Ameriprise Financial, Inc. v. St Kitts Registry
Claim Number: FA0611000843469
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”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com>, registered with Moniker Online Services, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
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
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 names be transferred from Respondent to Complainant.
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.
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
Respondent registered the <ameripriseautoinsurance.com> and <ameriprisehomeandauto.com>
domain names on
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 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
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
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.
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
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
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
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
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
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.
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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