TD Ameritrade IP Company, Inc. v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA1804001781032
Complainant is TD Ameritrade IP Company, Inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advisor-client.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on April 10, 2018; the Forum received payment on April 10, 2018.
On April 11, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <advisor-client.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 7, 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@advisor-client.com. Also on April 17, 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 May 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 uses its ADVISORCLIENT mark in connection with the provision of financial investment and account information, and a web-based platform enabling investment advisors and their clients to view personalized financial investment and account information. Complainant registered its ADVISORCLIENT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,358,090) on June 25, 2013. Respondent’s <advisor-client.com> domain name (the “Domain Name”) is confusingly similar to Complainant’s mark since it contains the ADVISORCLIENT mark, merely adding a hyphen between “advisor” and “client,” and the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not licensed or permitted Respondent to use its mark. Further, Respondent does not use the Domain Name in connection with a bona fide offering of goods or services, but instead uses it for a web site offering click-through links to products and services that compete with Complainant’s services.
Respondent registered and is using the Domain Name in bad faith by registering a domain name confusingly similar to Complainant’s mark in an attempt to disrupt Complainant’s the business. Further, Respondent’s bad faith is evidenced by Respondent’s use of the Domain Name to misdirect Complainant’s customers and potential customers to a web site that contains links to third-party web sites offering goods and services that compete with Complainant’s business, or links purportedly to Complainant’s own website, for Respondent’s commercial gain.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant registered its ADVISORCLIENT mark with the USPTO (Registration 4,358,090) on June 25, 2013. See, Complaint Annex B. This registration is sufficient to demonstrate Complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s Domain Name is confusingly similar to the ADVISORCLIENT mark, as it incorporates the two words comprising it verbatim, merely adding a hyphen between them, and the gTLD “.com.” These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).
Based upon the forgoing, the Panel finds that the Domain Name is confusingly similar to the ADVISORCLIENT mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not licensed or authorized Respondent to use its mark for any purpose whatever, and (ii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it resolves to a web site that contains links to third-party web sites which offer services similar to those offered by Complainant. It also contains links that purport to take the visitor to Complainant’s web sites but in fact do not. These allegations are supported by competent evidence. Complainant has specific competence to state that it has not licensed or authorized Respondent to use its mark for any purpose and this statement is unchallenged by any evidence before the Panel.
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product of service on your web site or location.
Respondent’s use of the Domain Name as demonstrated by the evidence discussed above in connection with the rights or legitimate interests analysis also demonstrates its bad faith. It is clear from that evidence that Respondent is using the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's ADVISORCLIENT mark as to the source, sponsorship, affiliation, or endorsement of Complainant. Respondent is obtaining commercial gain from its use of the Domain Name and its resolving web site. When a visitor to this web site clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the web site owners get from being linked to its web site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, supra, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-through fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Id. The respondent’s website offered pay-per-click links to hunting equipment and related items. Id. The Panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its Domain Name results from pay-per-click links and by itself constitutes commercial gain. Furthermore, and similar to the facts in AllianceBernstein and Brownells, Respondent’s use of the Domain Name and its web site results in a commercial gain for others by forwarding visitors to third parties. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for himself and the various website owners who are forwarded from the links at the Domain Name. There is no other rational explanation for Respondent having registered and maintained the Domain Name and resolving it to a pay-per-click site with commercial links. Respondent’s use of the Domain Name is commercial because the various companies forwarded from the website benefit from the subsequent interest and purchases of those who visit the site. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Using a Domain Name that trades upon the goodwill of a complainant for commercial gain is manifest evidence of bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <client-advisor.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
May 14, 2018
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