Ameritrade Holding Corporation v. Anthony
Lee D''Amato
Claim
Number: FA0506000503053
Complainant, Ameritrade Holding Corporation (“Complainant”),
is represented by Julia Anne Matheson of Finnegan Henderson Farabow Garrett & Dunner LLP, 901 New York Avenue NW, Washington,
DC 20001. Respondent is Anthony Lee D''Amato (“Respondent”),
10234 Hamelin, Montreal, Qc H2B2E6, CA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <tdameritrade.com>, registered with Register.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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 24, 2005.
On
June 24, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <tdameritrade.com> is registered with Register.com
and that Respondent is the current registrant of the name. Register.com has verified that Respondent is
bound by the Register.com 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
June 24, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 14,
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@tdameritrade.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
July 18, 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 <tdameritrade.com>
domain name is confusingly similar to Complainant’s AMERITRADE mark.
2. Respondent does not have any rights or
legitimate interests in the <tdameritrade.com> domain name.
3. Respondent registered and used the <tdameritrade.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Ameritrade Holding Corporation, has provided securities brokerage services and
technology-based financial services since 1975. Complainant is a public company, traded on the NASDAQ Stock
Market and is the largest online brokerage firm. In 2004, Complainant averaged approximately 168,000 trades per
day and had over 2.6 million client accounts.
Complainant offers its services and provides extensive information on
investments on its <ameritrade.com> website. As a result of its efforts, Complainant has received numerous
industry awards for its technology and services, including the Forbes’ “Best of
the Web” award and the “Reader’s Choice Award.”
Complainant owns
several trademark registrations for the AMERITRADE mark with the United States
Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 2,032,385 issued
May 28, 1996; Reg. No. 2,411,005 issued December 5, 2000; Reg. No. 2,701,664
issued April 1, 2003; Reg. No. 2,634, 398 issued October 15, 2002).
On June 22,
2005, Complainant announced its plans to acquire TD Waterhouse and name the new
merged company “TD Ameritrade.”
Business Week Online predicted that the new entity would become the
largest online broker with 239,000 average daily client trades and
approximately 5.9 million total accounts.
On October 10,
2003, Respondent registered the <tdameritrade.com> domain
name. Until at least June 20, 2005,
Respondent did not use the domain name to develop a website. However, on June 23, 2005, one day after
Complainant’s announcement, Respondent developed the website by posting an
offer to sell 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.”
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. 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 (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); 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.”).
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.
By owning
numerous registrations with the USPTO for its AMERITRADE mark, Complainant has
presented a prima facie case of rights in the mark. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”). Since
Respondent failed to submit a response, Complainant’s rights have not been
disputed. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (“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.”). Thus,
the Panel holds that Complainant has established rights in the AMERITRADE mark
for purposes of Policy ¶ 4(a)(i).
Complainant
argues that the <tdameritrade.com> domain name is confusingly
similar to its AMERITRADE mark. The
disputed domain name incorporates Complainant’s mark and merely adds the two
letters “t” and “d” and the generic top-level domain (“gTLD”) “.com.” The incorporation of Complainant’s entire
AMERITRADE mark in the disputed domain name is itself sufficient to establish
confusing similarity for purposes of Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”).
Moreover, it is well established that the addition of letters and the
“.com” gTLD is insufficient to distinguish Respondent’s domain name from
Complainant’s mark. See Sony Kabushiki
Kaisha v. 4198Domain 4198 Administrator, FA 451912 (Nat. Arb. Forum May 18,
2005) (finding that the addition of the letters “kw” to the SONY STYLE mark is
not sufficient to overcome a finding of confusing similarity under Policy ¶
4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June
25, 2000) (finding that the top level of the domain name such as “.net” or
“.com” does not affect the domain name for the purpose of determining whether
it is identical or confusingly similar).
Accordingly, the Panel holds that the disputed domain name is
confusingly similar to Complainant’s AMERITRADE mark.
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant’s
allegation that Respondent does not have rights or legitimate interests in the
<tdameritrade.com> domain name establishes a prima facie
case. Consequently, the burden shifts
to Respondent to produce concrete evidence to dispute Complainant’s
assertions. See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 Woolworths plc. v. Anderson,
D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to
use the domain name for a legitimate purpose, the burden of proof lies with the
respondent to demonstrate that it has rights or legitimate interests). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent is not commonly known by the disputed domain name. In fact, Respondent’s WHOIS information
indicates that Respondent is known as “Anthony Lee D”Amato.” Moreover, Respondent has not provided any
evidence to counter Complainant’s allegations.
Respondent’s failure to submit a response and provide evidence to
demonstrate that it is commonly known by the disputed domain name leads this
Panel to accept as true Complainant’s argument. In G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003), the panel
held,
Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.
Id.; see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”). Thus,
the Panel holds that Respondent is not commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant argues that because Respondent failed to
use the <tdameritrade.com> domain name for almost two years,
Respondent lacks rights and legitimate interests in the disputed domain
name. Without a response from
Respondent, the Panel accepts as true Complainant’s argument that Respondent
was passively holding domain name in dispute.
See Broadcom
Corp. v. Ibecom PLC, FA
361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the
Complaint functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set
forth…as true.”). The Panel holds that
Respondent’s passive holding of the <tdameritrade.com> domain name
was not a bona fide offering of goods or services or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See TMP Int’l,
Inc. v. Baker Enters., FA 204112 (Nat.
Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive
holding of the domain name does not establish rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).”); see also Am. Online, Inc. v. Kloszewski,
FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the
<aolfact.com> domain name for over six months is evidence that Respondent
lacks rights and legitimate interests in the domain name.”).
Moreover,
Complainant argues that Respondent lacks rights and legitimate interests in the
disputed domain name because immediately following Complainant’s announcement
to merge with TD Waterhouse, Respondent developed the website to indicate that
Respondent desired to sell the disputed domain name registration. Because Respondent has not refuted
Complainant’s argument, the Panel accepts Complainant’s allegation that
Respondent registered the domain name in anticipation of the merger and with
the purpose of profiting from the sale of the disputed domain name registration
immediately following Complainant’s announcement. Thus, the Panel holds that Respondent’s acquisition and passive
holding of the disputed domain name with the purpose of selling it does not
constitute a bona fide offering of goods or services or a legitimate
noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence.”); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where the respondent registered the domain name with
the intention of selling its rights); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name suggests
it has no legitimate use).
The
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent registered the <tdameritrade.com> domain
name in bad faith because Respondent is offering the domain name registration
for sale. In fact, Respondent passively
held the disputed domain name until Complainant made the announcement of the
merger with TD Waterhouse. Anticipating
that Complainant or its competitors would want the disputed domain name,
Respondent developed its website to offer the domain name registration for
sale. The Panel holds that Respondent’s
attempt to profit from the confusing similarity of Complainant’s mark to the
disputed domain name by selling it is evidence of bad faith use and
registration pursuant to Policy ¶ 4(b)(i).
See Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's general offer of the disputed domain name registration
for sale establishes that the domain name was registered in bad faith under
Policy ¶ 4(b)(i).”); see also Educ.
Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a
general offer of sale combined with no legitimate use of the domain name
constitutes registration and use in bad faith).
Moreover,
Complainant argues that Respondent’s passive holding of the domain name for
almost two years provides further evidence of Respondent’s bad faith in registering
the domain name. Because Respondent has
not provided this Panel with any evidence that would suggest that Respondent is
holding on to the disputed domain name for any non-infringing purposes, the
Panel finds that Respondent’s prior passive holding of the <tdameritrade.com>
domain name constitutes bad faith registration and use under Policy ¶
4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb.
16, 2000) (holding that the respondent’s failure to develop its website in a
two year period raises the inference of registration in bad faith); see also
DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Alitalia –Linee
Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000)
(finding bad faith where the respondent made no use of the domain name in
question and there are no other indications that the respondent could have
registered and used the domain name in question for any non-infringing
purpose).
Therefore, the
Panel finds that Complainant has 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 <tdameritrade.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated:
August 1, 2005
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