American Century Proprietary
Holdings, Inc. v. Alan Lewin
Claim Number: FA0703000934411
PARTIES
Complainant is American Century Proprietary Holdings,
Inc. (“Complainant”), represented by Mark A. Nieds, of Leydig, Voit &
Mayer, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americancenturymortgage.com>,
registered with Go Daddy Software, 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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 8, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 9, 2007.
On March 8, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <americancenturymortgage.com> domain
name is registered with Go Daddy Software, Inc.
and that Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 March 12, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 2, 2007 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@americancenturymortgage.com by e-mail.
A timely Response was received and determined to be complete on May 14, 2007.
Complainant’s Additional Submission was received on May 21, 2007.
On May 23, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant provides a wide variety of financial services and
investment options to individual investors, institutional investors, and
investment professionals and employs approximately 2,000 people to serve its
customers. Complainant currently has
over 1.5 million individual and institutional customers. In 2006, Complainant spent more than 50
million dollars in advertising. As such,
customers identify the AMERICAN CENTURY marks and trade name with Complainant
and its highly regarded and trusted services.
American Century Proprietary Holdings, Inc., (American Century) as
assignee of American Century Services Corporation, began using its federally
registered AMERICAN CENTURY trademark in late 1996. Additionally, Complainant has been operating
its website at the <americancentury.com> domain name since that
time. Complainant uses its AMERICAN
CENTURY marks and trade name in connection with a wide variety of financial and
investment services.
Complainant bases the Complaint on its company/trade name AMERICAN
CENTURY and its common law rights and, by assignment, federal trademark
registrations and an application for numerous service marks for AMERICAN
CENTURY alone or with other terms, specifically: AMERICAN CENTURY, Registration
No 2,084,652, registered July 29, 1997; AMERICAN CENTURY BROKERAGE TELESELECT,
Registration No. 2,412,401, registered December 12, 2000; AMERICAN CENTURY,
Registration No. 2,943,710, registered April 26, 2005; and AMERICAN CENTURY
INVESTMENTS, Serial No. 78/801,281, filed January 27, 2006.
The domain name at issue here is identical to the trademark and trade
name of Complainant, with merely the addition of the descriptive word
“mortgage.” Registration and use of the
domain name is likely to create consumer confusion. The domain name at issue <americancenturymortgage.com>
currently connects to a website offering links to a variety of financial
services. Respondent is using the domain
name in a manner that interferes with Complainant’s ability to conduct business
via the Internet.
Respondent registered and used the domain name in bad faith. Respondent had actual and constructive notice
of Complainant’s use and rights in the mark.
B. Respondent
The domain name in question, <americancenturymortgage.com>,
is neither identical nor confusingly similar to the trademark in which the
Complainant has rights. Complainant is a
financial investment services company, which does not provide mortgages for
their investors. Respondent is in the
mortgage business and does not provide financial investment services for his
clients. On or about August 15, 2000,
Respondent formed and caused to be incorporated a Pennsylvania Corporation
named American Century Mortgage Corporation.
At all relevant times, Respondent has used the domain name in conjunction
with a bona fide business venture, which
is separate and apart from that of Complainant.
Respondent has been in the mortgage business since October 1993 and
continues to work in that industry.
Respondent does not have an active website.
Furthermore, many other entities use a similar name for different
purposes. The words American Century
have multiple meanings and use in ordinary society. The meaning is not solely related to the
services Complainant provides.
Respondent did not register, nor has he used, the domain name in bad
faith. The domain name was registered
after he created a valid and active corporation in the State of
C. Additional Submissions
Complainant’s Additional Submission.
Respondent contends that because there is a
FINDINGS
1.
Complainant
is a financial services company, which is engaged in the business of “mutual fund
brokerage, investments…investment management services…and finance related
services” among other pursuits.
2.
Respondent
is Alan Lewin of
3.
Respondent
registered the disputed domain name in 2002.
4.
Respondent
is engaged in the mortgage business.
5.
The
website at <americancenturymortgage.com> is not presently an
active website.
6.
Respondent’s
domain name is confusingly similar to Complainant’s mark.
7.
Complainant
has not proved that Respondent is without rights to and legitimate interests in
the disputed domain name.
8.
Complainant
has not proved that Respondent registered and used the domain name in bad
faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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 registration of the AMERICAN CENTURY mark
with the United States Patent and Trademark Office is sufficient for
Complainant to establish rights in the mark 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 Vivendi Universal
Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11, 2003).
Registration with the USPTO creates a
rebuttable presumption that the mark is distinctive, either inherently or
acquired through secondary meaning. See
Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002); see also Janus Int’l Holding Co. v.
Rademacher, D2002-0201
(WIPO Mar. 5, 2002).
Respondent’s <americancenturymortgage.com>
domain name incorporates Complainant’s AMERICAN CENTURY mark in its
entirety, eliminates the space between the terms, adds the descriptive term
“mortgage,” and adds a generic top-level domain. The term “mortgage” could be associated with
Complainant’s financial services and investment business. The addition of the word “mortgage” does not
overcome a finding of confusing similarity under 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 or confusing similarity for purposes
of the Policy despite the addition of other words to such marks”); see also
Arthur Guiness Son & Co.(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23,
2001) (finding confusing similarity where the domain name in dispute contains
the identical mark of the complainant with a generic word or term); see
also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
Complainant has established that the domain
name and the mark are confusingly similar as required under Policy ¶ 4(a)(i).
Complainant must first make a prima facie
case that Respondent lacks rights or legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii), and then the
burden shifts to Respondent to show he does have rights or legitimate
interests. See Hanna-Barbera Prods.,
Inc. v. Entm’t Commentaries, FA
741828 (Nat. Arb. Forum Aug. 18, 2006).
The burden is light, but it must be carried. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum
Sept. 25, 2006).
Complainant alleges that Respondent is not
commonly known by the <americancenturymortgage.com> domain name
and that Respondent is not a licensee of Complainant. It is undisputed that Respondent is not a
licensee of Complainant.
It is true that Respondent is Alan Lewin, not
<americancenturymortgage.com>.
Respondent contends that though Alan Lewin is
the registrant of the domain name, he registered the domain name to reflect a
corporation organized under the laws of Pennsylvania, named American Century
Mortgage Corporation, showing an entity creation date of August 8, 2000. The officer named as president of the
corporation is shown as “Lewin, Miriam.”
The inference is made that Respondent and Miriam Lewin are related, and
that Respondent is engaged in the mortgage business under the name American
Century Mortgage Corporation. Under
these facts, the Panel must find that the corporate registration and operation
under that name by Respondent constitutes a situation where Respondent is commonly
known by the <americancenturymortgage.com>
domain name and has established
rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See VeriSign Inc. v. VeneSign C. A., D2000-0303 (WIPO June 28,
2000) (finding that the respondent has rights and a legitimate interest in the
domain name since the domain name reflects the respondent’s company name); see
also Am. Online, Inc., v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum
Apr. 11, 2003) (holding that the respondent had rights or legitimate interests
in the disputed domain name where its business name was “Anytime OnLine Traffic
School” and that it was therefore not far-fetched to use
<aoltrafficschool.com> as a domain name for its business).
A respondent is
entitled to defend a case filed against him by showing that “you (as an
individual, business, or other organization) have been commonly known by the
domain name, even if you have acquired no trademark or service mark rights….” See Policy ¶ 4(c)(ii). Respondent has operated a mortgage business
under the name, American Century Mortgage Corporation, since at least the year
2000.
Complainant alleges
that Respondent is using the disputed domain name to display a directory of sponsored
links to third-party websites that offer financial services, including
Complainant’s services. Complainant
attaches to the Complaint a web page under the name <americancenturymortgage.com> that appears to be
a site, which offers click-through sites offering among other things, mutual
fund sales, which is in direct competition with Complainant’s financial
services offerings that include mutual fund sales. The date when Complainant obtained this web
page is not stated in the pleadings.
Respondent alleges that no website is operational. Independent investigation by the Panel shows
that <americancenturymortgage.com> is not an active site, nor can it be found on
the Internet. It is true that operation
of a click-through site that offers services competitive with a complainant's
products is not a bona fide use. However, no such website now exists. No damage is presently being done to
Complainant.
Complainant has not
proven that Respondent is without rights to and legitimate interests in the
disputed domain name as required under Policy ¶ 4(a)(ii).
Complainant bears the burden of proving that
Respondent both registered and used the disputed domain name in bad faith. See Policy ¶ 4(a)(iii). While Complainant has shown some evidence of
bad faith use for some period of time, no evidence is presented which would
allow a Panel to find that Respondent registered the disputed domain name in
bad faith, where the facts are clear that Respondent was operating a mortgage
business under the corporate name, American Century Mortgage Corporation at the
time of the registration of the <americancenturymortgage.com> domain name.
Under the circumstance where Complainant
fails to prove that Respondent is without rights to or legitimate interests in
the domain name, the issue of bad faith registration and use is moot. See The Vanguard
Group, Inc. v. Investors Fast Truck,
FA 863257 (Nat. Arb. Forum Jan. 18 2007) (“Because Respondent has
rights and legitimate interests in the disputed domain name, his registration
is not in bad faith.”); see also Lockheed Martin Corp. v. The Skunkworx
Custom Cycle, D2004-08245
(WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use
was moot once the panel found the respondent had rights or legitimate interests
in the disputed domain name).
Complainant fails to show that Respondent
registered and used the disputed domain name in bad faith as required by Policy
¶ 4(a)(iii).
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 4, 2007
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