INVESTools Inc v. Investools Inc c/o Domain Administrator
Claim Number: FA0604000671495
Complainant is INVESTools Inc. (“Complainant”), represented by Paul C. Van Slyke, of Locke Liddell & Sapp, 600 Travis, Suite 3400, Houston, TX 77002. Respondent is Investools Inc c/o Domain Administrator (“Respondent”), 5959 Corporate Dr., Houston, TX 77036.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <investoolbox.com>, registered with Hyperstreet.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 5, 2006.
On April 12, 2006, Hyperstreet.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <investoolbox.com> domain name is registered with Hyperstreet.com, Inc. and that Respondent is the current registrant of the name. Hyperstreet.com, Inc. has verified that Respondent is bound by the Hyperstreet.com, 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 April 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 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@investoolbox.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <investoolbox.com> domain name is confusingly similar to Complainant’s INVESTOOLS mark.
2. Respondent does not have any rights or legitimate interests in the <investoolbox.com> domain name.
3. Respondent registered and used the <investoolbox.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, INVESTools, by and
through its predecessors in interest, has operated a series of investor
information services and training courses since 1995. In addition to live workshops taught around the world,
Complainant offers online courses and DVD-based home study programs. Complainant has received national media
attention for its information and services since as early as 1995. From 1996 to 1999, numerous publications,
such as Forbes, Money Magazine, The Wall Street Journal
and Business Week have recognized Complainant as a top online source for
investment and marketplace newsletters, research, advice, tools, and information.
During the course of operating its
business, Complainant has obtained trademark registration for the word mark
INVESTOOLS through registration with the United States Patent and Trademark
Office (”USPTO”) (Reg. No. 2,028,670 issued June 7, 1997).
Respondent registered the <investoolbox.com>
domain name on January 17, 2006 and is using the disputed domain name to redirect Internet users to a website featuring links to
commercial third parties including websites offering investor services similar
to those offered by Complainant. In
response to Complainant’s request for transfer of the disputed domain name in
exchange for payment of registration fees, Respondent offered to sell the <investoolbox.com>
domain name to Complainant for $1075.
Before the Complaint was filed,
the WHOIS information record listed the Registrant as “DN Investment Group
LLC.” After the Complaint was filed,
the WHOIS information record was amended to reflect “INVESTools, Inc.” as the
registrant. However, despite the change
in the WHOIS record, Complainant has not been able to access or take control of
the <investoolbox.com> 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.
Previous Panels have found that a complainant’s federal
trademark registrations establish the complainant’s rights in the mark in case
such as 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.”). Likewise, in the present case Complainant
has established rights in the INVESTOOLS mark through registration of the mark
with the USPTO. 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.”).
Complainant contends that the
<investoolbox.com> domain name is confusingly similar to
Complainant’s INVESTOOLS mark because the omission of the letter “s” and the
addition of the generic term “box” to Complainant’s mark does not create a
domain name distinct from 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 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).
Additionally, the Panel in Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), stated “the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.” Therefore, the Panel finds that the addition of the generic top-level domain “.com” in Respondent’s <investoolbox.com> domain name does not negate the confusingly similar nature of the disputed domain name and Complainant’s INVESTOOLS mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant has fulfilled the requirements of Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have any rights or legitimate interests in the <investoolbox.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. 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 any rights or legitimate interests in the domain name); see also 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).”).
In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 24, 2000), the panel found the respondent did not have any 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. In the present case, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the <investoolbox.com> domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Furthermore, in Reebok Int’l
Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum
Aug. 23, 2005), the panel concluded that Respondent’s mere portal website
featuring links to third party websites offering competing goods and services
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
pursuant to Policy ¶ 4(c)(iii). Thus,
the Panel finds that Respondent has failed to establish rights or legitimate
interests in the <investoolbox.com> domain name pursuant to Policy
¶ 4(a)(ii) because Respondent’s domain name offers links to commercial third
party websites including those in direct competition with Complainant. See Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to a financial services
website, which competed with the complainant, was not a bona fide
offering of goods or services); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
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 Complainant has fulfilled the requirements of Policy ¶ 4(a)(ii).
The Panel finds that Respondent registered the <investoolbox.com>
domain name incorporating Complainant’s mark to divert Internet users to
various commercial websites. The Panel
concludes that such activity is evidence of Respondent’s bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
Various panels in the past, such as the one in Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000), have found that “respondent demonstrated
bad faith when he requested monetary compensation beyond out-of-pocket costs in
exchange for the registered domain name.”
Likewise, the present Panel finds that Respondent’s offer to sell the <investoolbox.com>
domain name at an amount above and beyond Respondent’s out-of-pocket expenses
associated with the registration of the domain name is additional evidence of
Respondent’s bad faith registration and use.
See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name
for $2,000 sufficient evidence of bad faith registration and use under Policy ¶
4(b)(i)); see also Little
Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
(finding the respondent's offer to sell the domain name at issue to the
complainant was evidence of bad faith).
The Panel finds that Complainant has fulfilled the requirements of 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 <investoolbox.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 22, 2006
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