Barclays Global Investors, N.A. v. Salmon
Roe Club
Claim
Number: FA0504000467142
Complainant is
the Barclays Global Investors, N.A. (“Complainant”),
represented by Melanie J. Lerch of Loeb & Loeb, LLP,
10100 Santa Monica Blvd., Suite 2200, Los Angeles, CA, 90067. Respondent is Salmon Roe Club (“Respondent”), 2809 Kenyon Circle, Boulder, CO,
80303.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ishares-etf-funds-investments.com>,
registered with Network Solutions, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically April
22, 2005; the National Arbitration Forum received a hard copy of the Complaint April
25, 2005.
On
April 25, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <ishares-etf-funds-investments.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and thereby has agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
April 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 17, 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@ishares-etf-funds-investments.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
May 24, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <ishares-etf-funds-investments.com>, is confusingly
similar to Complainant’s ISHARES mark.
2. Respondent has no rights to or legitimate
interests in the <ishares-etf-funds-investments.com> domain name.
3. Respondent registered and used the <ishares-etf-funds-investments.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Barclays Global Investors, N.A., is a large investment management firm. Among the investment products offered by
Complainant is a family of exchange-traded funds called ISHARES. Complainant holds a trademark registration
with the United States Patent and Trademark Office for the ISHARES mark (Reg.
No. 2,422,249 issued January 16, 2001).
Respondent
registered the <ishares-etf-funds-investments.com> domain name
April 16, 2004. Respondent is using the
disputed domain name to redirect Internet users to a website featuring products
and services of Complainant’s competitors.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 by extrinsic proof in this proceeding that it has rights in the
ISHARES mark through registration with the United States Patent and Trademark
Office and by continuous use of the mark in commerce. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that the registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive. The
respondent has the burden of refuting this assumption); see also 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 Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the complainant
to register all possible domain names that surround its substantive mark does
not hinder the complainant’s rights in the mark. “Trademark owners are not
required to create ‘libraries’ of domain names in order to protect
themselves.”).
The <ishares-etf-funds-investments.com>
domain name is confusingly similar to Complainant’s ISHARES mark because the
domain name incorporates Complainant’s mark in its entirety and adds to the
mark hyphens and the generic or descriptive words or abbreviation “ETF,”
“Funds,” and “Investments,” which
describe Complainant’s business. The
additions of generic or descriptive words and hyphens to Complainant’s mark do
not negate the confusingly similar aspects of Respondent’s domain name pursuant
to Policy ¶ 4(a)(i). 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 the
complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Chernow
Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding
“that the use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name is identical to a mark").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights and interests and asserts that Respondent has no such
rights or legitimate interests in the <ishares-etf-funds-investments.com>
domain name. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they do not have rights or
legitimate interests in the domain names).
Furthermore, the
Panel accepts all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. 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 also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. 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).
Respondent is
not using the disputed domain names in connection with a bona fide offering of
goods or services under Policy ¶ 4(c)(i) and is not making a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using
a domain name that is confusingly similar to Complainant’s ISHARES mark to
redirect Internet users to a website featuring products and services of third
parties that are in direct competition with Complainant’s financial business. See MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where the respondent attempted
to profit using the complainant’s mark by redirecting Internet traffic to its
own website); see also Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding that use of the complainant’s mark “as a portal to suck surfers into a
site sponsored by Respondent hardly seems legitimate”); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to competitors of Complainant, was not a bona fide offering of
goods or services).
Moreover,
Respondent has offered no evidence, and nothing in the record suggests, that
Respondent is commonly known by the <ishares-etf-funds-investments.com>
domain name. Complainant has never
authorized or licensed Respondent to use its ISHARES mark in any way. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also 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 the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith in registering and using the domain
name containing in its entirety Complainant’s protected mark. Respondent registered the <ishares-etf-funds-investments.com>
domain name that incorporates Complainant’s ISHARES mark in its entirety for
Respondent’s commercial gain.
Respondent registered and used the <ishares-etf-funds-investments.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
intentionally attempted to attract potential customers from Complainant to
Respondent’s website by taking advantage of Internet users who are searching
under Complainant’s ISHARES mark and diverting them to Respondent’s commercial
website. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with the complainant’s mark and offering the same services as the
complainant via his website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where the respondent attracted users to a website
sponsored by the respondent and created confusion with the complainant’s mark
as to the source, sponsorship, or affiliation of that website).
Furthermore,
Respondent is using the <ishares-etf-funds-investments.com> domain
name, which is confusingly similar to Complainant’s ISHARES mark, to redirect
Internet users to a website featuring products and services of third parties
that are in direct competition with Complainant’s financial business. The Panel finds that such competing use
constitutes disruption and is evidence that Respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
the respondent has diverted business from the complainant to a competitor’s
website in violation of Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ishares-etf-funds-investments.com> domain
name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 7, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum