THESTREET, Inc. v. Vikas Kohli / Aequitas International Inc.
Claim Number: FA2003001887101
Complainant is THESTREET, Inc. (“Complainant”), represented by Seed IP Law Group LLP, Washington, USA. Respondent is Vikas Kohli / Aequitas International Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thestreet.blog>, registered with Domain.com, LLC.
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.
Alan L Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2020. The Forum received payment that day.
On March 6, 2020, Domain.com, LLC confirmed by e-mail to the Forum that the <thestreet.blog> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 March 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2020 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@thestreet.blog. Also on March 9, 2020, 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.
A timely but informal Response was received on March 30, 2020.
On April 6, 2020 Complainant submitted an Additional Submission to the Forum electronically, with evidence of its service on Respondent in accordance with the Forum’s Supplemental Rule 7.
On April 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L Limbury as Panelist.
The Panel has taken into account the Complaint, the Response and Complainant’s Additional Submission.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates an online business and financial news and information service. Complainant has rights in the THESTREET mark through trademark registrations with the United States Patent and Trademark Office. The domain name is identical or confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in respect of the domain name. Respondent is not licensed or authorized to use Complainant’s mark and is not commonly known by the domain name. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to link to third-party websites that compete with Complainant whereby Respondent earns advertising fees through the “Amazon Services LLC Associates Program.”
This use shows that Respondent registered and uses the domain name in bad faith, disrupting Complainant’s business for Respondent’s own commercial gain, and that Respondent had actual or constructive knowledge of Complainant’s rights in the THESTREET mark at the time of registration.
B. Respondent
Respondent has operated a business providing financial information to clients in an online format for ten years. The domain name is not confusingly similar to Complainant’s mark because “The Street” refers to “Wall Street” in New York and not Complainant’s THESTREET mark. The results of an online Google search for “the street meaning finance” support this.
Respondent has rights or legitimate interests in the domain name and registered and uses the domain name in good faith. Respondent uses the domain name to provide relevant information to people that are interested in the news from Wall Street in New York, widely recognized as the center of financial activity in the world. This is use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is also use in good faith.
C. Complainant’s Additional Submission
The information provided by Respondent’s search "the street meaning finance" is misleading because the most prominent results of a Google search for the salient term "thestreet" are all associated with Complainant's mark THESTREET, including Complainant's website "www.thestreet.com”.
Respondent's "the street meaning finance" search is also irrelevant given that Respondent is using the term not to describe Wall Street but to engage in unauthorized use of Complainant's trademark to promote directly competitive financial and business news to consumers to generate click-through fees and advertising revenue.
Complainant has established all the elements entitling it to relief.
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.
Complainant has rights in the THESTREET mark through several trademark registrations with the United States Patent and Trademark Office, including Reg. No. 2,289,745, registered November 2, 1999 and renewed December 12, 2019 for “computer services, namely, providing an on-line magazine in the field of financial services via a multi-user global computer information network” in International Class 42.
Respondent says the domain name is not confusingly similar to Complainant’s mark because “The Street” refers to “Wall Street” in New York and not Complainant’s THESTREET mark. However, the test of identity or confusing similarity involves a simple side by side comparison of the trademark and the domain name, without regard for the meaning of the words.
Respondent’s <thestreet.blog> domain name is identical to Complainant’s THESTREET mark as it comprises the entirety of the mark and merely adds the “.blog” generic top-level domain (“gTLD”), which may be ignored in relation to this element.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
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), then 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).
Respondent registered the <thestreet.blog> domain name on October 15, 2019. As mentioned in relation to the first element, the domain name comprises the entirety of Complainant’s trademark with the addition of the gTLD “.blog”, which may be taken into account in considering the elements of legitimacy and bad faith, since it conveys the idea of providing online information of the kind for which the trademark is registered.
The domain name resolves to a website headed “The Street latest stockmarket news and investing guides”. The website provides financial information and also depicts products and publications of third parties, described as “Ads by Amazon”. These circumstances, together with Complainant’s assertions, suffice to establish a prima facie case of absence of rights or legitimate interests in the domain name on the part of Respondent.
Respondent does not claim to be commonly known by the domain name and asserts that its use of the domain name to provide relevant information to people that are interested in the news from Wall Street in New York is use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. However, this is precisely the kind of information provided by Complainant for many years under its trademark. The fact that Respondent claims to have provided such information online for many years prior to registering the domain name makes it highly likely that Respondent was actually aware of Complainant and its mark before registering the domain name, as asserted by Complainant and not denied in the Response.
In the circumstances of this case, the Panel finds that Respondent’s use of the domain name is not bona fide use and that Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.
Complainant has established this element.
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
For the reasons given in relation to the second element, the Panel finds both of the above circumstances satisfied and that Respondent registered and is using the domain name in bad faith.
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thestreet.blog> domain name be TRANSFERRED from Respondent to Complainant.
Alan L Limbury, Panelist
Dated: April 11, 2020
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