Thomson Reuters Global Resources Unlimited Company v. Satoshi Nakamoto / Crypto Consultants
Claim Number: FA1801001765557
Complainant is Thomson Reuters Global Resources Unlimited Company (“Complainant”), represented by Thomas Walsh of MontaguLaw, P.C., New York, USA. Respondent is Satoshi Nakamoto / Crypto Consultants (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reutersfinancial.com> (the Domain Name), registered with NameCheap, 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2018; the Forum received payment on January 5, 2018.
On January 5, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <reutersfinancial.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 January 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2018 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@reutersfinancial.com. Also on January 8, 2018, 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 February 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarised as follows:
Complainant, a leading provider of information for business and professionals, is, through one of the Companies in its group, the owner of the trade mark REUTERS in many countries of the world including in the USA with first use recorded on that registration as 1942. The reuters.com domain name used by Complainant was registered in 1993.
The Domain Name, registered in 2017, is confusingly similar to the Reuters trade mark fully incorporating Complainant’s mark. The addition of a generic term such as ‘financial’ does not negate a finding of confusing similarity. Indeed since ‘financial’ relates to the financial information and news services offered by Complainant it increases the likelihood of confusion.
Respondent has no rights or legitimate interests in relation to the Domain Name. Respondent is not commonly known by the Domain Name and has no relationship with or permission from Complainant to use the Domain Name. The Domain Name refers to Complainant, has no other meaning and, therefore, there cannot be any bona fide offering of goods and services or innocent explanation for use by anyone other than Complainant.
The Domain Name has been used for pay per click links pointing to third party services some of which compete with Complainant. The reutersfinancial.com name is displayed prominently at the top of the site displaying the links in a deliberate attempt to confuse Internet users for commercial gain and to disrupt Complainant’s business. This is registration and use in bad faith and the very use of the Domain Name by someone with no connection with Complainant would be opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding
Complainant, a leading provider of information for business and professionals is, through one of the Companies in its group, the owner of the trade mark REUTERS in many countries of the world including in the USA with first use recorded on that registration as 1942.
The Domain Name has been used for pay per click links pointing to third party services some of which compete with 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 shall 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 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.”).
Identical and/or Confusingly Similar
The Domain Name consists of Complainant's REUTERS mark registered , inter alia in the USA (with first use recorded as 1942), the generic word ‘financial’ and the gTLD .com.
The addition of generic words fails to sufficiently distinguish domain names from registered marks. See Arthur Guinness Son & Co. (Dublin) Ltd v Healy/BOSTH, D2001-0026 (WIPO Mar 23, 2001)(finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term). Indeed as Complainant provides financial news the word ‘financial’ may increase confusion when used with Complainant’s REUTERS mark.
The gTLD .com does not serve to distinguish the Domain Name from Complainant’s REUTERS mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Respondent does not appear to be commonly known by the Domain Name, and he is not making a legitimate non commercial or fair use of it. The site attached to the Domain Name appears to be set up for commercial benefit to compete with Complainant using the latter's intellectual property rights to make a profit by pointing to third party links unconnected with Complainant which is not bona fide use. See ALPITOUR SpA v Albloushi FA 888651 (Forum Feb 26, 2007) (rejecting Respondent's contentions of rights and legitimate interests because Respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and services under the Policy. ) There is no permission from Complainant to Respondent to use Complainant’s mark.
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent's use of the site connected to the Domain Name is commercial and he is using it to profit from linking to third party web sites in a confusing manner. The use of the Domain Name to point to competitors of Complainant shows that it is likely that Respondent is aware of Complainant and its business. The Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of his web site. (See Dovetail Ventures LLC v Klayton Thorpe, FA 1506001625786 (Forum Aug 2, 2015)(holding that Respondent had acted in bad faith under Policy 4(b)(iv) where it used the disputed domain name to host a variety of hyperlinks unrelated to Complainant’s business through which Respondent presumably gained).
Further it has been held that such use is disruptive under Policy 4 (b)(iii) of the Policy. See Adriana Inc v Moniker Privacy services, FA 1503001610020 (Forum May 1, 2015)(Using pay per click links redirecting users to competing web sites to disrupt and compete with a Complainant’s business is evidence of bad faith registration and use under Policy 4 (b)(iii).)
As such, the Panel holds that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Policy 4 (b)(iii) and (iv). There is no need to consider any additional grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <reutersfinancial.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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