national arbitration forum

 

DECISION

 

Ameriprise Financial, Inc. v. St Kitts Registry

Claim Number: FA0611000843469

 

PARTIES

Complainant is Ameriprise Financial, Inc. (“Complainant”), represented by Shawn Diedtrich, of Snell & Wilmer L.L.P., One Arizona Center, 400 E. Van Buren, Phoenix, AZ 85004-2202.  Respondent is St Kitts Registry (“Respondent”), 45-70 Meridian Parkway, St Kitts, Olam KN.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue is <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com>, registered with Moniker Online Services, Inc.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2006.

 

On November 8, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 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@ameripriseautoinsurance.com and postmaster@ameriprisehomeandauto.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 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names are confusingly similar to Complainant’s AMERIPRISE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names.

 

3.      Respondent registered and used the <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Ameriprise Financial, Inc., is a leader in the financial services industry.  Since May 2005 Complainant has operated under the AMERIPRISE mark, providing financial goods and services such as insurance and financial planning.  Complainant has invested significant time and money into advertising the AMERIPRISE mark on the Internet, on television and in print media.  Further, Complainant has filed for registration of the AMERIPRISE mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 78/605,935 filed April 11, 2005).

 

Respondent registered the <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names on August 22, 2005.  Respondent is using the disputed domain names to operate websites comprised of generic search engines and Internet directories.  Both websites include numerous links to third-party websites, including websites that offer financial goods and services in direct Competition with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant is not required to hold a registered trademark or service mark in the AMERIPRISE mark to establish rights pursuant to Policy ¶ 4(a)(i).  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks.”).

Complainant has common law rights to the AMERIPRISE mark established through use sufficient to create secondary meaning in the mark.  In particular, Complainant’s prominent use of the mark in advertising, on the Internet, television and in print media, has created the necessary secondary meaning and public goodwill in the mark.  The Panel find that Complainant has common law rights in the AMERIPRISE mark and has satisfied the requirements of Policy ¶ 4(a)(i).  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (“[T]he fact that Complainant previously held registrations for the [disputed] domain names attests to the fact that it has rights in its marks.”); see also Marty Taylor Homes, Inc. v. JNPR Mgmt., FA 366170 (Nat. Arb. Forum Jan. 5, 2005) (finding that the complainant’s prior use of the disputed domain name, which was identical to the asserted trademark, was evidence of its rights in the mark).

 

Respondent’s <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names include Complainant’s AMERIPRISE mark in its entirety without alteration.  The disputed domain names add the phrases “auto insurance” and “home and auto” to Complainant’s mark.  These phrases are descriptive of Complainant’s business, specifically as a provider of home and automobile insurance policies and services.  The Panel finds that the addition of phrases describing an aspect of Complainant’s business to Complainant’s mark does not distinguish the disputed domain names from Complainant’s mark.  As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights or legitimate interests in the <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names.  Complainant’s allegation creates a prima facie case, shifting the burden to the Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  The Panel may interpret Respondent’s failure to respond as evidence that Respondent does not have rights or legitimate interests in the disputed domain name.  Respondent’s failure to respond notwithstanding, the Panel will evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  See 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).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). 

 

Respondent is using the disputed domain names to redirect Internet users to Respondent’s websites featuring generic search engines and website directories.  The website directories include numerous links to third-party websites, many of which offer financial goods and services in direct competition with Complainant.  Presumably, Respondent collects pay-per-click referral fees from the linked websites.  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 Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

Furthermore, there is no evidence that Respondent is commonly known by the <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names either as an individual or as a business.  Respondent’s WHOIS information identifies it as “St Kitts Registry,” which does not bear any relationship or resemblance to the disputed domain names.  Thus, the Panel finds that Respondent has failed to establish rights or legitimate interests in the disputed domain names pursuant to 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names to redirect Internet users to Respondent’s website featuring links to both competing and unrelated third-party websites.  By using a confusingly similar domain name to draw Internet users to its websites, and populating those websites with links to competing third-party websites, Respondent is diverting Complainant’s potential customers away from Complainant’s legitimate websites and to the websites of Complainant’s competitors.  The Panel finds that such use disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also 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)). 

 

Respondent’s <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names are confusingly similar to Complainant’s AMERIPRISE mark.  Internet users seeking Complainant’s goods and services at Complainant’s genuine website may easily be redirected instead to Respondent’s website either through running an Internet search including Complainant’s mark and the descriptive terms used by Respondent, or by typing the same directly into a web browser.  The confusing similarity between the disputed domain names and Complainant’s mark increases the possibility that Internet users redirected to Respondent’s website may believe that Respondent’s website is affiliated with or sponsored by Complainant.  Respondent is presumably profiting from this confusion when Internet users click on the links to third-party websites, generating referral fees for Respondent.  The Panel finds that Respondent’s use of a confusingly similar domain name to attract Internet users to Respondent’s website in order to generate referral fees from links to third-party websites is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).   

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  January 3, 2007

 

 

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