Scottrade, Inc. v. jones Mary
Claim Number: FA1510001643126
Complainant is Scottrade, Inc. (“Complainant”), represented by Selma Skikic of Scottrade, Inc., Missouri, USA. Respondent is jones Mary (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scottradefinancialservicesinc.com>, registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2015; the Forum received payment on October 20, 2015.
On October 21, 2015, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <scottradefinancialservicesinc.com> domain name is registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA 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 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@scottradefinancialservicesinc.com. Also on October 22, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Notices, 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 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’s Contentions
1. Policy ¶ 4(a)(i) - Complainant has rights in the SCOTTRADE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,140,963, registered on March 3, 1998). Respondent’s <scottradefinancialservicesinc.com> domain name is confusingly similar to the SCOTTRADE mark because it contains the entire mark combined with the descriptive phrase “financial services inc” and the generic top level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii) - Respondent is not commonly known by the <scottradefinancialservicesinc.com> domain name because it is not authorized to use the SCOTTRADE mark.
3. Policy ¶ 4(a)(iii) - Respondent registered and uses the <scottradefinancialservicesinc.com> domain name in bad faith.
B. Respondent’s Contentions
1. Respondent failed to submit a response.
1. Respondent’s <scottradefinancialservicesinc.com> domain name is confusingly similar to Complainant’s SCOTTRADE mark.
2. Respondent does not have any rights or legitimate interests in the <scottradefinancialservicesinc.com> domain name.
3. Respondent registered or used the <scottradefinancialservicesinc.com> domain name 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 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.
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.”).
Complainant alleges it has rights in the SCOTTRADE mark through its registration with the USPTO (Reg. No. 2,140,963, registered on March 3, 1998). Complainant has provided this registration in Exhibit B. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has rights in the SCOTTRADE mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <scottradefinancialservicesinc.com> domain name is confusingly similar to Complainant’s SCOTTRADE mark because it contains the entire mark combined with the phrase “financial services inc” and the gTLD “.com.” The Panel may note that Complainant uses the SCOTTRADE mark in the financial service industry. Past panels have found that adding gTLDs and descriptive terms to marks is not enough to differentiate domain names from marks. 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). Therefore, the Panel finds that Respondent’s <scottradefinancialservicesinc.com> domain name is confusingly similar to Complainant’s SCOTTRADE mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 alleges that Respondent is not commonly known by the <scottradefinancialservicesinc.com> domain name because it is not authorized to use the SCOTTRADE mark. The Panel notes that the WHOIS information lists “jones Mary” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). As such, the Panel finds that Respondent is not commonly known by the <scottradefinancialservicesinc.com> domain name under Policy ¶ 4(c)(ii).
Complainant does not make any specific contentions about Respondent’s use of the <scottradefinancialservicesinc.com> domain name with respect to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). However, the Panel notes that the domain appears to resolve to an inactive page. Therefore, the Panel finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant makes no specific allegation with respect to Respondent’s use of the <scottradefinancialservicesinc.com> domain name in order to show bad faith. However, the Panel notes that the domain appears to resolve to an inactive page. Therefore, the Panel finds that Respondent uses the domain in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scottradefinancialservicesinc.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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