The Motley Fool Holdings, Inc. v. Thomas Gould
Claim Number: FA1707001740574
Complainant is The Motley Fool Holdings, Inc. (“Complainant”), represented by Michael C. Bleicher of Cooley LLP, District of Columbia, USA. Respondent is Thomas Gould (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <motleyfool.com.co>, registered with CCI REG S.A.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Paul M. DeCicco, Hector A. Manoff and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on July 18, 2017; the Forum received payment on July 18, 2017.
On July 19, 2017, CCI REG S.A. confirmed by e-mail to the Forum that the <motleyfool.com.co> domain name is registered with CCI REG S.A. and that Respondent is the current registrant of the name. CCI REG S.A. has verified that Respondent is bound by the CCI REG S.A. 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 July 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2017 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@motleyfool.com.co. Also on July 20, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Paul M. DeCicco, Hector A. Manoff and Dennis A. Foster (Chair) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant, The Motley Fool Holdings, Inc., is a registered corporation in Delaware, with a principal place of business in Virginia. Complainant provides online information, webinars, podcasts, and electronic newsletters relating to a wide array of financial subjects.
- Complainant registered its THE MOTLEY FOOL service mark with the United States Patent and Trademark Office (“USPTO”) and other international trademark authorities in connection with its business. Since 1993, Complainant has used and expended substantial resources in promoting its THE MOTLEY FOOL mark. Moreover, Complainant operates online through its registered domain name <fool.com>.
- The disputed domain name, <motleyfool.com>, is nearly identical and certainly confusingly similar to Complainant's THE MOTLEY FOOL service mark. The subtraction of "The" and addition of the combined gTLD, and ccTLD, .com.co, do not provide meaningful distinction between the name and the mark.
- Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to make any use of THE MOTLEY FOOL service mark. Based on all available evidence, Respondent is not commonly known by the disputed domain name.
- Respondent’s use of the disputed domain name does not evince any bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, competing services are advertised on the resolving website, all while the website masquerades as being associated with or sponsored by Complainant by inclusion of Complainant's distinctive service mark on a primary webpage.
- The disputed domain name was registered and is being used in bad faith. The incorporation of the main elements of Complainant’s mark in the name, and the competitive use of the resolving website speak to Respondent’s actual knowledge of Complainant when it registered and subsequently used the disputed domain name, which constitutes bad faith. Moreover, Respondent’s inclusion of competing advertisement links on the resolving website suggests an intentional attempt to confuse internet users for commercial gain with respect to Complainant's internationally well-known mark.
B. Respondent
- Respondent failed to submit a Response in this proceeding.
Domiciled in the United States of America, Complainant is a well-established company that offers online services in various formats relating to a wide range of financial fields. In connection with its offerings, Complainant has registered with the USPTO, among other authorities, its THE MOTLEY FOOL service mark (e.g., Reg. No. 1,953,034; registered on Jan. 30, 1996).
The disputed domain name, <motleyfool.com>, was registered on May 4, 2017 by Respondent. The name is used to host a website that contains references to Complainant's mark and services, but offers links to services provided by competitors of Complainant.
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 will decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 (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.”).
Having provided the Panel with clear evidence of its extensive use of, and USPTO registration for, THE MOTLEY FOOL service mark, Complainant has complied with the requirement under Policy ¶ 4(a)(i) that it possess rights in that mark. See True Value Co. v. Wetters, FA 1420219 (Forum Jan. 17, 2012) (“...the Panel finds that Complainant has established its rights in the TRUE VALUE mark under Policy ¶ 4(a)(i) by registering it with the USPTO.”); see also Intagent LLC v. Dominor LLC, D2008-1878 (WIPO Jan. 29, 2009) ("Complainant has demonstrated rights in the service mark INTAGENT based on use in commerce and as evidenced by registration at the USPTO.").
The disputed domain name, <motleyfool.com.co>, is not identical to Complainant's THE MOTLEY FOOL service mark. However, the Panel views the differences as minor. Certainly, the name contains the dominant terms, motley and fool, found in the mark, and the deletion of the article, the, and the addition of the combination gTLD/ccTLD, .com.co, does not prevent confusing similarity between the two. As a result, the Panel determines that the disputed domain name is confusingly similar to the Complainant's mark. See WP Company LLC v. Jestin Coler, FA 1636671 (Forum Oct. 26, 2015) (finding <washingtonpost.com.co> to be confusingly similar to the mark THE WASHINGTON POST); see also The White Company (UK) Limited v. Moshgul Begum, DCO2011-0008 (WIPO Mar. 11, 2011) (finding <whitecompany.co> to be confusingly similar to the mark THE WHITE COMPANY).
The Panel finds that Complainant has satisfied the first element required under the Policy.
Following the consensus view held in many prior UDRP rulings, the Panel accepts that Complainant need establish only a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name before shifting the burden upon Respondent to rebut that proposition. See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Complainant makes out a prima facie case by claiming that it has never authorized Respondent to use its THE MOTLEY FOOL trademark. As noted above, Respondent has failed to furnish a Response, leaving the Panel to discern from the record whether there exists a convincing rebuttal to Complainant's prima facie case. The record includes Complainant's contention, accepted by the Panel, that the disputed domain name is used to host a website that offers services competitive with those of Complainant, while suggesting that the website is somehow affiliated or sponsored by Complainant, which it is not. In line with the reasoning articulated in prior Policy decisions, the Panel concludes that such use fails to constitute either a bona fide offering of goods or services per Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the name per Policy ¶ 4(c)(iii). See Google Inc. v. Maxim / Lebedev, FA 1506108 (Forum Sept. 2, 2013) ("By using a logo that is very similar to, and uses the same custom typeface as, Complainant’s ANDROID logo, Respondent attempts to pass himself off as Complainant. This 'is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).'"); see also Alcon Labs., Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) ("The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). "). Finally, the Panel finds no reason to believe that Respondent, Thomas Gould, is commonly known as the disputed domain name, <motleyfool.com.co>, and thus Policy ¶ 4(c)(ii) is inapplicable as well.
As the record reveals no effective rebuttal to Complainant's prima facie case, the Panel finds that Complainant has satisfied the second element required under the Policy.
Policy ¶ 4(b)(iv) specifies a circumstance that would give rise to a finding of bad faith registration and use of a domain name, as follows:
by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to the respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on that website or location.
The Panel has accepted Complainant's contention that the disputed domain name, which has been found to be confusingly similar to Complainant's valid service mark, is used to host a website that incorrectly suggests an association with Complainant's mark and presents links to services that compete directly with those provided by Complainant. The Panel believes that such misrepresentation and redirection is an intentional attempt by Respondent to gain commercially, either directly or through pay-per-click fees, by confusing internet users as to the “source, sponsorship, affiliation or endorsement of Respondent’s website” with respect to Complainant's mark. As such, the Panel determines that the Policy, at ¶ 4(b)(iv), is applicable to this case, and that the disputed domain name was registered and is being used in bad faith. See Agility Public Warehousing Co. v. Vu Anhquang, FA 1736852 (Forum July 17, 2017) ("A respondent’s use of disputed domain names to direct Internet users to a website which competes with the complainant is evidence of bad faith pursuant to Policy ¶ 4(b)(iv)."); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000).
Finally, Respondent registered <motleyfool.com> knowing that Complainant had trademark rights in THE MOTLEY FOOL trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to offer services in competition with those offered by Complainant. It is thus clear that Respondent intentionally registered the domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <motleyfool.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").
The Panel finds that Complainant has satisfied the third element required under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <motleyfool.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Chair
Paul M. DeCicco, Panelist
Hector A. Manoff, Panelist
Dated: August 30, 2017
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