American Century Proprietary Holdings, Inc. v. Spiral Matrix
Claim Number: FA0512000611576
Complainant is American Century Proprietary Holdings, Inc. (“Complainant”), represented by Mark A. Nieds, of Leydig, Voit & Mayer, Ltd., Two Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave, P.O. Box 4276-30100, Eldoret 30100, KE.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <americancenturyfund.com>, <americancenturyequityincome.com> and <projectforthenewamericancentury.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2005.
On December 16, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <americancenturyfund.com>, <americancenturyequityincome.com> and <projectforthenewamericancentury.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 December 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 11, 2006 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@americancenturyfund.com, postmaster@americancenturyequityincome.com and postmaster@projectforthenewamericancentury.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 13, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A, Crary 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americancenturyfund.com>, <americancenturyequityincome.com> and <projectforthenewamericancentury.com> domain names are confusingly similar to Complainant’s AMERICAN CENTURY mark.
2. Respondent does not have any rights or legitimate interests in the <americancenturyfund.com>, <americancenturyequityincome.com> and <projectforthenewamericancentury.com> domain names.
3. Respondent registered and used the <americancenturyfund.com>, <americancenturyequityincome.com> and <projectforthenewamericancentury.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Century Proprietary Holdings, Inc., as assignee of American Century Services Corporation, provides a wide variety of financial services and investment options to individual investors, institutional investors, and investment professionals. Complainant employs approximately 2,000 people to serve its customers. Complainant currently has over 1.5 million individual and institutional customers. In 2004, Complainant spent more than $22 million dollars in advertising. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN CENTURY mark (Reg. No. 2,084,652 issued July 29, 1997).
Respondent registered the <projectforthenewamericancentury.com> domain name on June 9, 2005 and the <americancenturyfund.com> and <americancenturyequityincome.com> domain names on July 5, 2005. Respondent is using the disputed domain names to redirect Internet users to Respondent’s commercial websites that feature financial services that compete with 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. 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.
Complainant’s registration of its AMERICAN CENTURY mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). 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.”).
Respondent’s <americancenturyfund.com>, <americancenturyequityincome.com> and <projectforthenewamericancentury.com> domain names incorporate Complainant’s AMERICAN CENTURY mark in its entirety and add common terms and the generic top-level domain (“gTLD”) “.com.” The addition of common terms to Complainant’s registered mark does not distinguish the disputed domain names from Complainant’s mark, and the use of a gTLD in a domain name is irrelevant under 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 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), the burden is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); 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”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Respondent is using the <americancenturyfund.com>, <americancenturyequityincome.com> and <projectforthenewamericancentury.com> domain names to redirect Internet users to Respondent’s commercial websites that feature financial services that compete with Complainant. Respondent’s use of domain names that are confusingly similar to Complainant’s AMERICAN CENTURY mark to redirect Internet users interested in Complainant’s goods and services to websites that offer similar goods and services in competition with Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See 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.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
Furthermore, Complainant asserts that Respondent is not commonly known by the <americancenturyfund.com>, <americancenturyequityincome.com> or <projectforthenewamericancentury.com> domain name, or authorized or licensed to use Complainant’s AMERICAN CENTURY mark for any purpose. Thus, Respondent has not established rights or legitimate interests in the disputed domain names under 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers that Respondent receives click-through fees for diverting Internet users to competing websites. Because Respondent’s domain names are confusingly similar to Complainant’s AMERICAN CENTURY mark, Internet users accessing Respondent’s domain names may become confused as to Complainant’s affiliation with the resulting websites. Thus, Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Respondent is using the <americancenturyfund.com>, <americancenturyequityincome.com> and <projectforthenewamericancentury.com> domain names, which are confusingly similar to Complainant’s AMERICAN CENTURY mark, to redirect Internet users to Respondent’s commercial websites that feature goods and services that compete with Complainant. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
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 <americancenturyfund.com>, <americancenturyequityincome.com> and <projectforthenewamericancentury.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: January 27, 2005
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