Invesco Ltd. v. Michael Salerno
Claim Number: FA1807001796488
Complainant is Invesco Ltd. (“Complainant”), represented by Sam Gunn of Alston & Bird, LLP, Georgia, USA. Respondent is Michael Salerno (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <invescowealth.com>, registered with 1&1 Internet SE; and <invescoprentice.com> and <invescofinancial.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2018; the Forum received payment on July 12, 2018.
On July 13, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the
<invescowealth.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. On July 16, 2018, 1&1 Internet SE confirmed by email to the Forum that the <invescoprentice.com> and <invescofinancial.com> domain names are registered with registered with 1&1 Internet SE and that Respondent is the current registrant of the names. 1&1 Internet SE and GoDaddy.com, LLC have verified that Respondent is bound by the 1&1 Internet SE and GoDaddy.com, LLC registration agreements 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 July 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2018 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@invescoprentice.com, postmaster@invescowealth.com, and postmaster@invescofinancial.com. Also on July 24, 2018, 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 August 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <invescoprentice.com>, <invescowealth.com> and <invescofinancial.com> domain names are confusingly similar to Complainant’s INVESCO mark.
2. Respondent does not have any rights or legitimate interests in the <invescoprentice.com>, <invescowealth.com> and <invescofinancial.com> domain names.
3. Respondent registered and uses the <invescoprentice.com>, <invescowealth.com> and <invescofinancial.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Invesco Ltd., provides financial services around the world using its INVESCO mark. Complainant holds a registration for its INVESCO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,825,441, registered Mar. 8, 1994).
Respondent registered the disputed domain names on May 4, 2018, and uses them to promote companies competing with Complainant.
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(f), 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 (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.”).
The Panel finds that Complainant has established rights in the INVESCO mark under Policy ¶ 4(a)(i) through registration with the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <invescoprentice.com>, <invescowealth.com> and <invescofinancial.com> domain names use Complainant’s INVESCO mark and merely add the descriptive terms “prentice,” “wealth,” or “financial,” and the gTLD “.com.” The addition of a descriptive term and gTLD does not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Accordingly, the Panel finds that Respondent’s <invescoprentice.com>, <invescowealth.com> and <invescofinancial.com> domain names are confusingly similar to Complainant’s INVESCO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain names and is not commonly known by the domain names. Complainant has not licensed or otherwise authorized Respondent to use its INVESCO mark. The WHOIS information of record for the <invescoprentice.com>, <invescowealth.com> and <invescofinancial.com> domain names lists “Michael Salerno” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <invescoprentice.com>, <invescowealth.com> and <invescofinancial.com> domain names. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name); see also State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Complainant contends that Respondent uses the domain names to trade off the goodwill of Complainant’s mark by promoting a group of competing companies and misleading Internet users into investing in the companies. Under Policy ¶¶ 4(c)(i) and (iii), use of a domain name to pass off as a complainant to promote a competing business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Complainant provided screenshots of the <invescoprentice.com>, <invescowealth.com> and <invescofinancial.com> websites, showing that the sites feature Complainant’s INVESCO mark and purport to offer services that compete with Complainant’s business. The Panel finds that this use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant demonstrates that Respondent attempts to disrupt Complainant’s business and create confusion with Complainant’s mark for commercial gain by using the disputed domain names to divert Internet users to competing websites. Under Policy ¶¶ 4(b)(iii) and (iv), use of a domain name to disrupt a complainant’s business or to trade off a complainant’s mark for financial gain is evidence of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark 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).”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel finds that Respondent registered and used the domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the INVESCO mark. Complainant’s INVESCO mark has created significant good will and consumer recognition around the world and was first used by Complainant in 1979. Due to the fame of Complainant’s mark, and the use of Complainant’s mark to directly complete with Complainant, the Panel finds that Respondent had actual knowledge of Complainant’s rights when it registered the disputed domain names, further evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
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 <invescoprentice.com>, <invescowealth.com> and <invescofinancial.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 16, 2018
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