Thomson Reuters Global Resources v. Matthew Krawitz
Claim Number: FA1403001548336
Complainant is Thomson Reuters Global Resources (“Complainant”), represented by Alexandre A. Montagu of MontaguLaw, P.C., New York, USA. Respondent is Matthew Krawitz (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rueters.co>, registered with GODADDY.COM, INC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2014; the National Arbitration Forum received payment on March 12, 2014.
On March 13, 2014, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <rueters.co> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. 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 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2014 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@rueters.co. Also on March 17, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.
2. Respondent does not have any rights or legitimate interests in the <rueters.co> domain name.
3. Respondent registered and uses the <rueters.co> domain name in bad faith.
B. Respondent failed to submit a Response.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has sufficiently proven its rights in the REUTERS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <rueters.co> domain name is an intentional misspelling of the famous REUTERS mark that fails to differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant asserts that Respondent is not commonly known by the <rueters.co> domain name. Complainant claims that Respondent has no relationship with or permission from Complainant for the use of its mark. Complainant contends that Respondent has not been given a license by Complainant to use the mark. The Panel notes that the registrant of the disputed domain name is “Matthew Krawitz.” In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the <rueters.co> domain name according to Policy ¶ 4(c)(ii).
Complainant contends that Respondent has used the <rueters.co> domain name to pass itself off as Complainant in a blatant attempt to cause consumer confusion. The Panel notes that Respondent’s disputed domain name links to a website that is similar in appearance to Complainant’s website and contains a fabricated story designed to confuse consumers. Past panels have held that a respondent’s use of the disputed domain name in an attempt to pass itself off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Thus, the Panel finds that Respondent is not using the <rueters.co> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent displays the REUTERS mark prominently on the top of the page of the website at <rueters.co>, along with the same coloring and look and feel on Complainant’s website. The Panel again notes that Respondent’s disputed domain name leads to a website which is nearly identical in appearance to Complainant’s website, from which Respondent no doubt commercially profits. The Panel finds that Respondent has attempted to pass itself off as Complainant on its disputed domain name, and has registered and is using the <rueters.co> domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant asserts that, given the fame of the REUTERS mark and the registration of the <rueters.co> domain name by a person with no connection to Complainant, Respondent’s conduct can only be viewed as opportunistic bad faith. The Panel agrees and finds that Respondent has registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000), the panel found bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant.”
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rueters.co> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 21, 2014
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