Thomson Financial LLC and Thomson Canada Limited v Sun hyu v. chan aka Hong Kong Prod. lt.d.
Claim Number: FA0610000819337
Complainants are 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 Sun hyu v chan a/k/a Hong Kong Prod. lt.d. (“Respondent”), 18 Whitfield Road, Hong Kong 854934, CN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thomson-financial.org>, registered with EstDomains, 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.
Bruce E. Meyerson as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on October 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2006.
On October 19, 2006, EstDomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <thomson-financial.org> domain name is registered with EstDomains, Inc. and that Respondent is the current registrant of the name. EstDomains, Inc. has verified that Respondent is bound by the EstDomains, 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 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.org 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 Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainants request that the domain name be transferred from Respondent to Complainants.
A. Complainants make the following assertions:
1. Respondent’s <thomson-financial.org> domain name is confusingly similar to Complainant’s THOMSON FINANCIAL mark.
2. Respondent does not have any rights or legitimate interests in the <thomson-financial.org> domain name.
3. Respondent registered and used the <thomson-financial.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants Thomson Financial LLC and Thomson Canada
Limited provide integrated information and technology applications to its
customers in the global financial services industry. Complainants hold a trademark registration with the United States
Patent and Trademark Office (“USPTO”) for the THOMSON FINANCIAL mark (Reg. No.
3,078,254 issued April 11, 2006).
Complainants also operate a website at the <thomson.com> domain
name.
Respondent registered the <thomson-financial.org> domain name on October 8, 2006. According to the uncontradicted record, Respondent’s disputed domain name resolves to a website that features Complainants’ trademark and displays fraudulent information in connection with Respondent’s operation of a sophisticated scam to gain personal and financial information from Internet users.
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. 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 Complainants 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 Complainants’ registration with the USPTO sufficiently establishes Complainants’ rights in the THOMSON FINANCIAL mark. 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel finds that Respondent’s <thomson-financial.org> domain name is confusingly similar to Complainants’ THOMSON FINANCIAL mark as it contains Complainants’ mark in its entirety with the addition of a hyphen. Such an addition is not enough to negate the confusing similarity between Respondent’s disputed domain name and Complainants’mark. The Panel accordingly finds confusing similarity under Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to the complainant's EASYJET mark and therefore that they are confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainants initially must establish that Respondent lacks rights and legitimate interests with respect to the disputed domain name. However, once Complainants demonstrate a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the <thomson-financial.org> domain name. 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).”).
Complainants assert that Respondent is not authorized to use Complainants’ THOMSON FINANCIAL mark and that Respondent is not associated with Complainants in any way. Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <thomson-financial.org> domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the Panel found that the respondent does not have rights in a domain name where the respondent was not known by the mark. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The unrefuted evidence in the record indicates that Respondent is using the disputed domain name for a “phishing” scam in which Respondent attempts to fraudulently extract personal and financial data from Internet users by asserting itself to be offering Internet users jobs through Complainant’s company. In Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), the panel defined “phishing” as involving the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the “phishers” who intended to use such information for fraudulent purposes. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). Respondent is attempting to acquire such personal and financial information through the use of the disputed domain name, and the Panel accordingly finds that such use 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). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)); 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 Policy ¶ 4(a)(ii) has been
satisfied.
The Panel finds that Respondent is using the <thomson-financial.org> domain name to benefit commercially from the good will associated with Complainants’ mark. The Panel additionally finds that the disputed domain name and corresponding website are capable of creating a likelihood of confusion as to the source and affiliation of Complainants with the disputed domain name and corresponding website. In Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), the panel found bad faith where the respondent directed Internet users seeking the complainant’s website to its own website for commercial gain. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the web site without permission from the complainant). Therefore, the Panel finds that such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
Furthermore, the Panel finds that Respondent’s use of
Complainant’s name and mark to extract personal and financial information from
Internet users is additional evidence of bad faith registration and use under
Policy ¶ 4(a)(iii). See Juno
Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004)
(finding that using a domain name that “is confusingly similar to Complainant’s
mark, redirects Internet users to a website that imitates Complainant’s billing
website, and is used to fraudulently acquire personal information from
Complainant’s clients” is evidence of bad faith registration and use); see
also 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).
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 <thomson-financial.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 28, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum