Edelman Financial Services, LLC v. Krystina Puzluska / BAL
Claim Number: FA1410001586705
Complainant is Edelman Financial Services, LLC (“Complainant”), represented by Stephen J. Jeffries of Holland & Knight LLP, District of Columbia, USA. Respondent is Krystina Puzluska / BAL (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <edelmanfinancialservices.com>, registered with Fabulous.com Pty Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2014; the National Arbitration Forum received payment on October 24, 2014.
On October 26, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <edelmanfinancialservices.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@edelmanfinancialservices.com. Also on October 27, 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 November 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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 makes the following allegations:
i. Complainant owns the EDELMAN FINANCIAL SERVICES mark through its trademark registration with the United States Patent and Trademark Office (Reg. No. 1,880,034, registered February 21, 1995).
ii. Complainant uses the mark in connection with its business as a personal financial planner.
iii. Complainant operates online through the <edelmanfinancial.com> domain name.
i. Policy ¶ 4(a)(i)
1. The <edelmanfinancialservices.com> domain name is confusingly similar to Complainant’s mark, because Respondent has simply removed the spaces between the words of the mark and added a generic top-level domain (“gTLD”).
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to register or use the disputed domain name.
3. Respondent does not provide any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent’s disputed domain name resolves to a website featuring links to third party websites that are not associated with Complainant, including some links to the websites of competing businesses.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to intentionally attract Internet users to its own website site for commercial gain.
2. Respondent had knowledge of Complainant’s rights in the EDELMAN FINANCIAL SERVICES mark, due to the well-known status of the mark.
B. Respondent
Respondent did not submit a Response in this proceeding. Respondent registered the disputed domain name on October 13, 2004.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.”).
Complainant uses the EDELMAN FINANCIAL SERVICES mark in connection with its business as a personal financial planner. Complainant claims to own the mark through its trademark registration with the USPTO (Reg. No. 1880034, registered February 21, 1995). Complainant argues that such registration is sufficient to establish its rights in the mark pursuant to Policy ¶ 4(a)(i) requirements, even though Respondent is located in Germany. Complainant’s argument is supported by previous UDRP decision. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, even though the record indicates that Respondent operates in Germany, the Panel finds that Complainant’s USPTO registration satisfies the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <edelmanfinancialservices.com> domain name is confusingly similar to Complainant’s EDELMAN FINANCIAL SERVICES mark because Respondent has simply removed the spaces from the mark and added the gTLD “.com.” Previous panels have generally found that a domain name differing by only the omission of spaces and the affixation of a gTLD are irrelevant to the Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). As such, the Panel finds that the <edelmanfinancialservices.com> domain name is confusingly similar to Complainant’s EDELMAN FINANCIAL SERVICES mark pursuant to Policy ¶ 4(a)(i) analysis.
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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <edelmanfinancialservices.com> domain name. The Panel notes that the WHOIS information identifies “Krystina Puzluska” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use its mark. The Panel recalls that Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <edelmanfinancialservices.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent currently uses the disputed domain name to resolve to a website featuring links to third party websites that are not associated with Complainant, including some links to the websites of competing businesses. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was used to promote competing businesses. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, the Panel finds that Respondent’s current use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Complainant argues that Respondent uses the disputed domain name to intentionally divert Internet users to its own website for commercial gain. Specifically, Complainant claims that Respondent uses the links posted on the disputed domain name to receive “pay-per-click” fees. Generally, panels have held that such behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Thus, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Due to the well-known status and fame of Complainant’s EDELMAN FINANCIAL SERVICE mark, Complainant argues that Respondent must have had constructive or actual knowledge of Complainant’s rights in the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <edelmanfinancialservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 4, 2014
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