Putnam, LLC d/b/a Putnam Investments v. Dotsan and R.S. Potdar
Claim Number: FA0601000632737
Complainant is Putnam, LLC d/b/a Putnam Investments (“Complainant”), represented by James R. Carroll, of Skadden, Arps, Slate, Meagher & Flom LLP, One Beacon Street, Boston, MA 02108. Respondents are Dotsan and R.S. Potdar (collectively, “Respondent”), 35-37 Sunder Mahal, Mumbai, India 400021.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <putnuminvestments.com>, registered with Enom, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 23, 2006.
On January 20, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <putnuminvestments.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 January 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 14, 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@putnuminvestments.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <putnuminvestments.com> domain name is confusingly similar to Complainant’s PUTNAM INVESTMENTS mark.
2. Respondent does not have any rights or legitimate interests in the <putnuminvestments.com> domain name.
3. Respondent registered and used the <putnuminvestments.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Putnam, LLC d/b/a Putnam Investments, is an international money management company and one of the ten largest investment firms in the United States. Complainant currently manages approximately $193 billion in assets. Putnam spends tens of millions of dollars annually on marketing of the PUTNAM marks.
Complainant has been using variations of the PUTNAM mark in connection with a vast array of investment, financial, and related business services since 1937. Complainant registered the <putnam.com> domain name on September 7, 1994 and the <putnaminvestments.com>, <putnamadvisor.com>, and <putnammutualfunds.com> domain names on March 11, 1998. Complainant has also registered the <myputnam.com> and <putnamservices.com> domain names.
Respondent registered the <putnuminvestments.com>
domain name on October 28, 2001.
Respondent is using the disputed domain name to redirect Internet users
to a third-party web directory featuring links to Complainant’s direct
competitors in the financial services industry. The web directory also contains pop-up advertisements for a
virtual reality casino. When an
Internet user attempts to exit out of the web directory, other website windows
appear, preventing Internet users from leaving the third-party web directory.
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 is not required to own a trademark registration to establish rights in the PUTNAM INVESTMENTS mark under Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant has established rights in the PUTNAM INVESTMENTS mark through continuous and extensive use of the mark in connection with its financial services since 1937. Moreover, Complainant has spent tens of millions of dollars advertising the PUTNAM INVESTMENTS marks and has registered the <putnaminvestments.com> domain name. Therefore, Complainant’s PUTNAM INVESTMENTS mark has established secondary meaning as a leading symbol of financial services sufficient to satisfy Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <putnuminvestments.com> domain
name is confusingly similar to Complainant’s PUTNAM INVESTMENTS mark pursuant
to Policy ¶ 4(a)(i), because it misspells Complainant’s mark by substituting
the “a” for “u.” Panels have held that
misspelling a trademark by one letter does not distinguish a domain name from a
complainant’s mark. See Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks); see also Belkin Components v. Gallant,
FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain
name confusingly similar to the complainant's BELKIN mark because the name
merely replaced the letter “i” in the complainant's mark with the letter “e”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <putnuminvestments.com> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <putnuminvestments.com>
domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
There is no evidence in the record suggesting that
Respondent is commonly known by the <putnuminvestments.com> domain
name. Therefore, Respondent has not
established rights or legitimate interests in the <putnuminvestments.com>
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 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.”).
Moreover, Respondent is using the <putnuminvestments.com>
domain name, which is confusingly similar to
Complainant’s PUTNAM INVESTMENTS mark, to redirect Internet users to a
third-party web directory with links to Complainant’s direct competitors. The website also contains pop-up
advertisements for virtual reality casinos.
Such use of the disputed domain name for commercial gain by
misdirecting Internet users to Complainant’s competitors and to unrelated
pop-up advertising does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality
Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that
Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com>
and <24hoursfitness.com> domain names to redirect Internet users to a
website featuring advertisements and links to Complainant’s competitors could
not be considered a bona fide offering of goods or services or a
legitimate noncommercial or fair use); see also Wells
Fargo & Co. v. Lin Shun Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to
direct Internet traffic to a website featuring pop-up advertisements and links
to various third-party websites is neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user); see also Trans Global
Tours, LLC v. Yong Li, FA 196166 (Nat. Arb. Forum Nov. 1, 2003) (finding
that the respondent was not using the domain name for a bona fide
offering of goods or services or a legitimate noncommercial or fair use because
it was diverting Internet users to a search engine with pop-up advertisements);
see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat.
Arb. Forum Apr. 25, 2003) (holding that the respondent’s use of the
<toyrus.com> domain name, a simple misspelling of the complainant’s mark,
to divert Internet users to a website that featured pop-up advertisements and
an Internet directory, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <putnuminvestments.com> domain name, which is confusingly similar to Complainant’s PUTNAM INVESTMENTS mark, to redirect Internet users to a third-party web directory featuring links to Complainant’s direct competitors as well as to pop-up advertisements for an online casino. The Panel infers that Respondent receives click-through fees for diverting consumers. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill associated with the mark. The Panel finds that such use constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Moreover, Respondent is using the <putnuminvestments.com> domain name, which resolves to a third-party web directory, to engage in the practice of “mousetrapping.” When an Internet user attempts to exit the web directory, other website windows appear, including pop-up advertisements for an online casino, thereby preventing an Internet user from exiting the directory. Therefore, Respondent’s use of the disputed domain name to deceive and ensnare Internet users seeking Complainant’s services is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Worldwinner.com, Inc. v. Cupcake Patrol, FA 175289 (Nat. Arb. Forum Sept. 22, 2003) (equating the practice of “mousetrapping” to bad faith registration and use because mousetrapping serves no useful purpose and is inherently deceptive); see also De La Rue Holdings PLC v. Video Images Prods. L.L.C., FA 196054 (Nat. Arb. Forum Oct. 27, 2003) (“In the past, Panels have determined that mousetrapping by itself is a prima facie showing of bad faith use and registration.”).
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 <putnuminvestments.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 6, 2006
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