Reed Elsevier Inc. and Seisint, Inc. v.
WCC UIG International Inc.
Claim
Number: FA0508000536276
Complainants are
Reed Elsevier Inc. and Seisint, Inc. (collectively, “Complainant”), represented
by Tara M. Vold of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue N.W.,
Washington, DC, 20004. Respondent is WCC UIG International Inc.
(“Respondent”), 63 East 11400 South, Suite 221, Sandy, Utah, 84070.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <acurant.com>, registered with Go Daddy
Software, 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 August
9, 2005; the National Arbitration Forum received a hard copy of the Complaint August
10, 2005.
On
August 10, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <acurant.com> domain name is registered
with Go Daddy Software, Inc. and that Respondent is the current registrant of
the name. Go Daddy Software, Inc. verified
that Respondent is bound by the Go Daddy Software, 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
August 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 1, 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@acurant.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 7, 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, <acurant.com>, is confusingly similar to Complainant’s
ACCURINT mark.
2. Respondent has no rights to or legitimate
interests in the <acurant.com> domain name.
3. Respondent registered and used the <acurant.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
Seisint, Inc. is a wholly owned subsidiary of Complainant Reed Elsevier Inc.
and has provided individual background information services since April of
2001. In connection with its individual
background information services, Complainant registered the ACCURINT mark (Reg.
No. 2,624,319 issued September 24, 2002, filed June 20, 2001) with the United
States Patent and Trademark Office (“USPTO”).
Respondent
registered the <acurant.com> domain name October 31, 2001. The domain name resolves to a website that
offers competing fee-based individual background information services, which is
the same area of commerce as that in which Complainant operates.
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. 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 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 using extrinsic proof in this proceeding that it has rights in the
ACCURINT mark through registration with the USPTO. See 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.”); 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 [or] have acquired secondary meaning”). Although Complainant’s service mark was not
issued until September 24, 2002, the effective date of registration dates back
to the application’s filing date, June 20, 2001. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12,
2002) (holding that the effective date of Complainant’s trademark rights date
back to the application’s filing date); see also Phoenix Mortgage Corp. v.
Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of
Complainant's federal rights is . . . the filing date of its issued registration.”).
Complainant
alleges that the domain name that Respondent registered, <acurant.com>,
is confusingly similar to Complainant’s ACCURINT mark. The disputed domain name is a typosquatted
version of Complainant’s mark but is the phonetic equivalent. Panels have found that phonetical
equivalents are sufficient to render a domain name confusingly similar to a
mark pursuant to Policy ¶ 4(a)(i). See
Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7,
2000) (finding that a domain name which is phonetically identical to the
complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc.
v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name
<yawho.com> is confusingly similar to the complainant’s YAHOO mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has rights to and legitimate interests in the mark
contained within the disputed domain name and alleges that Respondent lacks
such rights or interests. Complainant’s
assertion creates a prima facie case under Policy ¶ 4(a)(ii) and shifts
the burden of proof to Respondent to show rights and interests. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”). Because Respondent
failed to respond, the Panel finds that no rights or legitimate interests exist
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate 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 have no legitimate
interest in the domain names).
Respondent is
using the disputed domain name, which is confusingly similar to Complainant’s
mark, to operate a website that allows Internet users to purchase competing
background information services. Such
competing use is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See Yahoo! Inc.
v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the
respondent’s use of a confusingly similar domain name to operate a
pay-per-click search engine, in competition with the complainant, was not a bona
fide offering of goods or services); see also Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”).
Furthermore,
Respondent set forth no affirmative evidence showing that Respondent is
commonly known by the <acurant.com> domain name. As a result, Respondent has failed to show
evidence of rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest 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).
Finally,
Panels have found the fact that Respondent’s domain name is merely a
typosquatted version of a Complainant’s mark to be evidence that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the
name******, FA 156839
(Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
the complainant’s DINERS CLUB mark, was evidence in and of itself that the
respondent lacks rights or legitimate interests in the disputed domain name vis
á vis the complainant); see also Encyclopaedia Britannica, Inc. v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the
domain names are misspellings of the complainant's mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges as well that Respondent registered and used the domain name in bad
faith. Respondent is using the <acurant.com>
domain name to operate a website that directly competes with Complainant’s
business. Such use constitutes a
disruption of Complainant’s business and 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 the respondent
has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from
complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Furthermore,
Respondent’s use of the disputed domain name, which is a typosquatted version
of Complainant’s trademark, for commercial gain will likely confuse Internet
users as to Complainants sponsorship of or affiliation with the resulting
websites. Such commercial use is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Canadian Tire Corp. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding
the respondent registered and used the domain name in bad faith because
respondent “created ‘a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of the Respondent’s web
site or location’. . . through Respondent’s persistent practice of
‘typosquatting’”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the
intentional misspelling of words with [the] intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”).
Finally,
Respondent registered the <acurant.com> domain name with actual or
constructive knowledge of Complainant’s rights in the ACCURINT mark due to
Complainant’s registration of the mark with the USPTO. The Panel finds that registration of a
domain name that is confusingly similar to another’s mark is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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 Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding 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.”).
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 <acurant.com> domain name be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 21, 2005
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