Thomson Reuters Global Resources v. Jan Everno / The Management Group II
Claim Number: FA1410001584429
Complainant is Thomson Reuters Global Resources (“Complainant”), represent-ed by Alexandre A. Montagu of MontaguLaw, P.C., United States of America. Respondent is Jan Everno / The Management Group II (“Respondent”), United States of America.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <isi-thomsomreuters.net>, registered with Domainhysteria.com LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 11, 2014; the National Arbitration Forum received payment on October 11, 2014.
On October 15, 2014, Domainhysteria.com LLC confirmed by e-mail to the National Arbitration Forum that the <isi-thomsomreuters.net> domain name is registered with Domainhysteria.com LLC and that Respondent is the current registrant of the name. Domainhysteria.com LLC has verified that Respondent is bound by the Domainhysteria.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 17, 2014, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of November 6, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@isi-thomsomreuters.net. Also on Octo-ber 17, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Re-spondent via post and fax, to all entities and persons listed on Respondent’s reg-istration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 12, 2014, 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" through submission of Electronic and Written Not-ices, as defined in Rule 1 and Rule 2. 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
Complainant uses the THOMSON RUETERS trademark and service mark to provide information for businesses and professionals in the financial, legal, tax, accounting, healthcare and science markets.
Complainant holds registrations for the THOMSON REUTERS mark, on file with the United States Patent and Trademark Office ("USPTO") (including Registry No. 4,105,789, registered Feb. 28, 2012).
Complainant has also acquired the mark ISI WEB OF KNOWLEDGE, which is registered with the USPTO as Registry No. 2,743,528, registered July 29, 2003.
Respondent registered the domain name <isi-thomsomreuters.net> on October 14, 2014.
The domain name is confusingly similar to the THOMSON RUETERS mark.
Respondent has not been commonly known by the <isi-thomsomreuters.net> domain name.
Respondent has no relationship with Complainant, and Complainant has not given Respondent permission to use its THOMSON REUTERS mark.
Respondent uses the domain name to profit by providing links to third-party web-sites that sell products and services that compete with those of Complainant.
Respondent lacks rights to or legitimate interests in the disputed domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent attempts to generate commercial gain by creating confusion among Internet users as to the possibility of an affiliation between Complainant and the disputed domain name.
Respondent knew of Complainant and its rights in the THOMSON REUTERS mark when it registered the domain name.
Respondent has engaged in bad faith registration and use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to 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."
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 can-celled 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the THOMSON RUETERS trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office ("USPTO"). See, for example, Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <isi-thomsomreuters.net> domain name is confusingly similar to Complainant’s THOMSON RUETERS mark. The domain name incorporates the entire mark, with only a misspelling made by replacing the letter “n” in THOMPSON with a letter “m” and the inclusion of a hyphen and the omission of the spacing between its terms, plus the addition of the prefix “ISI,” an abbreviation for the Institute for Scientific Information, an aspect of Complain-ant’s business, and of the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding a disputed domain name confusingly similar to a UDRP com-plainant’s mark regardless of the omission of a letter and of spaces in the mark and the addition of hyphens, a descriptive term and a gTLD).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has never been commonly known by the <isi-thomsomreut-ers.net> domain name, that Respondent has no relationship with Complainant, and that Complainant has never given Respondent permission to use its THOM-SON REUTERS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Jan Everno / The Management Group II,” which does resemble the domain name. On this record, we conclude that Re-spondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(i). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by the <cigaraficionada.com> domain name and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <isi-thomsomreuters.net> domain name to profit by providing links to third-party websites that sell products and services that compete with those of Complainant. This employment of the domain name 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel there finding that:
The disputed domain name, …, currently resolves to a website displaying Complainant’s marks and contains links to Complain-ant’s competitors. The Panel finds this to be 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).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <isi-thomsomreuters.net> domain name, as alleged in the Complaint, disrupts Com-plainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a domain name in bad faith under Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise goods and services of a UDRP complainant’s commercial competitors, thereby disrupting that complainant’s business).
We are also convinced by the evidence that Respondent employs the <isi-thomsomreuters.net> domain name, which is confusingly similar to Complain-ant’s THOMSON REUTERS mark, to produce commercial gain by creating confusion among internet users as to the possibility of an affiliation between the domain name and Complainant. This demonstrates Respondent’s bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding, under Policy ¶ 4(b)(iv), that a respondent engaged in bad faith registration and use of disputed domain names by using them to profit by operating a commercial search engine with links to the products of a UDRP complainant’s competitors).
Finally under this head of the Policy, we conclude from the record that Respond-ent knew of Complainant and its rights in the THOMSON RUETERS trademark and service mark when it registered the <isi-thomsomreuters.net> domain name. This is further evidence of Respondent’s bad faith in the registration and use of the domain name. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), on the point of a UDRP respond-ent’s bad faith:
The Panel … here finds actual knowledge through the name used for the domain and the use made of it.
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <isi-thomsomreuters.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 13, 2014
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