American Funds Distributors, Inc. and The Capital Group Companies, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2010001916283
Complainant is American Funds Distributors, Inc. and The Capital Group Companies, Inc. (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loginamericanfunds.com>, registered with Media Elite Holdings Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 8, 2020; the Forum received payment on October 8, 2020.
On October 21, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <loginamericanfunds.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@loginamericanfunds.com. Also on October 21, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant offers investment management services in the United States. Complainant has rights the the AMERICAN FUNDS trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”). (Reg. No. 2,627,929, registered Oct. 1, 2002). Complainant also has other registrations that incorporate the trademark as well. (e.g. AMERICAN FUNDS INSURANCE SERIES, Reg. 2,441,920, registered Apr. 10, 2001; AMERICAN FUNDS TARGET DATE RETIREMENT SERIES, Reg. 3,279,248, registered Aug. 14, 2007). Respondent’s <loginamericanfunds.com> domain name is confusingly similar to Complainant’s trademark as it incorporates the trasdemark in its entirety and adds the generic words “log in”, as well as the “.com” generic top-level domain (“gTLD”) to the trademark.
Respondent lacks rights and legitimate interests in the <loginamericanfunds.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its AMERICAN FUNDS trademark in the disputed domain name. Respondent does not use the disputed domain name <loginamericanfunds.com> for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosted related and competing hyperlinks on the disputed domain name’s resolving website, and now attempts to install malicious or phishing software onto users’ computers.
Respondent registered and uses the <loginamericanfunds.com> domain name in bad faith. Respondent attracted internet users for commercial gain by hosting competing and related hyperlinks on the disputed domain name’s resolving website. Respondent registered the disputed domain name with constructive knowledge of Complainant’s rights in the AMERICAN FUNDS trademark. Respondent failed to respond to Complainant’s cease-and-desist letter. Respondent uses the disputed domain name to install malicious and/or phishing software on internet user’s computers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
As noted above (see “Parties”), the Complainant are two companies, closely related to each other, 1) American Funds Distributors, Inc, an indirect wholly owned subsidiary of 2) The Capital Group Companies, Inc. The Panel will collectively hereafter refer to both companies as “the Complainant”, unless not specifically mentioned separately.
The Complainant is the owner of the following U.S. trademark:
No. 2,627,929 AMERICAN FUNDS (word), registered in the name of American Funds Distributors, Inc, on October 1, 2002 for services in class 36.
The Complainant is also the owner of a number of national U.S. trademark registrations that includes the words “AMERICAN FUNDS”:
No. 2,441,920 AMERICAN FUNDS INSURANCE SERIES
No. 3,279,248 AMERICAN FUNDS TARGET DATE RETIREMENT SERIES
No. 3,338,518 AMERICAN FUNDS 2045 TARGET DATE RETIREMENT
FUND
No. 3,338,519 AMERICAN FUNDS 2040 TARGET DATE RETIREMENT
FUND
No. 3,338,521AMERICAN FUNDS 2010 TARGET DATE RETIREMENT
FUND
No. 3,338,522 AMERICAN FUNDS 2035 TARGET DATE RETIREMENT FUND
No. 3,338,526 AMERICAN FUNDS 2015 TARGET DATE RETIREMENT
FUND
No. 3,347,004 AMERICAN FUNDS 2020 TARGET DATE RETIREMENT
FUND
No. 3,347,006 AMERICAN FUNDS 2025 TARGET DATE RETIREMENT
FUND
No. 3,347,007 AMERICAN FUNDS 2030 TARGET DATE RETIREMENT
FUND
No. 3,355,084 AMERICAN FUNDS 2050 TARGET DATE RETIREMENT
FUND
No. 3,417,419 AMERICAN FUNDS DISTRIBUTORS
No. 3,417,421 AMERICAN FUNDS SERVICE COMPANY
No. 3,714,838 AMERICAN FUNDS RETIREMENT ROADMAP
No. 3,774,096 AMERICAN FUNDS MONEY MARKET FUND
No. 3,858,991 AMERICAN FUNDS SHORT-TERM TAX-EXEMPT BOND
FUND
No. 3,933,533 AMERICAN FUNDS 2055 TARGET DATE RETIREMENT FUND
No. 4,086,669 AMERICAN FUNDS MORTGAGE FUND
No. 4,086,672 AMERICAN FUNDS FUNDAMENTAL INVESTORS
No. 4,126,083 AMERICAN FUNDS TAX-EXEMPT FUND OF NEW YORK
No. 4,444,650 AMERICAN FUNDS COLLEGE TARGET DATE SERIES
No. 4,444,652 AMERICAN FUNDS COLLEGE 2021 FUND
No. 4,444,653 AMERICAN FUNDS COLLEGE 2024 FUND
No. 4,444,654 AMERICAN FUNDS COLLEGE 2027 FUND
No. 4,444,655 AMERICAN FUNDS COLLEGE 2030 FUND
No. 4,583,537 AMERICAN FUNDS COLLEGE ENROLLMENT FUND
No. 4,731,917 AMERICAN FUNDS INFLATION LINKED BOND FUND
No. 5,021,117 THE AMERICAN FUNDS ADVANTAGE
No. 5,021,122 AMERICAN FUNDS COLLEGE 2033 FUND
No. 5,044,233 AMERICAN FUNDS 2060 TARGET DATE RETIREMENT
FUND
No. 5,222,031 AMERICAN FUNDS CORPORATE BOND FUND
No. 5,222,033 AMERICAN FUNDS EMERGING MARKETS BOND FUND
No. 5,246,844 AMERICAN FUNDS TARGET DATE PROVIEW, and
No. 5,284,174 AMERICAN FUNDS PREMIERPASSPORT
The disputed domain name <loginamericanfunds.com> was registered on August 10, 2020.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant claims rights in the AMERICAN FUNDS trademark through its registration of the trademark with the USPTO. (Reg. No. 2,627,929, registered Oct. 1, 2002). As noted above, the Complainant also has a number of other registrations that incorporate the trademark as well. (e.g. AMERICAN FUNDS INSURANCE SERIES, Reg. 2,441,920, registered Apr. 10, 2001; AMERICAN FUNDS TARGET DATE RETIREMENT SERIES, Reg. 3,279,248, registered Aug. 14, 2007).
Registration with the USPTO is generally sufficient to establish rights in a trademark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <loginamericanfunds.com> domain name is confusingly similar to Complainant’s AMERICAN FUNDS trademark, as it incorporates the trademark in its entirety and adds the generic words “log in”, as well as the “.com” gTLD to the end of the mark. Adding generic words and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the trademark it incorporates 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). The Panel note that the disputed domain name incorporates Complainant’s AMERICAN FUNDS trademark in its entirety, only adding the generic words/term “log in” to the front of the trademark, and the “.com” gTLD to the end, and therefore find that the disputed domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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).
The Complainant argues that Respondent is not commonly known by the <loginamericanfunds.com> domain name, nor has Complainant authorized or licensed Respondent to use its AMERICAN FUNDS trademark in the disputed domain name. Where a response is lacking, relevant WHOIS information, as well as WHOIS information hidden behind a privacy service, may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS of record merely lists a privacy services as the registrant of the disputed domain name, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain names. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <loginamericanfunds.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts related and competing hyperlinks, as well as malicious software on the disputed domain name’s resolving website. Using a disputed domain name’s resolving website to host competing and related hyperlinks, as well as malicious software, may indeed not be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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 also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Complainant provides screenshots of the disputed domain name’s previous resolving website, which featured links for “retirement plans”, “401k account”, and other related or competing financial services. The disputed domain name currently appears to be trying to install a browser extension that promotes “web safety” by changing the user’s default search engine to a “private search domain”. Complainant argues this points to Respondent attempting to download malicious or phishing software onto internet users’ computers. The Panel agrees, and find that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶ 4(a)(ii).
The Complainant argues that Respondent registered and used the <loginamericanfunds.com> domain name for bad faith attraction for commercial gain by hosting competing pay-per-click links on the disputed domain name’s resolving website. Hosting hyperlinks that compete with or relate to a Complainant’s business is generally considered evidence of bad faith attraction for commercial gain under Policy ¶ 4(a)(i). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As noted above, the complainant has provided a screenshot of the disputed domain name’s resolving website, which features links to various financial services. Based on the facts provided by the Complainant, the Panel find that Respondent registered and used the disputed domain name for bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <loginamericanfunds.com> domain name in bad faith, as it had constructive knowledge of Complainant’s rights in the AMERICAN FUNDS trademark. While constructive knowledge is generally insufficient to support a finding of bad faith under Policy ¶ 4(a)(iii), actual knowledge may sufficient, and may be demonstrated a respondent registering a disputed domain name that incorporates a complainant’s trademark and through its competing or related use of the disputed domain name’s resolving website. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Again, as noted above, as shown by the Complainant, the disputed domain name incorporates Complainant’s trademark in its entirety, and previously resolved to a website offering hyperlinks to related or competing services. Therefore, the Panel find that Respondent registered the disputed domain name <loginamericanfunds.com> in bad faith, as every circumstances clearly indicates that Respondent had actual knowledge of Complainant’s rights in the trademark under Policy ¶ 4(a)(iii).
The Complainant purports that Respondent has failed to respond to a cease-and-desist letter sent by Complainant. Failure to respond to a cease-and-desist may demonstrate bad faith under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides a copy of the cease-and-desist it sent to Respondent, and alleges that Respondent has not responded. Therefore, the Panel find bad faith by the Respondent under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <loginamericanfunds.com> domain name in bad faith by attempting to download malicious and/or phishing software onto internet users’ computers. Attempting to install malicious or phishing software at a disputed domain name’s resolving website is generally considered bad faith use under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Forum Dec. 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). Based on the screenshots of the disputed domain name’s current resolving website, said screenshots provided by the Complainant, which features an initial warning from Complainant’s antivirus software, and appears to be offering a browser extension of some kind, the Panel find that Respondent registered and uses the disputed domain name in bad faith under 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 <loginamericanfunds.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 23, 2020
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