American Century Proprietary Holdings,
Inc. v. Ling Shun Shing
Claim
Number: FA0502000430587
Complainant is American Century Proprietary Holdings, Inc.
(“Complainant”), represented by Mark
A. Nieds of Leydig, Voit and Mayer, Ltd., Two Prudential Plaza, Suite 4900,
Chicago, IL 60601. Respondent is Ling Shun Shing (“Respondent”), 138 Yi
Xue Yuan Road, Shanghai, 200032, P.R. China.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <americancenturycasualty.com>, registered
with Moniker Online Services, Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 24, 2005.
On
February 23, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <americancenturycasualty.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, Inc. registration agreement
and has thereby agreed to resolve domain name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 28, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 21, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@americancenturycasualty.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 25, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <americancenturycasualty.com>
domain name is confusingly similar to Complainant’s AMERICAN CENTURY mark.
2. Respondent does not have any rights or
legitimate interests in the <americancenturycasualty.com> domain
name.
3. Respondent registered and used the <americancenturycasualty.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American Century Proprietary Holdings, Inc., provides a wide variety of
financial services and investment options to individual investors,
institutional investors, and investment professionals. Complainant employs approximately 2,000
people, has over 1.5 million customers, and in 2004, spent more than $22
million dollars in advertising. Complainant’s
services include, among others, printed newsletters, informational and
educational materials, mutual fund brokerage, investment and distribution
services, retirement plan consulting and investment management services,
investment tools and calculators, and finance-related educational services.
Complainant
holds numerous trademark registrations for the AMERICAN CENTURY mark with the
United States Patent and Trademark Office (Reg. No. 2,084,652 issued July 29,
1997 and Reg. No. 2,323,585 issued December 7, 1999). Complainant has been using its AMERICAN CENTURY mark in commerce
since late 1996.
Complainant
operates its main website at <americancentury.com>, and has been doing so
since late 1996.
Respondent
registered the <americancenturycasualty.com> domain name on
October 25, 2004. Respondent is using
the website to redirect Internet users to a page offering links to a wide
variety of financial services, including those offered by 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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant
established with extrinsic proof that it has rights to the AMERICAN CENTURY
mark as evidenced by its trademark registrations with the United States Patent
and Trademark Office and through continued use of the mark over the last nine
years. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.).
Respondent’s <americancenturycasualty.com>
domain name is confusingly similar to Complainant’s AMERICAN CENTURY mark
because the domain name incorporates Complainant’s mark and simply adds the
generic or descriptive term “casualty” and the generic top-level domain
(“gTLD”) “.com.” The addition of the
generic term and the gTLD fails to sufficiently differentiate Respondent’s
domain name from Complainant’s mark. 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); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where respondent’s domain name combines complainant’s mark with a
generic term that has an obvious relationship to complainant’s business).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(i).
Respondent
failed to contest Complainant’s assertions that Respondent lacks rights and
legitimate interests in the disputed domain name. Because Complainant’s evidence and arguments are unopposed, the
Panel is permitted to accept all reasonable inferences made in the Complaint as
true. See 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.”); see Bayerische Motoren Werke AG v. Bavarian
AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the
absence of a response the Panel is free to make inferences from the very
failure to respond and assign greater weight to certain circumstances than it
might otherwise do); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that complainant’s allegations are true
unless clearly contradicted by the evidence).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that, once complainant asserts that respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response,
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that respondent had no rights or legitimate
interests in the domain name because respondent never submitted a response or
provided the Panel with evidence to suggest otherwise).
Respondent is
not authorized or licensed by Complainant to use the AMERICAN CENTURY mark in
the disputed domain name. Moreover, no
evidence before the Panel suggests that Respondent is commonly known by the domain
name pursuant to Policy ¶ 4(c)(ii).
Therefore, Respondent has no rights or legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail"); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where respondent was not commonly
known by the mark and never applied for a license or permission from
complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) respondent is not a licensee of complainant; (2) complainant’s rights
in the mark precede respondent’s registration; (3) respondent is not commonly
known by the domain name in question).
Furthermore, the
<americancenturycasualty.com> domain name is confusingly similar
to Complainant’s AMERCIAN CENTURY mark and is used to redirect Internet users
to a page offering links to a wide variety of financial services, including
those offered by Complainant. The Panel
finds that Respondent’s use of the domain name that is confusingly similar to
Complainant’s mark is not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that
respondent’s diversionary use of complainant’s marks to send Internet users to
a website that displayed a series of links, some of which linked to competitors
of complainant, was not a bona fide offering of goods or services); see also
Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no
“bona fide” offering of goods or services where respondent used complainant’s
mark without authorization to attract Internet users to its website, which
offered both complainant’s products and those of complainant’s competitors); see
also Nat’l Collegiate Athletic Ass’n
v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used
to sell complainant’s goods without complainant’s authority, as well as others’
goods, is not bona fide use).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s mark and simply adds a generic term, suggests that Respondent
knew of Complainant’s rights in the AMERICAN CENTURY mark. Furthermore, Complainant’s registration of
its mark with the United States Patent and Trademark Office confers
constructive knowledge on anyone attempting to use the mark. In addition, Respondent must have known
about Complainant’s mark because the link between the financial services
content on the website and Complainant’s business is apparent. Thus, the Panel finds that Respondent chose
the <americancenturycasualty.com> domain name based on the
distinctive qualities of Complainant’s mark, which evidences bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”); see also Entrepreneur Media, Inc.
v. Smith, 279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse"); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively”); see also Pfizer, Inc. v. Papol Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between
complainant’s mark and the content advertised on respondent’s website was
obvious, respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
Respondent is
using the disputed domain name to advertise and sell financial services. Complainant’s business is a financial
services and investment opportunity business.
The Panel finds that, by creating confusion around Complainant’s mark,
Respondent is attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark in
its domain name to sell goods similar to Complainant’s goods and services is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
respondent registered and used the domain name <eebay.com> in bad faith
where respondent has used the domain name to promote competing auction sites); see
also Surface Prot. Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between complainant and respondent, respondent likely
registered the contested domain name with the intent to disrupt complainant's
business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding respondent acted in bad faith by
attracting Internet users to a website that competes with complainant’s
business).
Respondent’s <americancenturycasualty.com>
domain name diverts Internet users wishing to search under Complainant’s
AMERICAN CENTURY mark to Respondent’s commercial website through the use of a
domain name confusingly similar to Complainant’s mark. Respondent’s practice of diversion,
motivated by commercial gain, through use of a confusingly similar domain name
evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using complainant’s famous marks and likeness); see also G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because respondent was using the confusingly similar domain
name to attract Internet users to its commercial website); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if respondent
profits from its diversionary use of complainant's mark when the domain name
resolves to commercial websites and respondent fails to contest the complaint,
it may be concluded that respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <americancenturycasualty.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: April 7, 2005
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