McGraw-Hill Companies, Inc. v. Minerva
Claim Number: FA0704000969594
Complainant is McGraw-Hill Companies, Inc. (“Complainant”), represented by Andrew
Baum, of Darby & Darby P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <standardandpoors.mobi>, registered with DomainPeople, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 30, 2007.
On
On May 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 2007 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@standardandpoors.mobi by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
1. Respondent’s <standardandpoors.mobi> domain name is identical to Complainant’s STANDARD & POOR’S mark.
2. Respondent does not have any rights or legitimate interests in the <standardandpoors.mobi> domain name.
3. Respondent registered and used the <standardandpoors.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, McGraw-Hill Companies, Inc.,
is a global information services provider.
Complainant serves three principal markets: financial services,
education, and business information through brands such as STANDARD
& POOR’S. Complainant began
using the STANDARD & POOR’S mark in 1941 in connection with the provision
of credit ratings. Complainant’s
STANDARD & POOR’S business unit is recognized today as one of the world’s
foremost sources of credit ratings, indices, investment research, risk
evaluation and data. Complainant’s
global organization is the largest source of independent equity research and a
leader in mutual fund information and analysis.
In connection with the provision of these services, Complainant holds a
trademark registration with the United States Patent and Trademark Office
(“USPTO”) for the STANDARD & POOR’S mark (Reg. No. 1,049,235 issued
September 28, 1976). Complainant has
also registered the STANDARD & POOR’S mark in several other countries,
including in
Respondent registered the <standardandpoors.mobi>
domain name on
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) (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:
(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 established rights in the STANDARD
& POOR’S mark under Policy ¶ 4(a)(i) by
registering the mark with the USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Respondent’s
<standardandpoors.mobi>
domain name is identical to
Complainant’s STANDARD & POOR’S mark because Respondent’s domain name incorporates the
dominant features of Complainant’s mark, replaces the ampersand with “and,”
omits the apostrophe, and adds the top-level domain “.mobi.” Ampersands and apostrophes are not
reproducible in a domain name and thus, the Panel finds that such minor
alterations to Complainant’s registered mark do not negate the identical
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that
the <wrightandlato.com> domain name is identical to the complainant’s
WRIGHT & LATO mark because the ampersand symbol (&) is not reproducible
in a URL); see also Gurney’s Inn Resort & Spa Ltd. v.
Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces
between words are not significant in determining the similarity of a domain
name and a mark because punctuation and spaces are not reproducible in a domain
name.”); see also U.S. News & World Report, Inc. v. Lai Zhongqi, FA
917070 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent lacks rights and
legitimate interests in the <standardandpoors.mobi> domain name.
Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).
See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent.”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the 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”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <standardandpoors.mobi> domain name.
See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see
also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20,
2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name
“Minerva” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <standardandpoors.mobi> domain name.
Thus, Respondent has not established rights or legitimate interests in
the <standardandpoors.mobi> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum
Furthermore, Respondent’s <standardandpoors.mobi> domain name, which is identical to Complainant’s
STANDARD & POOR’S mark, does not resolve to any content. Because Respondent has not used the disputed
domain name for any purpose since registering it on September 26, 2006, the
Panel finds that Respondent is not using the disputed domain name in connection
with 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). See
Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000)
(finding no rights or legitimate interests where the respondent failed to
submit a response to the complaint and had made no use of the domain name in
question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Moreover, Respondent posted a statement offering to sell the
disputed domain name. The Panel finds
this to be further evidence that Respondent lacks rights and legitimate
interests in the <standardandpoors.mobi>
domain name under Policy ¶ 4(a)(ii). See
Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is not using the <standardandpoors.mobi> domain name, and has not provided
any demonstrable preparations to use the disputed domain name. Therefore, Respondent’s non-use of the
disputed domain name since
Because Respondent posted a statement offering to sell the
disputed domain, the Panel finds that Respondent registered and used the domain
name in bad faith under Policy ¶ 4(b)(i). See
Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <standardandpoors.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 30, 2007
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