Unbiased Ltd trading as unbiased.co.uk v. Anthony Foulger / Accountant Brokers Ltd
Claim Number: FA1501001599868
Complainant is Unbiased Ltd trading as unbiased.co.uk (“Complainant”), United Kingdom. Respondent is Anthony Foulger / Accountant Brokers Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unbiased.uk.com>, registered with Namesco Limited.
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.
Paul M. DeCicco, as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and that mediation process was terminated since.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2015; the National Arbitration Forum received payment on January 15, 2015.
On January 22, 2015, Namesco Limited confirmed by e-mail to the National Arbitration Forum that the <unbiased.uk.com> domain name is registered with Namesco Limited and that Respondent is the current registrant of the name. Namesco Limited has verified that Respondent is bound by the Namesco Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Domain Name Dispute Resolution Policy (the “Policy”).
On January 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2015 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@unbiased.uk.com. Also on January 23, 2015, 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.
A timely Response was received and determined to be complete on February 2, 2015.
On February 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant provides an array of marketing and advertising services related to connecting consumers with professional financial advisors under its UNBIASED.CO.UK trade and design marks. The mark is recognized by the United Kingdom’s Intellectual Property Office (“UKIPO”) (e.g., Reg. No., 3,012,853, registered Oct. 11, 2013; Reg. No. 2,422,000, registered Mar. 23, 2007).
The <unbiased.uk.com> domain name is confusingly similar to Complainant’s mark in that Respondent played upon the mark in electing to register a “.uk.com” domain name when Internet users would ordinarily use the “.co.uk” protocol to reach Complainant’s real legitimate business offerings.
Respondent has no right or legitimate interest in the <unbiased.uk.com> domain name. First, Respondent does not appear to ever have been commonly known by this <unbiased.uk.com> domain name and is not licensed by Complainant to do business under the UNBIASED.CO.UK trademark. Respondent uses the <unbiased.uk.com> domain name to create a website similar to Complainant’s yet with hyperlinks that all resolve to Respondent’s independent business in offering brokering services.
Respondent registered or is using this <unbiased.uk.com> domain name in bad faith. Respondent is capitalizing on likelihood that Internet users will associate this domain name with Complainant’s legitimate UNBIASED.CO.UK business.
B. Respondent
Respondent contends as follows:
Respondent operates a legitimate business through the <unbiased.uk.com> domain name. The essence of Complainant’s trademark is the very generic term “unbiased,” and Complainant cannot portend to hold an ironclad dominion over any use of the term “unbiased” on the Internet. Respondent was unable to obtain registration of its specific mark for financial services, and had to obtain more specific classifications.
Respondent did not act in bad faith. In the United Kingdom a law differentiates Independent Financial Advisors (“IFAs”) who do not take commissions and provide advise based on the whole of the mark, and Restricted Financial Advisors (“RFAs”) who may take fees and are far less regulated. Respondent’s offerings relate only to IFAs.
Respondent acknowledges that Complainant is its competitor in the marketplace. Respondent believes that its good faith offerings are to the benefit of the public. Complainant claims to be “unbiased” in its own trademark, but then sends users to RFAs whose sole objective is to accrue sizable fees off of each investor—the RFA has little reason at all to care about whether the investment is good for the long-term wellbeing of the consumer, the RFA need only secure short-term gains that widens the wallet of the RFA.
The <unbiased.uk.com> domain name was registered January 11, 2012.
Complainant has rights in the UNBIASED.CO.UK mark through its registration of such mark with the UKIOP.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address to a website offering financial advisor referral services.
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.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s trademark is registered with the UKIPO (e.g., Reg. No., 3,012,853, registered Oct. 11, 2013; Reg. No. 2,422,000, registered Mar. 23, 2007). Such registration satisfies the CDRP Policy ¶ 4(a)(i) requirement that Complainant’ must show rights in a trademark. See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to [UDRP] ¶ 4(a)(i).”).
Respondent’s at-issue domain name contains the root of Complainant’s trademark, UNBIASED, with the “.uk.com” substituted for the “.co.uk” top level like trademark component. The differences between the domain name and Complainant’s trademark is not sufficient to create any meaningful distinction between the two under CDRP Policy ¶ 4(a)(i). Therefore the Panel concludes that Respondent’s <unbiased.uk.com> domain name is confusingly similar to Complainant’s UNBIASED.CO.UK trademark. See, e.g., NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no CDRP Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Anthony Foulger / Accountant Brokers Ltd” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <unbiased.uk.com> domain name. Indeed, Respondent admits that it is not called by the <unbiased.uk.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to CDRP Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore, although Respondent claims a legitimate business use for the domain name Respondent uses the <unbiased.uk.com> domain name to create a website that offers links to Respondent’s business, a business which Respondent admits competes with Complainant. Using the confusingly similar trademarked domain name in this manner is neither a bona fide offering of goods or services under CDRP Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under CDRP Policy ¶ 4(c)(iii).
Given the forgoing, Complainant satisfies its initial burden under CDRP Policy ¶4(a)(ii) and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the CDRP Policy.
The evidence presented by Complainant and Respondent makes it clear that Respondent was aware of Complainant and its trademark at the time Respondent registered the at-issue domain name. Nowhere in its Response does Respondent deny such knowledge. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark prior to the domain name’s registration; from Respondent’s activities in an area of commerce that is similar to that of Complainant’s advertising and referral services; from Respondent’s past dealings with Complainant’ related to the domain name; and from the fact that the at-issue domain name’s second level is identical to the first term in Complainant’s trademark, “unbiased,” and its top level, “uk.com,” is remarkably similar to the “co.uk” second term in Complainant’s registered mark. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit any trademark value it might have acquired through its prior use in commerce by Complainant, rather than for some benign reason. The fact that a portion of the trademark may have been generic and has concomitant descriptive qualities along with its trademark value does not negate Complainant’s trademark rights. Importantly, Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the <unbiased.uk.com> domain name in bad faith pursuant to CDRP Policy ¶ 4(a)(iii). See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Additionally, Respondent’s domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name. The domain name registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services, or not notice the differences when presented with the typo-laden mark in a search engine or other Internet context. Having mistyped an intended mark and typed its intentionally malformed version, Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited. Here, Respondent simply mixes up a few trailing letters in Complainant’s trademark to form the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <unbiased.uk.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 16, 2015
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