AMUNDI PIONEER ASSET MANAGEMENT USA, INC. v. John Hrusovszky
/ Gold Rush Hosting Solutions, LLC
Claim Number: FA1811001815000
Complainant is AMUNDI PIONEER ASSET MANAGEMENT USA, INC. (“Complainant”), represented by Anthony C. Topper of Cesari & McKenna LLP, Massachusetts, USA. Respondent is John Hrusovszky / Gold Rush Hosting Solutions, LLC (“Respondent”), represented by Matthew D. Rowe of Ruder Ware, L.L.S.C., Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mypioneerinvestments.com> (the “Disputed Domain Name”), 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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 5, 2018; the Forum received payment on November 5, 2018.
On November 7, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <mypioneerinvestments.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 November 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@mypioneerinvestments.com. Also, on November 14, 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.
A timely Response was received and determined to be complete on December 10, 2018.
On December 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed 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.
Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Amundi Pioneer Asset Management USA, Inc., is part of the Amundi group. The Amundi group operates in at least 37 countries, with over $1.6 trillion under management, and serves over 100 million retail, corporate and institutional customers.
Complainant holds registered marks for the trademark PIONEER INVESTMENTS (Complainant’s Mark) in nine countries, including the United States, US registration number 2382365, issued September 5, 2000, for “mutual fund distribution and brokerage services, investment counseling services and mutual fund administration and investment advisory services.”
Complainant has used Complainant’s Mark in commerce since at least January 25, 1999.
Complainant operates a website at the domain name <pioneerinvestments.com> where potential customers can view information about complainant’s investments offerings and services. Complainant’s investments offerings include numerous mutual funds as well as investment advisory services for individual, corporate and institutional investors.
The Disputed Domain Name is confusingly similar to Complainant’s Mark in that the Disputed Domain Name incorporates the entirety of Complainant’s Mark and merely adds a generic, nondistinctive, suffix “my”, which is insufficient to avoid confusion.
Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. Complainant has not authorized, license, or permitted Respondent to use Complainant’s Mark. And, Respondent cannot be considered to have used the Disputed Domain Name in connection with a bona fide offering of goods and services because Respondent is trading on Complainant’s Mark in order to solicit business for closely related services and is not, therefore, a bona fide offering of goods and services.
Further, there is no indication that Respondent is commonly known as “mypioneerinvestments.” The website to which the Disputed Domain Name directs (“Respondent’s Website”) indicates that Respondent is doing business as certified financial planner Lawrence Nack. The WHOIS information for the disputed domain name that lists John Hrusovszky and Gold Rush Hosting Solutions, LLC, as the registrant and the registrant’s organization. Thus, none of the names associated with the Disputed Domain Name are remotely similar to each other or with the Disputed Domain Name itself, and further, Respondent is required to show that it was known by the Disputed Domain Name prior to registering the domain.
Moreover, even if Respondent has some relationship to the expression “mypioneerinvestments”, the Policy does not allow Respondent to register and use a domain name that trades upon the fame or reputation of another’s mark by misappropriating the mark.
Further, there is no indication that the Disputed Domain Name is being used for a legitimate non-commercial purpose.
Respondent has registered and is currently using the Disputed Domain Name in bad faith by attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s Mark, UDRP ¶ 4(b)(iv).
Attempting to derive financial benefit is evidence of bad faith.
Complainant’s Mark has achieved considerable fame. Complainant is part of a global investment management and advisory firm operating over 37 countries with over $1.6 trillion under management. Accordingly, Complainant’s PIONEER INVESTMENTS mark has achieved considerable fame.
Respondent purports to be offering investment advisory and brokerage services. It is not possible that respondent was unaware of Complainant’s reputation and trademark in mutual funds, brokerage, and investment advisory services. Where there is no possible explanation why Respondent incorporated a famous mark into its domain name, it is reasonable to conclude Respondent acted in bad faith.
Complainant asserts that Respondent registered the Disputed Domain Name in bad faith
B. Respondent
Respondent provides hosting solutions to Pioneer Bank, a Wisconsin state bank operating seven branches in small, rural communities in central Wisconsin. Pioneer Bank has for many years maintained an investment department that does business under the trade name “Pioneer Investment Center.” This investment department provides financial planning and investment services to its community bank operations. Because investments sold through the “Pioneer Investment Center” are not bank deposits, Pioneer Bank has some regulatory restrictions on its ability to incorporate the word “bank” into any reference to the investment department business or any marketing materials related thereto.
At the request of Pioneer Bank, Respondent registered the Disputed Domain Name on July 19, 2013.
Pioneer Bank asked Respondent to register the Disputed Domain Name so that Pioneer Bank could use the Disputed Domain Name in connection with Pioneer Bank’s offering of financial planning and investment services, which is a bona fide offering of goods and services. The specific words that make up the Disputed Domain Name were selected to reflect the trade name of the bank’s investment department, “Pioneer Investment Center,” as well as to reflect the bank’s own domain name, “<mypioneerbank.com>.”
Prior to receiving the complaint herein, Pioneer Bank was not aware of Complainant’s business or the business of any complainant’s predecessor-in-interest.
Pioneer Bank did not have the Disputed Domain Name registered or thereafter use the Disputed Domain Name in order to prevent the owner of any trademark or service mark from reflecting such mark in a corresponding domain name. Pioneer Bank did not have the Disputed Domain Name registered or thereafter use the Disputed Domain Name for the purpose of disrupting the business of any competitor, including, without limitation, Complainant. Furthermore, Pioneer Bank did not have the Disputed Domain Name registered or thereafter use the Disputed Domain Name for the purpose of intentionally attempted to attract, for commercial gain, Internet users to the Disputed Domain Name or any other website by creating a likelihood of confusion with any intellectual property rights of Complainant.
C. Respondent’s Additional Submission
Pursuant to Rule 12, the Panel requested additional information from Respondent, and in response, Respondent provided the following additional information:
1. Describe the nature of the relationship between Respondent and Pioneer Bank.
Respondent is in the business of providing website hosting services. Pioneer Bank has contracted with Respondent for the hosting of the <mypioneerinvestments.com>, the Disputed Domain Name. Respondent holds title to the Disputed Domain Name on behalf of Pioneer Bank. Upon receiving the Complaint in this case, Respondent tendered the Complaint to Pioneer Bank as the principal and beneficial owner of the Disputed Domain Name.
2. Describe the degree of control (if any) Pioneer Bank has with respect to the domain name <mypioneerinvestments.com>.
Respondent holds title to the Disputed Domain Name as an agent of Pioneer Bank. With respect to the Disputed Domain Name, Respondent acts at the direction of Pioneer Bank. Therefore, Pioneer Bank, as principal, has full control with respect to the Disputed Domain Name.
3. Describe more fully the nature of the relationship between Pioneer Bank and Pioneer Investment Services.
Pioneer Investment Services is a division of Pioneer Bank. Pioneer Investment Services is not a separate entity. Pioneer Bank uses the name Pioneer Investment Services for its financial advising and investment division for branding purposes and for ease of distinguishing between its banking services and its financial and investment services.
4. Describe the nature of the relationship between Pioneer Investment Services and Lawrence Nack, CFP.
Lawrence Nack, CFP (“Mr. Nack”) is an employee of Pioneer Bank (through its Pioneer Investment Service division). Mr. Nack holds the position of Investment Center Investment Executive. His primary focus is to provide financial planning information and services to Pioneer Bank’s customers, offering both bank products and investment products, including, but not limited to, individual stocks, bonds, fee based advisory accounts, mutual funds, unit investment trusts, fixed and variable annuities, and insurance products.
Complainant and Respondent both offer financial planning and related services to the public.
Complainant is the registrant of the US trademark PIONEER INVESTMENT, US registration number 2382365, issued September 5, 2000, for “mutual fund distribution and brokerage services, investment counseling services and mutual fund administration and investment advisory services.”
Respondent registered the Disputed Domain Name on behalf of its client, Pioneer Bank, and Pioneer Bank is the beneficial owner of the Disputed Domain Name.
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.
To establish the first element of the Policy, Complainant must demonstrate that it has rights in a trademark and that the Disputed Domain Name is confusingly similar thereto.
Complainant has demonstrated that it holds nine trademark registrations for the mark PIONEER INVESTMENTS, including US trademark registration number 2382365, and as such, Complainant has demonstrated that it has rights in a trademark for purposes of the Policy. See 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. . .).
Complainant has demonstrated that the Disputed Domain Name is confusingly similar to Complainant’s Mark. The Disputed Domain Name consists of the entirety of Complainant’s Mark with the additions of the “.com” generic top-level domain (“gTLD”) and the generic word “my,” which are insufficient to create a meaningful distinction. See Am. Express Co. v. Lee HyunGyu, FA126649 (Forum Nov. 25, 2002) (finding that the prefix “my” to another entity’s trademark in a domain name does not affect the domain name’s capacity to confuse); see also ESPN, Inc. v. MySportCenter.com, FA95326 (Forum Sept. 5, 2000) (finding that the domain name MYSPORTSCENTER.COM is confusingly similar SPORTSCENTER mark). See also Am. Express Co. v. MustNeed.com, FA257901 (Forum June 7, 2004) (finding AMEXTRAVEL.COM confusingly similar to 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 BBY Solutions, Inc. v Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015) (“The addition of the generic word ‘my’… does not prevent a finding that the disputed domain name and mark are identical or confusingly similar.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
As such, Complainant has established the first element of the policy.
To establish the second element of the Policy, 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant has carried its initial burden. It asserts that: 1) Respondent is not authorized to use Complainant’s Mark; 2) Respondent (John Hrusovszky / Gold Rush Hosting Solutions, LLC) is not commonly known by the Disputed Domain Name; and 3) Respondent did not register and is not using the Disputed Domain Name in connection with a bona fide offering of services because Respondent’s registration and use of the Disputed Domain Name was and is in bad faith.
Respondent argues that its principal, Pioneer Bank, is using and always has used the Disputed Domain Name in connection with a bona fide offering of services, namely, its offering of financial planning type services to the public, and in doing so, it did not act in bad faith under the Policy.[i]
In order for the offering of goods or services in connection with the use of a domain name to be considered “bona fide” for purposes of the Policy ¶4(c)(i), the registration and/or use of the domain name must not be or have been in bad faith. Said another way, no matter how commercially viable an offering of goods or services might be, it cannot be in connection with a domain name that was registered or is being used in bad faith. See Electric Mirror, LLC v. Eric Reao, FA 643238 (Forum Nov. 24, 2015) (“Whereas the sale of mirrors on the internet is a legitimate commercial activity and, in the vernacular sense, is a bona fides activity, Panel have routinely held that for purpose of the Policy a use of a disputed domain name that is in bad faith under Policy ¶4(b) precludes a finding in favor of a respondent with respect to rights to or legitimate interest in a disputed domain name under policy ¶4(c(i)).” See also Ripple Labs Inc v. NGYEN NGOC PHONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website…confusing them to believing that some sort of affiliation exists between it and complainant…[which] is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”)
In the present case, the offering of financial planning services to the public by way of the Internet is a legitimate commercial activity, but a question remains whether Respondent’s Client’s use of the Disputed Domain Name to do so is in bad faith. Some panels analyze this issue under the second element of the Policy, but this Panel believes it is best done under the third element.
This Panel has done so, as noted below, and the Panel does not find that Respondent registered or used the Disputed Domain Name in bad faith.
As such, Respondent has used the Disputed Domain Name in connection with a bona fide offering of services.
As such, Complainant has failed to establish the second element of the Policy.
Complainant argues that Complainant’s Mark is famous and therefore it is inconceivable that Respondent could not have known about Complainant’s Mark and Complainant’s business activities when Respondent registered and used the Disputed Domain Name, and therefore, Respondent’s registration and use of the Disputed Domain Name was and is done to intentionally trade upon Claimant’s goodwill, thus providing the necessary bad faith intent to satisfy Policy ¶ 4(b)(iv). To support this proposition, Complainant provides evidence of its multiple international trademark registrations, significant size, and extensive scope of operations involving some 100 million customers in numerous countries around the world and $1.6 trillion of assets under management.
Respondent argues that its client, Pioneer Bank, did not know about Complainant’s existence before the bank received notice of this dispute, and the bank’s purpose in registering and using the Dispute Domain Name was to reflect a trade name which the bank had used for several years to market its own financial planning services.
Cases that have imputed a bad faith intent from the use of domain name similar to a famous mark tend to involve marks of considerable notoriety, notoriety to a level such that it is not credible for a respondent to deny knowledge, such as CITIBANK, WAL-MART, and LEGO. See Citigroup Inc., Citicorp v. Phayze Ind., D2003-0430 (WIPO Aug. 7, 2003) (“Given the fame of the trade mark CITIBANK, the Panel finds it highly unlikely that this has not been known to Respondent when registering the domain name at issue. Hence, the Panel finds that Respondent’s registration and use of the domain name at issue appears to be an intentional attempt to capitalize upon a likely confusion with Complainant’s trademark and/or domain name CITIBANK.”); See also Wal-Mart Stores, Inc. v. John Clark, D2004-0636 (WIPO Oct. 15, 2004) (“It also is undisputed that WAL-MART is a famous mark”). See also LEGO Juris A/S v. softwareegypt, D2012-1238 (WIPO Aug. 7, 2012) (“This Panel infers that Respondent most likely knew of Complainant’s world-famous LEGO mark when Respondent registered the disputed domain name, given the general fame of the mark, and the fact that the LEGO mark is registered in Egypt and that Complainant’s LEGO products are sold in Egypt, Respondent’s country of residence. Respondent therefore registered the disputed domain name in bad faith.”)
In the present case, Complainant’s operations must be viewed in context of the worldwide market for financial services, which the Panel believes is of such a size and extent that even the numbers demonstrated by Complainant do not establish a level of notoriety such that it would be incredible for Respondent to deny knowledge of Complainant and Complainant’s Mark. As such, the Panel believes an inference of bad faith against Respondent is not justified in this case. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (refusing to infer that the call sign/mark of a public television station operating in the U.S. Northwest and in British Columbia would or should be known to persons in London, England, in holding that the respondent did not register the disputed domain name in bad faith).
As such, Complainant has failed to establish the third element of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mypioneerinvestments.com> domain name REMAIN WITH Respondent.
Kendall C. Reed, Panelist
Dated: January 7, 2019
[i] Respondent is not Pioneer Bank, but as Respondent clarified in its response to the Panel’s questions, Pioneer Bank is the user of the Disputed Domain Name as beneficial owner. As such, the Panel imputes Pioneer Bank’s actions and intentions to Respondent for purpose of the analysis of this matter. See Park ‘N Fly Service Corporation v Kevin Lanzillo, FA 1554365 (Forum May 13, 2014) (holding that it is ultimately “the Registrant responsible for the content of the material appearing on the webpage associated with the domain name in [a] dispute”); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”
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