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DECISION

 

Ameriprise Financial, Inc. v. Ameriprise Realty

Claim Number: FA0705000978858

 

PARTIES

Complainant is Ameriprise Financial, Inc. (“Complainant”), represented by David G. Barker, of Snell & Wilmer L.L.P., One Arizona Center, 400 E. Van Buren, Phoenix, AZ 85004-2202.  Respondent is Ameriprise Realty (“Respondent”), 1320 Harbor Bay Parkway, Suite 114, Alameda, CA 94619.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ameripriserealty.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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 14, 2007.

 

On May 8, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <ameripriserealty.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 May 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 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@ameripriserealty.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 8, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <ameripriserealty.com> domain name is confusingly similar to Complainant’s AMERIPRISE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <ameripriserealty.com> domain name.

 

3.      Respondent registered and used the <ameripriserealty.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Ameriprise Financial, Inc., is a financial services company that has operated in the United States through its predecessors-in-interest and parent company for more than 110 years.  Complainant currently has over 2.8 million clients, and is the largest non-discretionary mutual fund advisory program provider in the United States.  Complainant also offers real estate mortgage and financing goods and services.  Complainant uses its AMERIPRISE mark in connection with these services and has applied for a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the mark (Serial No. 78/605,935 filed April 11, 2005).  Complainant also holds a trademark registration with the USPTO for the AMERIPRISE FINANCIAL PLANNING INVITATIONAL mark (Reg. No. 3,196,244 issued January 9, 2007).   

 

Respondent registered the <ameripriserealty.com> domain name on March 3, 2006.  Respondent’s disputed domain name resolves to a website that offers services in direct competition with those offered by 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

 

Registration of a trademark with a governmental authority is not necessary to establish rights under 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 asserts that it has used its AMERIPRISE mark since at least May, 2005.  Complainant has filed a trademark application for the mark with the USPTO, and has already obtained a trademark registration for a mark containing the AMERIPRISE element.  Complainant uses the AMERIPRISE mark in connection with its offering of financial goods and services throughout the United States, including various real estate loans and mortgages.  Complainant has also spent hundreds of millions of dollars on various sources of advertising, including television, print, and Internet advertising.  Accordingly, the Panel finds that Complainant has demonstrated sufficient evidence of secondary meaning associated with its AMERIPRISE mark so as to give Complainant common law rights in the mark under Policy ¶ 4(a)(i).  See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

 

Respondent’s <ameripriserealty.com> domain name is confusingly similar to Complainant’s AMERIPRISE mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety with the addition of the common term “realty” and the generic top-level domain (“gTLD”) “.com.”  The addition of the term “realty,” which has a relation to Complainant’s business, as Complainant provides financial services relating to the realty business, does not sufficiently distinguish Complainant’s mark from Respondent’s disputed domain name.  Nor does the addition of a gTLD render the <ameripriserealty.com> domain name sufficiently distinct from Complainant’s mark, as a gTLD is a required portion of all domain names.  Accordingly, the disputed domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

 

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

 

Rights or Legitimate Interests

 

Complainant initially must establish that Respondent lacks rights and legitimate interests with respect to the <ameripriserealty.com> domain name.  However, once Complainant makes a prima facie case, the burden of proof shifts to Respondent, who must prove that it has rights or legitimate interests in the disputed domain name.  See 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also 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).”). 

 

Although the WHOIS information lists Respondent as “Ameriprise Realty,” there is no other information in the record to suggest that Respondent is or has ever been known by the disputed domain name.  The website that resolves from the <ameripriserealty.com> domain name advertises services provided by an individual in connection with a business known as “Strategic Mortgage.”  Additionally, there is no evidence that Respondent has ever been authorized by Complainant to use its AMERIPRISE mark.  Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii).  See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); 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).

 

Moreover, the Panel finds that Complainant is not using the disputed domain name for 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 Respondent is using the <ameripriserealty.com> domain name to advertise services provided by “Strategic Mortgage,” which offers financial services in competition with those provided by Complainant.  Such competing use of Complainant’s mark does not establish that Respondent has rights or legitimate interests under Policy ¶ 4(a)(ii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s <ameripriserealty.com> domain name resolves to a website where services in direct competition with those provided by Complainant under its AMERIPRISE mark are advertised.  In S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000), the panel found that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent.  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with Complainant’s business).  Accordingly, the Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). 

 

Additionally, the Panel infers that Respondent is using the disputed domain name for its own commercial benefit to profit from the services that are advertised on the website that resolves from the <ameripriserealty.com> domain name.  Additionally, the disputed domain name is capable of creating a likelihood of confusion as to Complainant’s source and affiliation with the disputed domain name and corresponding website, as the disputed domain name contains Complainant’s AMERIPRISE mark and advertises services also provided by Complainant.  Such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

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 <ameripriserealty.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  June 15, 2007

 

 

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