TD AMERITRADE IP Company, Inc. v. Sarah Louise
Claim Number: FA0704000969267
Complainant is TD AMERITRADE IP Company, Inc. (“Complainant”), represented by Julia
A. Matheson of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., 901 New York Avenue NW, Washington, DC 20001. Respondent is Sarah Louise (“Respondent”), Oliaji Trade Centre,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tdwameritrade.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 24, 2007; the National Arbitration Forum received a hard copy of the Complaint April 25, 2007.
On April 24, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <tdwameritrade.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 17, 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@tdwameritrade.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <tdwameritrade.com>, is confusingly similar to Complainant’s AMERITRADE mark.
2. Respondent has no rights to or legitimate interests in the <tdwameritrade.com> domain name.
3. Respondent registered and used the <tdwameritrade.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TD AMERITRADE IP
Company, Inc., conducts business under the name “TD Ameritrade,” and has
offered brokerage services and related financial services and products since
1975. Complainant holds a registered
trademark with the United States Patent and Trademark Office (“USPTO”) for the
AMERITRADE mark (Reg. No. 2,032,385 issued January 21, 1997).
Respondent, Sarah Louise, registered the <tdwameritrade.com> domain name April 30, 2006. Respondent is using the disputed domain name to advertise competing brokerage and financial services.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Under Policy ¶ 4(a)(i),
registration of a mark with an appropriate governmental authority such as the
USPTO confers rights in that mark to Complainant. Since Complainant registered the AMERITRADE
mark with the USPTO in 1997, the Panel finds that Complainant established
rights in the AMERITRADE mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum
Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately
demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car
Co. v. David Mizer Enters., Inc., FA 622122
(Nat. Arb. Forum Apr. 14, 2006) (finding that the
complainant’s registration with the USPTO for the
The disputed domain name that Respondent registered, <tdwameritrade.com>, contains Complainant’s AMERITRADE mark in its entirety and adds the letters “tdw” and the generic top-level domain (“gTLD”) “.com.” Complainant’s AMERITRADE mark remains the dominant portion of the disputed domain name, especially since Complainant conducts business under the name “TD Ameritrade.” Addition of the three letters to Complainant’s AMERITRADE mark does not sufficiently distinguish the disputed domain name, and the addition of the gTLD “.com” is without relevance to this analysis. Therefore, the Panel finds that Respondent’s <tdwameritrade.com> domain name is confusingly similar to Complainant’s AMERITRADE mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleges that Respondent has no such rights to or legitimate interests in the <tdwameritrade.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant also has alleged that Respondent is not commonly
known by the <tdwameritrade.com>
domain name. The WHOIS information
identifies Respondent as “Sarah Louise,”
and the Panel can find no other evidence in the record indicating that
Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent
is not commonly known by the <tdwameritrade.com>
domain name pursuant to Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other
evidence in the record); see also 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).
Respondent is using the <tdwameritrade.com> domain name containing Complainant’s protected mark to advertise brokerage and financial services that attempt to compete with Complainant. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the panel found that respondent’s use of the disputed domain name to redirect Internet users to a financial services website which competed with complainant was not a bona fide offering of goods or services. In Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), the panel found that the respondent was not using the disputed domain names for a bona fide offering of goods and services or a legitimate noncommercial or fair use when the respondent used the disputed domain names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks. Like the disputed domain name in Ameritrade, Respondent’s <tdwameritrade.com> domain name redirects Internet users to a financial services website which competes with Complainant. Consistent with the panels in Ameritrade and Coryn, this Panel finds that Respondent’s use of the <tdwameritrade.com> domain name to advertise services that compete with Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <tdwameritrade.com> domain name to advertise brokerage and financial services that attempt to compete with Complainant. This is likely to disrupt Complainant’s business by diverting potential customers to Respondent’s website. Therefore, the Panel finds that Respondent’s registration and use of the <tdwameritrade.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that the respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); 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)).
The disputed domain name <tdwameritrade.com>, which is confusingly similar to Complainant’s AMERITRADE mark, is likely to cause confusion among customers searching for Complainant’s brokerage and financial services. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the competing services advertised on Respondent’s website. Respondent is attempting to commercially benefit from this likelihood of confusion between Respondent’s domain name and the goodwill associated with Complainant’s AMERITRADE mark. Therefore, the Panel finds that Respondent’s registration and use of the <tdwameritrade.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tdwameritrade.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 6, 2007.
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