Pioneer Investment Management USA Inc. v. Josh Tillman
Claim Number: FA1705001731280
Complainant is Pioneer Investment Management USA Inc. (“Complainant”), represented by Anthony C. Topper of Cesari & McKenna LLP, Massachusetts, USA. Respondent is Josh Tillman (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pioneerinvestmentsinternational.com>, registered with GoDaddy.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 Forum electronically on May 11, 2017; the Forum received payment on May 11, 2017.
On May 12, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pioneerinvestmentsinternational.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 May 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2017 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@pioneerinvestmentsinternational.com. Also on May 19, 2017, 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 June 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global investment management and advisory firm doing business under the mark PIONEER INVESTMENTS.
Complainant holds a registration for the PIONEER INVESTMENTS service mark, which is on file with the United States Trademark and Patent Office (“USPTO”) as Registry No. 2,382,365, registered September 5, 2000.
Respondent registered the domain name <pioneerinvestmentsinternational.com> on November 18, 2015.
The domain name is confusingly similar to Complainant’s mark PIONEER INVESTMENTS.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its PIONEER INVESTMENTS mark in any fashion.
Respondent uses the domain name to resolve to a webpage offering services that compete with Complainant’s business.
This use of the domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts the business of Complainant.
Respondent’s use of the domain name attracts Internet traffic and benefits Respondent commercially by creating confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with it.
Respondent knew of Complainant’s rights in the PIONEER INVESTMENTS mark when it registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 cancelled or transferred:
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 by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 PIONEER INVESTMENTS service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum August 9, 2015) (finding, under Policy ¶ 4(a)(i), that a UDRP complainant had rights in the METROPCS mark through its registration of that mark with the United States Patent and Trademark Office).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <pioneerinvestmentsinternational.com> domain name is confusingly similar to Complainant’s PIONEER INVESTMENTS service mark. The domain name contains the mark in its entirety, merely eliminating the space between its terms and appending the geographic term “international” and the generic Top Level Domain (“gTLD”) “.com”. 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 Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015):
Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.
See also Google Inc. v. S S/Google International, FA 1625724 (Forum August 4, 2015):
[T]he addition of the generic term ‘international’ within the Disputed Domain Name fails to adequately distinguish the Disputed Domain Name from the Complainant’s Mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent 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 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … 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 December 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 they are 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 determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged domain name <pioneerinvestmentsinternational.com>, and that Complainant has not licensed or otherwise authorized Respondent to use its PIONEER INVESTMENTS mark in any fashion. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Registration Private” and “JOSH TILLMAN,” neither of which resembles the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a UDRP respondent was not commonly known by a disputed domain name, and therefore failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where a complainant had not authorized that respondent to incorporate its mark in a domain name registration). See also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (finding that a UDRP respondent was not commonly known by a domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by that domain name).
We next observe that Complainant asserts, without objection from Respondent, that the website resolving from the <pioneerinvestmentsinternational.com> domain name offers for sale services that compete with Complainant’s business, and that Respondent profits commercially from this use of the domain name. 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) so as to confirm in Respondent rights to or legitimate interests in the domain name as described in those provisions. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum December 5, 2003) (finding that a respondent was not using contested domain names for either a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain names to divert Internet users to a website offering services that competed with those of a UDRP complainant under its marks).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <pioneerinvestmentsinternational.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See DatingDirect.com Ltd. v. Aston, FA 593977 (ForumDecember 28, 2005):
Respondent is appropriating Complainant’s mark [in a challenged domain name] to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent employs the disputed <pioneerinvestmentsinternational.com> domain name, which is confusingly similar to Complainant’s PIONEER INVESTMENTS mark, to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy ¶ 4(b)(iv), this too demonstrates Respondent’s bad faith in registering and using the domain name. See, for example, Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (finding, under Policy ¶ 4(b)(iv), bad faith registration and use of a domain name where a UDRP respondent used a domain that was confusingly similar to the mark of another to compete with that mark holder’s business online).
In addition, it is evident from the record that Respondent knew of Complainant and its rights in the PIONEER INVESTMENTS mark when it registered the <pioneerinvestmentsinternational.com> domain name. This further illustrates Respondent’s bad faith in registering the domain name. See alsoVictoria’s Secret Stores v. Michael Bach, FA 1426668 (Forum March 2, 2012):
Respondent had actual notice [of complainant’s mark] at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).
The panel thus 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 <pioneerinvestmentsinternational.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 22, 2017
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