First Manhattan Co. v. Janine Tedesco
Claim Number: FA1310001526058
Complainant is First Manhattan Co. (“Complainant”), represented by Mark J. Hyland of Seward & Kissel LLP, New York, USA. Respondent is Janine Tedesco (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firstmanhattantrust.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2013; the National Arbitration Forum received payment on October 23, 2013.
On October 24, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <firstmanhattantrust.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@firstmanhattantrust.com. Also on October 30, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a formal Response in this proceeding but In e-mail correspondence, Respondent suggests that as it uses the term “Manhattan” to describe a part of New York City, it has a right to the domain name because it purchased the domain name before Complainant.
1. Complainant is a United States company engaged in the business of providing financial, banking, and brokerage services.
2. Complainant registered the FIRST MANHATTAN mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,506,324 registered on September 27, 1988).
3. Respondent registered the <firstmanhattantrust.com> domain name on July 14, 2012.
4. Respondent has used the disputed domain name to offer services that compete directly with Complainant’s own business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a formal response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant uses its FIRST MANHATTAN mark to provide financial, banking, and brokerage services. Complainant has registered the FIRST MANHATTAN mark with the USPTO (Reg. No. 1,506,324 registered on September 27, 1988). The Panel agrees that USPTO registration satisfies Complainant’s showing of Policy ¶ 4(a)(i) rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FIRST MANHATTAN mark. Complainant argues that Respondent’s <firstmanhattantrust.com> domain name merely adds the generic term “trust” and the gTLD “.com” to the FIRST MANHATTAN mark. The Panel agrees that a gTLD is not relevant, and that the deletion of the mark’s spacing is not a meaningful consideration in this analysis. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”). The Panel further agrees that as the term “trust” does nothing more than imply the financial and brokerage services that Complainant offers, the <firstmanhattantrust.com> domain name is confusingly similar under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FIRST MANHATTAN mark and to use it in its domain name, merely adding the word “trust”, thus implying that the domain name is an official domain name of Complainant as it relates to one of Complainant’s functions and that it will lead to an official website of Complainant dealing with that function;
(b) Respondent is using the disputed domain name is using the domain name to operate a competing business in the state of Florida;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant claims that despite registering a business under the name “First Manhattan Trust,” there is little evidence to show that Respondent has been known by this domain name in any meaningful way. Complainant attests that it has not consented to Respondent’s use of the entire FIRST MANHATTAN mark in the offering of services that compete directly with Complainant’s own business. Complainant argues that Respondent has no connection to the <firstmanhattantrust.com> domain name and has not been authorized or permitted by Complainant to use the FIRST MANHATTAN mark. Previous panels have required a threshold showing by the respondent of its rights and legitimate interests in being able to refer to itself by a confusingly similar domain name. See, e.g., PetroSkills, LLC v. Domain Privacy Service, FA1302001484744 (Nat. Arb. Forum April 5, 2013) (finding that there is an element of good faith incorporated in a respondent’s assertion that it is “commonly known” as a domain name, because “[t}he obvious intent of ¶4(c)(ii) is to afford a viable defense for a respondent who registers a domain name incorporating either his own personal name or a business or trade name. . .[t]his defense does not extend to a respondent who registers and uses a domain name that incorporates the name or mark of another with the intent to trade on the fame or reputation of that other, even if the respondent is able to register that name as a trade or business entity name.”). The Panel thus agrees that there is nothing to suggest that Respondent is legitimately known by the <firstmanhattantrust.com> domain name under Policy ¶ 4(c)(ii);
(e) Complainant next argues that Respondent is using the FIRST MANHATTAN mark to operate a competing business in the state of Florida. Complainant further claims that the company appears to be a shell as no reports or tax returns appear to have been filed. Complainant suggests that Respondent appears to be using this domain name for no reason other than to carry on some illegitimate and competitive business. The Panel notes that the <firstmanhattantrust.com> domain name resolves to a website wherein there is a discussion about “First Manhattan Trust” and the advantages of investing through Respondent. Previous panels have determined that the respondent was without a bona fide offering, or noncommercial or fair use, when the domain name was used to promote a business in direct competition with the complainant. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). The Panel thus agrees that the <firstmanhattantrust.com> domain name is not being used in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use;
(f) Complainant also suggests that as Respondent offered to sell Complainant its entire business, including this <firstmanhattantrust.com> domain name, for $500,000.00, Respondent lacks rights and legitimate interests in the domain name. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that an offer to sell a domain name in excess of the out-of-pocket expenses incurred in maintaining the domain name was evidence that the respondent had no true rights or legitimate interests. The Panel here agrees that Respondent lacks all Policy ¶ 4(a)(ii) rights and legitimate interests in the <firstmanhattantrust.com> domain name.
All of these matters go to make out the prima facie case against Respondent. In response, Respondent has sent email communications to the Forum in which it says in substance that the domain name features a geographic indicator, namely the name of the Borough of Manhattan in New York and that consequently Respondent is entitled to the domain name incorporating that place. It is clear, however, that as it has included the word “trust” in its domain name and is echoing the name of a company, namely Complainant, Respondent is not invoking the geographic region of Manhattan in its domain name but the name of Complainant.
As Respondent has not filed a formal Response and as the email correspondence referred to contains nothing that would rebut the prima facie case against Respondent, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s offer to sell the <firstmanhattantrust.com> domain name for $500,000.00 evidences Respondent’s bad faith. The Panel agrees that if such an offer was made, the offer is clearly in excess of Respondent’s out-of-pocket expenses and evidences Policy ¶ 4(b)(i) bad faith. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Secondly, Complainant argues that Respondent’s use of the <firstmanhattantrust.com> domain name to promote competing financial services is evidence of Policy ¶ 4(b)(iii) bad faith commercial disruption. The Panel again notes that the domain name resolves to a website promoting Respondent’s purported financial services business. See Compl., at Attached Ex. E. Previous panels have found Policy ¶ 4(b)(iii) bad faith when a domain name is used for the promotion of a directly competing business. See, e.g., DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel here likewise finds that Respondent’s use of the <firstmanhattantrust.com> domain name evidences Policy ¶ 4(b)(iii) bad faith.
Thirdly, Complainant argues that Respondent has put a website on the <firstmanhattantrust.com> domain name that suggests it offers services similar to those offered under the FIRST MANHATTAN mark. Complainant attests that this competing use creates a likelihood that Internet users may confuse Complainant as a source or affiliate of the competitive business. The Panel again notes that while Complainant is “First Manhattan Co.” the disputed domain name resolves to a website promoting the services of a “First Manhattan Trust” business. See Compl., at Attached Exs. C, E. The Panel agrees that Respondent’s competing use of the <firstmanhattantrust.com> domain name is in Policy ¶ 4(b)(iv) bad faith as there is a likelihood that Internet users who visit the confusingly similar domain name will conduct business with Respondent in the belief that they are paying for services that are authorized or affiliated with Complainant and the FIRST MANHATTAN mark. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Fourthly, Complainant claims that Respondent knew or should have known of Complainant’s business given the fact that both parties apparently operate in New York. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Fifthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the FIRST MANHATTAN mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firstmanhattantrust.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 28, 2013
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