Barclays Global Investors, N.A. v. Chartwell Partners Inc.
Claim Number: FA0602000649706
Complainant is Barclays Global Investors, N.A. (“Complainant”), represented by Susan L. Heller of Greenberg Traurig, LLP, 2450 Colorado Avenue, Suite 400E, Santa Monica, CA 90404. Respondent is Chartwell Partners Inc. (“Respondent”), 8430 Lauralwood Lane, Colorado Springs, CO 80919.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <isharesinvestor.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 24, 2006.
On February 23, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <isharesinvestor.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@isharesinvestor.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
Complainant is a creator of investment strategies with more
than 2,800 clients in thirty-nine countries and with approximately $1.5
trillion in client assets.
Complainant owns and operates ISHARES fund, which is the
world’s most extensive family of Exchange Traded Funds (ETFs).
Complainant owns a trademark registration with the United
States Patent and Trademark Office (“USPTO”) for its ISHARES mark (Reg. No.
2,422,249 issued January 16, 2001).
Complainant spends more than $20 million per year marketing its ISHARES products and services.
Respondent registered the <isharesinvestor.com> domain name on May 4, 2005.
That domain name resolves to a website that appears to be associated with Respondent’s business.
According to the website, Respondent is in the business of providing financial investment advice, which includes advice regarding Complainant’s ISHARES products and services.
Complainant has not licensed or otherwise authorized Respondent to use Complainant’s ISHARES mark.
Respondent is not commonly known by the <isharesinvestor.com> domain name.
Respondent’s <isharesinvestor.com> domain name is confusingly similar to Complainant’s ISHARES mark.
Respondent does not have any rights or legitimate interests in the <isharesinvestor.com> domain name.
Respondent registered and uses the <isharesinvestor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights 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."
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(e), 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 (Nat. Arb. 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.”).
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
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 in bad faith.
Complainant asserts that it has established a prima facie
case of rights in the ISHARES mark due to its registration of the mark with the
USPTO. The Panel agrees and finds that
Complainant has proven rights in the mark pursuant to the requirement of Policy
¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of
a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive.”). See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The <isharesinvestor.com> domain name incorporates Complainant’s registered ISHARES mark as its dominant feature, to which Respondent has added the common term “investor” and the generic top-level domain (“gTLD”) “.com.” In Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), the panel found the domain name <okidataparts.com> confusingly similar to the complainant’s OKIDATA mark and held that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” Thus, the Panel concludes that Complainant has clearly established confusing similarity pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the domain name <westfieldshopping.com> confusingly similar because the WESTFIELD mark was the dominant element).
Complainant has therefore satisfied the requirements under Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant has the initial
burden of showing that Respondent lacks rights and legitimate interests in the <isharesinvestor.com>
domain name. However, once Complainant
has made a prima facie case with respect to this element, the burden
shifts to Respondent to provide evidence that it has rights or legitimate
interests under Policy ¶ 4(c). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that, where a complainant has asserted that a respondent has no rights
or legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”). Without a response from
Respondent, the Panel is entitled to presume that Respondent has not met its
burden. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel may nonetheless choose to
examine whether the evidence is sufficient to support a finding that Respondent
has rights or legitimate interests pursuant to Policy ¶ 4(c), which we now do.
Complainant here contends that Respondent is not commonly known by the <isharesinvestor.com> domain name, a contention that Respondent does not deny. Indeed Respondent registered the domain name under its business name “Chartwell Partners Inc.” according to the WHOIS database. Furthermore, Complainant asserts that it has not licensed or authorized Respondent to use the ISHARES mark. Where a respondent has failed to submit a response, the WHOIS information is often the only evidence identifying the respondent. Thus, where there is no response and the WHOIS information supports Complainant’s assertion, the Panel is left to conclude that Respondent is not commonly known by the disputed domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). It may also be noted in the same regard that Respondent’s website at the disputed domain name displays the name “Chartwell Partners Inc.” and <ChartwellAdvisor.com> further supporting the finding that Respondent does not identify itself by the domain name <isharesinvestor.com>. Therefore, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Likewise, according to
Complainant, Respondent is using the <isharesinvestor.com>
domain name to divert Internet users to a website associated with Respondent’s
business, which involves providing financial and investment advice, including
advice regarding Complainant’s products and services offered under the ISHARES
mark. In Glaxo
Group Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003), a respondent was using the <wwwzyban.com>
domain name to operate a website that sold products in competition with a
complainant’s ZYBAN mark. The panel
there found that the respondent was “taking advantage of [the] [c]omplainant’s
mark by diverting Internet users to [a] competing commercial site” and that
such use did not constitute a bona fide offering of goods or services or
a legitimate noncommercial or fair use of the domain name. By parallel reasoning, this Respondent’s use
of Complainant’s registered ISHARES mark to attract Internet users to
Respondent’s competing website does not establish rights or legitimate
interests pursuant to Policy ¶ 4(c)(i) or (iii). See MSNBC Cable, LLC
v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or
legitimate interests in the famous MSNBC mark where a respondent attempted to
profit using a complainant’s mark by redirecting Internet traffic to its own
website).
Accordingly, Complainant has satisfied the requirements under Policy ¶ 4(a)(ii).
Complainant has provided evidence tending to show that
Respondent is using the <isharesinvestor.com> domain name to
resolve to a website providing information regarding Respondent’s financial
business. Complainant maintains that
Respondent is presumed to have known about Complainant’s rights in the ISHARES
mark, because the purpose of Respondent’s business is to provide its clients
with investment advice regarding Complainant’s ISHARES funds and similar
products and services. The panel in Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004), found that a
respondent’s use of the <hpdubai.com> domain name to operate a website
that offered products similar to those offered by the complainant under its HP
mark was for the purpose of benefiting from the goodwill associated with the
complainant’s marks. According to the
panel there, the respondent was diverting Internet users for its commercial
gain, which conduct was taken evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). The
evidence here shows that Respondent knew about Complainant’s rights in the
ISHARES mark and used that mark in the domain name without Complainant’s
permission to attract business to Respondent’s own business. Respondent has
therefore engaged in bad faith registration and use according to Policy ¶
4(b)(iv). See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th Cir. 2002) (“Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse.”).
Moreover, it is evident that Respondent registered the
contested domain name with either actual or constructive knowledge of
Complainant’s rights in the ISHARES mark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such actual or constructive knowledge evidences bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, Complainant has satisfied the requirements 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 GRANTED.
Accordingly, it is Ordered that the <isharesinvestor.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 5, 2006
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