American Century Proprietary Holdings, Inc. v. Kim Gavlik
Claim Number: FA0703000934414
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 <americancenturylife.com>, registered with Go Daddy Software, 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.
Terry F. Peppard as Panelist.
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 <americancenturylife.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 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 4, 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@americancenturylife.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant markets a wide
variety of financial and investment services.
Complainant and its parent
company, American Century Services Corporation, have used the AMERICAN CENTURY
trademark since at least 1996.
Complainant uses this mark to
promote and market its services to both its individual and institutional
customers.
Complainant holds a trademark
registration with the United States Patent and Trademark Office (“USPTO”) for
the AMERICAN CENTURY mark (Reg. No. 2,084,652, issued July 29, 1997).
Complainant also operates a
website at the <americancentury.com> domain name.
Respondent is not authorized to use Complainant’s AMERICAN
CENTURY mark, and Respondent is not associated with Complainant in any way.
Respondent registered the disputed domain name <americancenturylife.com> on January 8, 2007.
Respondent’s domain name resolves to a website that displays hyperlinks to third-party websites in direct competition with the business of Complainant.
Respondent’s domain name is confusingly similar to Complainant’s AMERICAN CENTURY mark.
Respondent does not have any rights or legitimate interests in the domain name <americancenturylife.com>.
Respondent has registered and now uses the <americancenturylife.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s trademark registration with the USPTO
sufficiently establishes Complainant’s rights in the AMERICAN CENTURY mark for
purposes of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Respondent’s <americancenturylife.com> domain name is confusingly similar to Complainant’s AMERICAN CENTURY mark within the meaning of Policy ¶ 4(a)(i). The addition of the generic term “life” to Complainant’s entire mark does not sufficiently distinguish the disputed domain name from Complainant’s mark as that mark is the dominant portion of the <americancenturylife.com> domain name. Moreover, the generic top-level domain (“gTLD”) “.com” is irrelevant when conducting a Policy ¶ 4(a)(i) analysis, inasmuch as a gTLD is a requirement of every domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains a complainant’s mark combined with a generic word or term); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to a complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Initially Complainant must establish that Respondent lacks rights and legitimate interests with respect to its domain name. However, once Complainant makes a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate in the disputed domain name. See, for example, 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.
In its Complaint, Complainant has made out a prima facie case. Respondent’s failure to respond to the Complaint therefore permits a finding that Respondent lacks rights to or interests in the contested domain. 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).”
We also note that there is no dispute in the record before us that Respondent is using the <americancenturylife.com> domain name to display hyperlinks to a variety of third-party websites in direct competition with the business of Complainant, presumably for Respondent’s commercial benefit through the accrual of click-through fees. Such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to a complainant, and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in a domain name); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that a respondent’s use of a domain name that was confusingly similar to a complainant’s mark to display links to that complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Moreover, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <americancenturylife.com> domain name, and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name. Complainant also asserts, and Respondent does not deny, that Respondent is not authorized to use Complainant’s AMERICAN CENTURY mark, and that Respondent is not associated with Complainant in any way. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), a panel found that a respondent did not have rights in a domain name where that respondent was not known by the mark. See also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
In the uncontroverted circumstances here presented, we may presume that Respondent receives click-through fees for the hyperlinks displayed on the website that resolves from the <americancenturylife.com> domain name. This, taken together with the fact that Respondent’s disputed domain name is capable of creating a likelihood of confusion as to Complainant’s possible sponsorship and affiliation with the disputed domain name and corresponding website, constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by offering links to third-party websites that provided services similar to those offered by a complainant).
Finally under this head, it appears that Respondent
registered the domain name <americancenturylife.com>
with at least constructive knowledge of Complainant’s rights in the AMERICAN
CENTURY trademark by virtue of Complainant’s
prior registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <americancenturylife.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 16, 2007
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