Wolters Kluwer Financial Services, Inc. v. Wolters Kluwer US c/o Domain Administrator
Claim Number: FA0610000811478
Complainant is Wolters Kluwer Financial Services, Inc. (“Complainant”), represented by William Schultz, of Merchant & Gould P.C., 3200 IDS Center, 80 South Eighth Street, Minneapolis, MN 55402-2215. Respondent is Wolters Kluwer US c/o Domain Administrator (“Respondent”), 2700 Lake Cook Rd, Attn ITO Group, Riverwoods, IL 60015.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <complianceheadquarter.com>, registered with Nameview, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2006.
On October 6, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <complianceheadquarter.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 October 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 30, 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@complianceheadquarter.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <complianceheadquarter.com> domain name is confusingly similar to Complainant’s COMPLIANCEHEADQUARTER mark.
2. Respondent does not have any rights or legitimate interests in the <complianceheadquarter.com> domain name.
3. Respondent registered and used the <complianceheadquarter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wolters Kluwer Financial Services, Inc., is a multinational publisher and information services company that focuses on compliance, operational, and credit risk management services and work flow solutions for banking, mortgage, securities, and insurance organizations. Complainant has utilized the COMPLIANCEHEADQUARTERS mark in connection with its offering of online information regarding the banking and financial industry since at least as early as 2001. Complainant holds a federal trademark registration for its COMPLIANCEHEADQUARTERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,960,671 issued June 7, 2005, filed April 23, 2002). Furthermore, Complainant’s parent company, Wolters Kluwer U.S. Corporation, holds the domain name registration for the <complianceheadquarters.com> domain name, which Complainant utilizes in connection with its business. Complainant also submits evidence suggesting that Complainant’s parent company does not own or control the disputed domain name registration.
Respondent, Wolters Kluwer US c/o Domain Administrator, registered the <complianceheadquarter.com> domain name on June 7, 2005. Respondent’s disputed domain name resolves to a search engine website that provides links to third party websites offering products and information services similar to those offered by Complainant’s business.
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.
The Panel finds that Complainant’s federal trademark registration for its COMPLIANCEHEADQUARTERS mark with the USPTO sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). Complainant filed its trademark application for the COMPLIANCEHEADQUARTERS mark with the USPTO prior to Respondent’s registration of the disputed domain name. Thus, the Panel considers Complainant’s filing date of its trademark registration to be the effective date for establishing Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See 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. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also 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). Therefore, the Panel finds that Complainant has demonstrated rights in the COMPLIANCEHEADQUARTERS as a result of its federal trademark registration with the USPTO, the filing of which predates the registration of Respondent’s disputed domain name. See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)).
Furthermore, the Panel concludes that Respondent’s <complianceheadquarter.com> domain name is confusingly similar to Complainant’s COMPLIANCEHEADQUARTERS mark pursuant to Policy ¶ 4(a)(i). Respondent’s <complianceheadquarter.com> domain name consists of Complainant’s COMPLIANCEHEADQUARTERS mark, with the omission of the letter “s,” and the addition of the generic top-level domain (“gTLD”) “.com.” Prior panels have held that a domain name that misspells a complainant’s mark by merely omitting a single letter does not avoid the creation of confusing similarity between the domain name and the complainant’s mark. In Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002), the panel concluded that the domain name <compq.com> was confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name did not significantly change the overall impression of the mark. Moreover, the panel in State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000), found that the domain name <statfarm.com> was confusingly similar to the complainant’s STATE FARM mark. Moreover, previous panels have consistently held that the addition of gTLD does not distinguish a domain name from a registered mark under Policy ¶ 4(a)(i). See 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); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Thus, the Panel in the present case finds that Respondent’s <complianceheadquarter.com> domain name is confusingly similar to Complainant’s COMPLIANCEHEADQUARTERS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially bears the burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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 Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has sufficiently demonstrated a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
The evidence on record indicates that Respondent’s <complianceheadquarter.com>
domain name resolves to a search engine website providing links to third-party
websites that offer products and services in competition with Complainant’s
business. Consequently, the Panel finds
that such use by Respondent does not represent either a bona fide
offering of goods or services per Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb.
Forum June 11, 2006) (finding that the respondent’s use of a domain name to
redirect Internet users to websites unrelated to a complainant’s mark is not a bona
fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Corp. v.
Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent’s demonstrated intent to divert Internet users seeking
Complainant’s website to a website of Respondent and for Respondent’s benefit
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).”).
Furthermore, the Panel finds that the evidence on record does not demonstrate that Respondent is commonly known by the <complianceheadquarter.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant avers that after it filed the initial Complaint, Respondent changed the WHOIS information for the disputed domain name to “Wolters Kluwer US c/o Domain Administrator.” Moreover, the evidence on record does not suggest that Respondent is affiliated with Complainant, or is licensed or otherwise authorized by Complainant to use the COMPLIANCEHEADQUARTERS mark. Additionally, Complainant submits evidence that its parent company, Wolters Kluwer U.S. Corporation, neither owns nor controls the disputed domain name. Therefore, the Panel concludes that the evidence on record fails to establish that Respondent is commonly known by the <complianceheadquarter.com> domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s <complianceheadquarter.com> domain name resolves to a search engine website providing links to third party websites in competition with Complainant’s offering of goods and services. Consequently, the Panel finds that Respondent utilized the disputed domain name in order to commercially benefit from the diversion of Internet users from the website of Complainant to Respondent’s website, as well as to trade off of the goodwill associated with Complainant’s registered COMPLIANCEHEADQUARTERS mark. Therefore, the Panel concludes that Respondent registered and used the <complianceheadquarter.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Additionally, in consideration of Respondent’s use of the <complianceheadquarter.com> domain name to operate a search engine website offering links to products and services similar to those offered by Complainant, the Panel finds that Respondent registered and used the disputed domain name with the intent to disrupt Complainant’s business. Thus, the Panel concludes that such use by Respondent demonstrates registration and use of the <complianceheadquarter.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <complianceheadquarter.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 15, 2006
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