Thomson Financial LLC and Thomson Canada Limited v. Mirk Kajes
Claim Number: FA0611000831228
Complainant is Thomson Financial LLC and Thomson
Canada Limited (“Complainant”),
represented by Mark Lerner, of Satterlee Stephens Burke & Burke LLP, 230 Park Avenue, New
York, NY 10169. Respondent is Mirk Kajes
(“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thomsonmailserver.info>, registered with Schlund + Partner AG.
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 November 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2006.
On November 6, 2006, Schlund + Partner AG confirmed by e-mail to the National Arbitration Forum that the <thomsonmailserver.info> domain name is registered with Schlund + Partner AG and that Respondent is the current registrant of the name. Schlund + Partner AG has verified that Respondent is bound by the Schlund + Partner AG 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 November 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@thomsonmailserver.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 4, 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 <thomsonmailserver.info> domain name is confusingly similar to Complainant’s THOMSON FINANCIAL mark.
2. Respondent does not have any rights or legitimate interests in the <thomsonmailserver.info> domain name.
3. Respondent registered and used the <thomsonmailserver.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Thomson Canada Limited, is a subsidiary of The Thomson Corporation and is a leading provider of specialized information to professionals in such fields as law and higher education. In connection with the provision of these services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the THOMSON FINANCIAL mark (Reg. No. 3,078,254 issued April 11, 2006).
Respondent registered the <thomsonmailserver.info> domain name October 6, 2006. The disputed domain name resolves to a website that is being used as a base from which e-mails purporting to offer employment are sent to persons who have posted resumes at the job-search website “monster.com.” Respondent engages in a practice known as a “reshipping scam,” which involves contacting prospective employees who have posted resumes and indicating to them that they need to provide monetary compensation to Respondent in order to accept bogus job offers.
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 asserts rights in the THOMSON FINANCIAL mark through registration with the USPTO. The Panel finds that Complainant’s registration and use of the THOMSON FINANCIAL mark is sufficient to establish rights pursuant to Policy ¶ 4(a)(i). 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) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that Respondent’s <thomsonmailserver.info> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name pairs “Thomson,” the key identifying term in Complainant’s mark, and the generic term “mail server.” The Panel finds that the addition of a generic term to a portion of Complainant’s mark fails to sufficiently distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights or legitimate interests in the <thomsonmailserver.info> domain name. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. See 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.”); see also 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”).
Respondent is using its disputed domain name as a base from
which to send emails that seek monetary compensation in exchange for the
promise of bogus employment offers. This
practice is completely unrelated to Complainant’s business. The Panel finds that such use is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sept. 27, 2000) (“The unauthorized providing of information and services
under a mark owned by a third party cannot be said to be the bona fide
offering of goods or services.”).
Complainant contends that Respondent is neither commonly known by the <thomsonmailserver.info> domain name nor authorized to register domain names featuring Complainant’s THOMSON FINANCIAL mark in any way. In the absence of evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests in accordance with Policy ¶ 4(c)(ii). See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting website. Job seekers who receive emails from the disputed domain name are likely to conflate the respondent’s reshipping scheme in which emails are sent to prospective employees with the intent of securing financial compensation in exchange for job offers, with Complainant’s business. The Panel finds such use of a domain name for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Respondent has ensnared individuals into buying into
their reshipping scheme by capitalizing on the goodwill Complainant has
developed around the THOMSON FINANCIAL mark.
Such use is evidence that Respondent was aware of Complainant’s rights
in the THOMSON FINANCIAL mark when it registered the disputed domain name, knew
that it had no right to use the THOMSON FINANCIAL mark, and could anticipate
the probable tarnishment of that mark as a result of its fraudulent activities.
This is evidence that Respondent registered and used the <thomsonmailserver.info> domain name in bad faith. See Am.
Int’l Group, Inc., FA 156251 (finding that the disputed domain name was
registered and used in bad faith where Respondent hosted a website that gave
“every appearance of being associated or affiliated with Complainant’s business
. . . In a nutshell, Respondent used the
disputed domain name to perpetrate a fraud”); see also DaimlerChrysler Corp.
v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that
Respondent’s use of the title “Dodgeviper.com Official Home Page” gave
consumers the impression that Complainant endorsed and sponsored Respondent’s
website, evidence of bad faith).
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 <thomsonmailserver.info> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 18, 2006
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