Third Point LLC v. joseph noel / Emerging Growth Research
Claim Number: FA1412001592727
Complainant is Third Point LLC (“Complainant”), represented by Stacy Grossman of Law Office of Stacy J Grossman, New York, USA. Respondent is joseph noel / Emerging Growth Research (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thirdpointresearch.com>, registered with Godaddy.Com, Llc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2014; the National Arbitration Forum received payment on December 1, 2014.
On December 3, 2014, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <thirdpointresearch.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 December 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 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@thirdpointresearch.com. Also on December 8, 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 December 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Complainant owns the THIRD POINT mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3425275, registered May 13, 2008).
ii. Complainant uses the THIRD POINT mark in connection with its business as an investment advisor based in New York.
iii. Complainant operates online through a variety of domain names, including <thirdpoint.com>.
i. Policy ¶ 4(a)(i)
1. The <thirdpointresearch.com> domain name is confusingly similar to Complainant’s THIRD POINT mark, because Respondent has simply added the generic term “research” to the mark.
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 <thirdpointresearch.com> domain name. Complainant has not licensed or authorized Respondent to use the THIRD POINT mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent is using the disputed domain name to pass itself off as Complainant.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to intentionally attract Internet users to its own website by creating a likelihood of confusion as to its relationship with Complainant.
2. Due to the fame of Complainant’s THIRD POINT mark and the obvious connection between the disputed domain name and Complainant’s business, Respondent must have had actual knowledge when registering the disputed domain name.
1. Respondent’s <thirdpointresearch.com> domain name is confusingly similar to Complainant’s THIRD POINT mark.
2. Respondent does not have any rights or legitimate interests in the <thirdpointresearch.com> domain name.
3. Respondent registered or used the <thirdpointresearch.com> 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 THIRD POINT mark in connection with its business as an investment advisor based in New York. Complainant claims to own the THIRD POINT mark through its trademark registrations with the USPTO (e.g., Reg. No. 3425275, registered May 13, 2008). Complainant argues that such registrations are sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decision. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant’s trademark registrations with the USPTO are sufficient to satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <thirdpointresearch.com> domain name is confusingly similar to Complainant’s THIRD POINT mark because Respondent has simply added the generic term “research” to the mark. The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com” and the omitted space between the words of the mark. Previous panels have generally found that a domain name differing from a mark by only the addition of a single generic term does not escape confusing similarity and that the affixation of a gTLD and removal of space between the words of a mark are irrelevant changes to the mark under the Policy ¶ 4(a)(i) analysis. See 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 Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity). As such, the Panel finds that Respondent’s <thirdpointresearch.com> domain name is confusingly similar to Complainant’s THIRD POINT mark pursuant to Policy ¶ 4(a)(i).
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 <thirdpointresearch.com> domain name. The Panel notes that the WHOIS information identifies “Joseph Noel” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the THIRD POINT 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 <thirdpointresearch.com> domain name pursuant to Policy ¶ 4(c)(ii) See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the 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 argues that Respondent uses the disputed domain name to pass itself off as Complainant. The Panel notes that Complainant has submitted a screenshot of both Complainant’s website and Respondent’s website to demonstrate the similarities between the two websites. See Complainant’s Ex. B and G. The Panel decides that the websites are so similar that it appears that Respondent is attempting to pass itself off as Complainant, and the Panel holds that Respondent lacks rights or legitimate interests under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In so arguing, Complainant claims that Respondent is using the disputed domain name to intentionally attract Internet users to its own website by creating a likelihood of confusion as to its relationship with Complainant. The Panel recalls that Complainant has submitted screenshots of both parties’ websites to demonstrate the similarity between the two. Generally, Panels have held that this behavior constitutes bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Thus, the Panel finds evidence of bad faith in this behavior under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that due to the fame of Complainant’s THIRD POINT mark and the obvious connection between Respondent’s website and Complainant’s business, it is obvious that Respondent had actual knowledge of Complainant and its rights in the THIRD POINT mark when it registered the <thirdpointresearch.com> domain name. The Panel agrees that the now common trend is to only find bad faith where it can be shown that the respondent had actual knowledge of the complainant and the complainant’s mark, rather than just constructive knowledge. As such, in this case, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the THIRD POINT mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See 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); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject 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 <thirdpointresearch.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 12, 2014
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