documents were sometimes difficult to read and/or follow due to Respondent’s excessive use of bold, italics, underlines, shading, creative spacing, random punctuation, and unorthodox style of organization and presentation. Respondent also seemed to equate the sheer weight of its submissions with its potential for substantive validity. Unfortunately, most of the arguments raised by Respondent are not directed at the core issues raised by the UDRP. While enlisting the service of counsel is no guarantee that one’s arguments and submissions will be properly focused, doing so does reduce the prospect that one may have difficulty formulating coherent responses to the specific proofs required by ¶ 4(a) of the Policy. It also enhances the probability of avoiding confusion between protectable marks, registerable domain names, and the interplay of both with the use of common words in everyday language. The Respondent’s documentation does not reflect that such confusion was avoided by the Respondent.
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.
Complainant, Riskmetrics Solutions, Inc., provides risk management products and uses the RISKMETRICS mark in connection with its risk management services as well as goods relating to these services, such as financial publications and directories. Complainant asserts rights in the RISKMETRICS mark based on common law use dating back to 1994 as well as premised on several registrations for the mark, including a US federal registration (USPTO Reg. No. 2,018,866 issued November 26, 1996), an EU, and a UK registration. Complainant was formerly a division of JP Morgan & Co, Inc. Complainant claims JP Morgan assigned Reg. No. 2,018,866 to Complainant on October 11, 2002, which was recorded at the USPTO on November 4, 2002. Complainant submitted evidence of this chain of title to support its assertions. The Panel finds Complainant’s registration of the RISKMETRICS mark with the USPTO sufficiently proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com> domain names are confusingly similar to its RISKMETRICS mark since they fully incorporate the RISKMETRICS mark in the disputed domain names and then merely add the generic terms “global,” “quant,” “broken,” “not,” or “suck.” Complainant argues that the addition of these terms fails to distinguish the domain names from Complainant’s mark. Additionally, Complainant contends that the affixation of the generic top-level domain (“gTLD”) “.com” to a mark is irrelevant in distinguishing a domain name from the mark. The Panel agrees with Complainant and finds that Respondent’s generic additions fail to adequately distinguish its domain names from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also ADT Servs. AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat the complainant's confusing similarity argument); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel concludes that Respondent’s <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com> domain names are confusingly similar to Complainant’s RISKMETRICS mark pursuant to Policy ¶ 4(a)(i).
Respondent contends that the disputed domain names are comprised of common and generic or descriptive terms and thus cannot be deemed identical or confusingly similar to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶¶ 4(a)(ii) and (iii).
Complainant has proven this element.
The Panel is mindful 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). The Panel finds that such a prima facie case has been made.
Complainant states that it never gave Respondent permission to use its mark nor is Respondent licensed or otherwise authorized to use its RISKMETRICS mark. Additionally, the WHOIS information lists “Global Risk Management Network, LLC” as the registrant of the disputed domain names, which the Panel finds is not sufficiently similar to the domain names and which corporate name Respondent admits was adopted contemporaneously with the registration of the disputed domains. Therefore, the Panel finds that Complainant’s assertions combined with the WHOIS registrant information support a finding that Respondent is not commonly known by the <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com> domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant submits screen shots of the websites resolving from the <globalriskmetrics.com> and <quantriskmetrics.com> domain names. Complainant states that these images show webpages that, at first glance, appear to be informational. However, Complainant asserts these pages provide links that connect to third-party commercial websites. Complainant alleges some of these third-party websites are unrelated to Complainant, but other sites relate to the financial and risk management fields and compete with Complainant’s business. Complainant also asserts some of the hyperlinks resolve to a website at <finrm.com>, another domain name that Respondent owns. In addition, Complainant notes that the <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com> domain names resolve to parked websites that provide hyperlinks to Complainant’s competitors. Complainant argues that Respondent most likely profits from its use of the disputed domain names through the receipt of click-through fees. The Panel agrees, especially in light of Respondent’s asserted participation in Google’s Ad Word program and statement that it often uses other domain names to direct traffic to its websites. The Panel finds that Respondent also uses the disputed domain names to display links for Complainant’s competitors as third-party websites. The Panel also finds that Respondent receives commercial gain from its use of the disputed domain names through the receipt of click-through fees. Accordingly, the Panel concludes that the Respondent does not use the <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com> domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Respondent argues that the terms of the <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com> domain names are common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent is correct that Complainant’s RISKMETRIC mark does not give Complainant the right to prevent others from using the words “risk,” “metric,” or variations thereof and Respondent may continue to use these words in the context of their common daily usage. Respondent mistakes a right to continue use of common words with a right to combine those words in the same manner as used in a protected mark and assert rights to that mark or confusingly similar deviations through registration of domain names. RISKMETRICS is not a common word and Respondent has presented no evidence to indicate when and under what circumstances Complainant’s mark, presumed distinctive because of its issued federal registration, and further deemed incontestable under US trademark law due its length of registration, became generic. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Complainant has proven this element.
Complainant asserts that the disputed domain names divert Internet users seeking Complainant’s services to websites that provide hyperlinks to commercial websites offering services that compete with Complainant’s. The Respondent does not directly refute these allegations but offers a number of explanations ranging from contesting the type of services Complainant offers, contesting ownership and use of Complainant’s RISKMETRIC mark, disputing the character of the market(s) in which Complainant and Respondent are involved in and thus who the competitors really are, and defending its rights to engage in the contested behavior because of the limited funds it receives based on these diversions. The Panel finds Respondent’s arguments unpersuasive and unsupported and therefore finds that the timing and nature of the registration of the disputed domain names and the subsequent nature of their use disrupt Complainant’s business, which amounts to registration and use in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant contends that Respondent presumably receives a financial benefit from its use of the disputed domain names in the form of click-through fees. The Respondent appears to assert that if any such fees are received that they are so small that they should be ignored and thus not detract from its alleged status as a non-profit, non-commercial business. Because the Panel finds that the <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com> domain names are confusingly similar to Complainant’s RISKMETRICS mark, the Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Thus, the Panel determines that Respondent’s behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Despite Respondent’s assertions to the contrary, at least in one portion of its responses, The Panel finds the contentions of the Complainant more persuasive regarding Respondent’s alleged knowledge of Complainant’s existence. Complainant had registered trademarks throughout the world for nearly fifteen years and also an established web presence. Both parties were and/or are actors in a relatively narrow field where both proclaim wide prominence. Respondent stated that it exerted extensive searches and due diligence to reach the conclusion that there were no prior rights or interests held by any entity that might conflict with the disputed domains. The facts do not support Respondent’s assertions.
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED. The Panel does not find any evidence that the Complainant has engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also 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).
Accordingly, it is Ordered that the <globalriskmetrics.com>, <quantriskmetrics.com>, <brokenriskmetrics.com>, <notriskmetrics.com>, and <riskmetricssuck.com> domain names be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson, Panelist
Dated: April 21, 2011
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