Tesco Personal Finance Ltd. v. RegisterFly.com - Ref# 11914536 a/k/a Whois Protection Service - ProtectFly.com
Claim Number: FA0611000832606
Complainant is Tesco Personal Finance Ltd. (“Complainant”), represented by William S. Fultz, of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC 27602. Respondent is RegisterFly.com - Ref# 11914536 a/k/a Whois Protection Service - ProtectFly.com (“Respondent”), 230 Park Avenue, Suite 864, New York, NY 10169.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tescopersonalfinance.com>, registered with Enom, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2006.
On November 3, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <tescopersonalfinance.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 27, 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@tescopersonalfinance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2006, pursuant to Complainant's 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tescopersonalfinance.com> domain name is identical to Complainant’s TESCO PERSONAL FINANCE mark.
2. Respondent does not have any rights or legitimate interests in the <tescopersonalfinance.com> domain name.
3. Respondent registered and used the <tescopersonalfinance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tesco Personal Finance, Ltd., operates as the financial service arm one of the United Kingdom’s foremost supermarket chains, Tesco Stores, Ltd. Launched in 1997, Complainant promotes and provides a full range of personal financial services, including insurance, credit cards, mortgages, loans and savings. In connection with the promotion and provision of its financial services, Complainant has registered numerous trademarks with the UKPO, including the TESCO PERSONAL FINANCE mark (Reg. No. 2,154,304 issued July 23, 1999).
Respondent registered the <tescopersonalfinance.com> domain name on February 14, 2004. The disputed domain name resolves to a website that features numerous links to websites dealing with personal financial services that compete with Complainant.
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 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 has established rights in the TESCO PERSONAL FINANCE mark through registration of the mark with the UKPO. The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) ("The Panel accepts Complainant's registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant's rights in the mark pursuant to Policy ¶ 4(a)(i).").
Complainant asserts that the disputed domain name is identical to its TESCO PERSONAL FINANCE mark. The disputed domain name contains Complainant’s mark in its entirety, omits spaces between terms and affixes the generic top-level domain (“gTLD”) “.com.” The Panel finds the omission of spaces and addition of a top-level domain to play no role in the determination of whether a domain name is confusingly similar or identical to a trademark or service mark in light of the Policy. Accordingly, the <tescopersonalfinance.com> domain name is found to be identical to Complainant’s TESCO PERSONAL FINANCE mark pursuant to Policy ¶ 4(a)(i). E.g., Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under to Policy ¶ 4(a)(ii), Complainant bears the initial burden to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Once such a finding is made, the burden shifts to Respondent to affirmatively prove that it does have rights or legitimate interests in the domain name. 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 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.”). The Panel finds that Complainant has sufficiently established a prima facie case through its uncontested assertions in the Complaint and will evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent’s failure to submit a Response in this proceeding
creates a presumption that Respondent lacks rights and legitimate interests in
the disputed domain name. 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 Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise). The Panel, however, chooses to analyze the
record to determine if Respondent has rights or legitimate interests in the
disputed domain name.
There is no indication in the record to suggest that Respondent is commonly known by the disputed domain name. As a result, the Panel finds that Respondent is not commonly known by the <tescopersonalfinance.com> domain name. 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 a respondent is commonly known by a domain name, the assertion must be rejected); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (rejecting the claim that the respondent was commonly known by the “Red Bull” nickname ever since its childhood years because the respondent did not provide any evidence to support the contention).
Additionally, Respondent is using the disputed domain name
to resolve to a website that features numerous links to websites dealing with
personal financial services that compete with Complainant. Such use fails to amount to a bona fide offering
of goods or services pursuant to Policy ¶ 4(a)(i) or a legitimate noncommercial
fair use pursuant to Policy ¶ 4(c)(iii).
TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has registered and used the disputed domain name in bad faith. The Panel finds that it is reasonable to infer from the link-driven website that Respondent is benefiting financially from its operation. Additionally, due to the fact that the Respondent’s site contains links to websites relating to financial services, it is likely that consumers could become confused as to Complainant’s sponsorship of or affiliation with those services. Accordingly, the Panel finds Respondent to have registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because it is attempting to financially benefit from the likelihood of confusion it created by directing Internet users seeking Complainant’s services to the above-referenced website which contains references to the financial services of others. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
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 <tescopersonalfinance.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 15, 2006
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