Thomson Financial LLC and Thomson Canada Limited v. Payment Solutions c/o Ahmad Tamin
Claim Number: FA0610000818134
Complainant is Thomson Financial LLC and Thomson Canada Limited (collectively, “Complainant”), represented by Mark Lerner of Satterlee Stephens Burke & Burke LLP, 230 Park Avenue, New York, NY, 10169. Respondent is Payment Solutions c/o Ahmad Tamin (“Respondent”), Madaba 67/34, Al Jawf, Al Jawf, 78456, YE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thomson-financial.net>, registered with Estdomains, 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 October 11, 2006; the National Arbitration Forum received a hard copy of the Complaint October 12, 2006.
On October 25, 2006, Estdomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <thomson-financial.net> domain name is registered with Estdomains, Inc. and that Respondent is the current registrant of the name. Estdomains, Inc. verified that Respondent is bound by the Estdomains, 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 October 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 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@thomson-financial.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 22, 2006, 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, <thomson-financial.net>, is identical to Complainant’s THOMSON FINANCIAL mark.
2. Respondent has no rights to or legitimate interests in the <thomson-financial.net> domain name.
3. Respondent registered and used the <thomson-financial.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Thomson Canada Limited holds the trademark registration for the THOMSON FINANCIAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,078,254 issued April 11, 2006). The THOMSON FINANCIAL mark is used in connection with the promotion and provision of financial services. Thomson Canada Limited exclusively licenses the THOMSON FINANCIAL mark to Thomson Financial LLC. Thomson Canada Limited and Thomson Financial LLC have jointly initiated this proceeding in effort to gain control of the <thomson-financial.net> domain name.
Respondent registered the <thomson-financial.net>
domain name September 6, 2006. Shortly
after its registration, Respondent directed the disputed domain name to a
website that purported to offer an electronic money exchange service. The resulting website contained the
following message: “Thomson Financial is the first fully 128 bit SSL secured
PGP encrypted Internet based transaction website for the purchase of e-gold and
other Internet currencies within 12 to 24 hours.” Additionally, Respondent has used the disputed domain name to
send numerous e-mails to individuals who have allegedly posted resumes on
employment websites. The e-mail message
purports to offer the recipient a “Transfer Manager” position with Complainant
and requests personal identification information in return.
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 evidence in this
proceeding that it has rights in the THOMSON FINANCIAL 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.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861
(Nat. Arb. Forum Sept. 16, 2002) (Holding: “Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive [or]
have acquired secondary meaning.”).
Complainant alleges, and the Panel agrees, that the disputed
domain name is identical to its THOMSON FINANCIAL mark. The disputed domain name contains
Complaint’s THOMSON FINANCIAL mark in its entirety and merely substitutes a
hyphen for the space between terms. For
the purposes of Policy ¶ 4(a)(i), the Panel finds that the <thomson-financial.net>
domain name is identical to Complainant’s THOMSON FINANCIAL mark. See Chernow Commc’ns, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119
(WIPO May 18, 2000) (holding “that the use or absence of punctuation marks,
such as hyphens, does not alter the fact that a name is identical to a
mark").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to the mark contained in its entirety within the disputed domain name. Pursuant to Policy ¶ 4(a)(ii), Complainant holds the initial burden to make a prima facie case that Respondent lacks such rights to and legitimate interests in the disputed domain name. When the prima facie case is made, the burden shifts to Respondent to come forward with evidence that shows that it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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”). The Panel finds that Complainant established a prima facie case. The Panel examines, however, the remainder of the evidence to determine if Respondent made the requisite showing required.
Respondent failed to submit a Response in this
proceeding. Failure to participate in a
proceeding under the Policy creates a presumption that Respondent lacks rights
and legitimate interests in the disputed domain name. Additionally, Respondent’s lack of participation leaves the
evidentiary record silent as to any possible rights or legitimate interests
that Respondent may be able to claim in regard to the disputed domain
name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, respondent failed to invoke any
circumstance which could demonstrate any 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). The Panel looks to the evidentiary record to
determine whether the record contains some evidence that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
According to the WHOIS registry, Respondent is commonly
known as “Payment Solutions” care of “Ahmah Tamin.” As a result and in conjunction with the lack of other proof in
the record, the Panel finds that Respondent is not commonly known by the
disputed domain name or any reasonable variation thereof. See Am. Online, Inc. v. World Photo Video
& Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that
the respondent was not commonly known by <aolcamera.com> or
<aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”); see also 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 respondent is
commonly known by a domain name, the assertion must be rejected).
Shortly after the domain name’s registration, Respondent directed the disputed domain name to a website that purported to offer an electronic money exchange service. The resulting website contained the following message: “Thomson Financial is the first fully 128 bit SSL secured PGP encrypted Internet based transaction website for the purchase of e-gold and other Internet currencies within 12 to 24 hours.” Additionally, Respondent then used the disputed domain name to send numerous e-mails to individuals who have allegedly posted their resumes on employment websites. The e-mail message purports to offer the recipient a “Transfer Manager” position with Complainant and requests personal identification information. The Panel finds that neither the use of a domain name to point to a website that purports to offer services under Complainant’s mark nor the use of a domain name to send e-mails in connection with a fraudulent information gathering scheme qualify as for 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). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant alleges that Respondent registered and used the disputed domain name in bad faith. The Panel agrees. The registration and use of a domain name to purportedly offer services and offer employment under Complainant’s mark in an effort to extract personal and financial information from unsuspecting individuals evidences bad faith pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
The Panel finds that Complainant satisfied 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 <thomson-financial.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 5, 2006.
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