AllianceBernstein L.P. Composed of AllianceBernstein Corporation v. viktor bilmen / Komra
Claim Number: FA2204001993321
Complainant is AllianceBernstein L.P. Composed of AllianceBernstein Corporation (“Complainant”), represented by Lori E. Harrison of Troutman Pepper Hamilton Sanders LLP, New York, USA. Respondent is viktor bilmen / Komra (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bernstein-alliance.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 known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2022; the Forum received payment on April 21, 2022.
On April 22, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bernstein-alliance.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 April 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2022 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@bernstein-alliance.com. Also on April 25, 2022, 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 May 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, AllianceBernstein L.P., is a New York-based global asset management firm that provides investment management and research services worldwide.
Complainant claims rights in the ALLIANCEBERNSTEIN mark through registration with the United States Patent and Trademark Office (“USPTO”).
The domain name <bernstein-alliance.com> is confusingly similar to Complainant’s ALLIANCEBERNSTEIN mark because it incorporates the entire mark and merely rearranges the words comprising the mark while adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <bernstein-alliance.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant granted Respondent permission to use the ALLIANCEBERNSTEIN mark in any way. Additionally, Respondent fails to use the domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain to offer competing services with Complainant’s ALLIANCEBERNSTEIN mark.
Respondent registered and uses the <bernstein-alliance.com> domain name in bad faith. Respondent uses the at-issue domain name to pass itself off as Complainant to offer services, and unfairly and opportunistically benefit from the goodwill associated with Complainant’s mark. Respondent had actual knowledge of Complainant’s rights into the ALLIANCEBERNSTEIN mark and demonstrates bad faith by attempting to sell similar products to those commonly associated with Complainant’s mark.
B. Respondent
Respondent failed to file a formal response to this proceeding. However, the Panel notes that Respondent responded to the dispute resolution provider via email suggesting that it was unaware of Complainant’s trademark and purchased the domain name from the registrar.
Complainant has rights in the ALLIANCEBERNSTEIN trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the ALLIANCEBERNSTEIN trademark.
Respondent uses the at-issue domain name to address a competing website.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for its ALLIANCEBERNSTEIN mark establishes Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). 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)).
The at-issue domain name contains Complainant’s ALLIANCEBERNSTEIN mark with its terms reversed and a hyphen inserted between the terms. To complete the domain name Respondent follows the rearranged trademark with the “.com” top level. The differences between <bernstein-alliance.com> and Complainant’s ALLIANCEBERNSTEIN trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <bernstein-alliance.com> domain name is confusingly similar to Complainant’s ALLIANCEBERNSTEIN trademark. See The State of Florida, Department of the Lottery v. Valhalla Properties SA / Kattia Rodriguez Chacon, WIPO Case No. D2012-0316 (finding that “[r]eversing the order of the two words “florida” and “lottery” does not . . .sufficiently alter the perceived meaning of the combination of the combination that results by lacing the two words together” and holding that floridalottery.com is confusingly similar to Complainant’s FLORIDA LOTTERY trademark); see also, Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
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 the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “viktor bilmen / Komra” and the record before the Panel contains no evidence tending to suggest that Respondent is commonly known by either the <bernstein-alliance.com> domain name or by ALLIANCEBERNSTEIN. The Panel therefore concludes that Respondent is not commonly known by the <bernstein-alliance.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent uses the ALLIANCEBERNSTEIN domain name to pass itself off as Complainant and address a website offering financial services similar or identical to those offered by Complainant under its ALLIANCEBERNSTEIN mark. The website’s content appears to be contrived and internally inconsistent. Additionally, Respondent uses the website to pretend that it is authorized by various regulatory agencies when it is not so authorized. Respondent’s use of the <bernstein-alliance.com> domain name in this manner fails to suggest either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present which permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and legitimate interests, Respondent uses <bernstein-alliance.com> to pass itself off as Complainant and address a website offering an array of services that compete with those services offered by Complainant. Such use is disruptive to Complainant’s business and discloses Respondent’s attempt to capitalize on the confusion it created between the at-issue domain name and Complainant’s trademark. Respondent’s use of the domain name shows Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the <bernstein-alliance.com> mark when it registered <bernstein-alliance.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s mark and from Respondent’s use of the <bernstein-alliance.com> domain name as discussed above. See 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”). Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bernstein-alliance.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 24, 2022
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