First
Claim Number: FA0709001080244
PARTIES
Complainant is First Manhattan Consulting Group, Inc. (“Complainant”), represented by James
M. Andriola, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <financialpersonality.com>,
registered with Schlund+Partner Ag.
PANEL
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.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 18, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 24, 2007.
On September 25, 2007 the National Arbitration Forum identified several
deficiencies in the Complaint and requested the Complainant to rectify those
deficiencies. Following this request, the Complainant has submitted a revised
Complainant in accordance with the Uniform Domain Name Dispute Resolution on
September 26, 2007.
On September 20, 2007, Schlund+Partner Ag confirmed by e-mail to the
National Arbitration Forum that the <financialpersonality.com> domain
name is registered with Schlund+Partner Ag
and that the Respondent is the current registrant of the name. Schlund+Partner
Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 October 1, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 22, 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@financialpersonality.com by
e-mail.
A timely Response was received and determined to be complete on October 22, 2007.
On
October 29, 2007
an Additional Submission was submitted by the Complainant and it does comply with
Supplemental Rule 7.
On November 5, 2007 an Additional Submission was submitted by the
Respondent and it does comply with the Supplemental Rule 7.
On October 30, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant asserts by the Complaint the following:
§
the
Complainant is the owner of the trademark FINANCIAL PERSONALITY, registered
with USPTO, and the trademark has been in continuous use in commerce since at
least as early as January 2001;
§
the
disputed domain name is identical to the Complainant’s trademark;
§
the Respondent
is using the website at the impugned domain name to offer financial
consultation services to the public;
§
the Respondent
registered the disputed domain name at least with constructive knowledge of
Complainant’s mark;
§
the Respondent’s
use of the disputed domain name is done in order to divert users from
Complainant to Respondent;
§
the Respondent’s
use of the disputed domain name is clearly for commercial gain;
§
the Respondent
registered and uses the disputed domain name in bad faith, by registering it
with constructive knowledge and by using it in a competitive manner with the
services offered by the Complainant;
§
the Respondent
was notified by cease and desist letter sent on June 15, 2007.
B. Respondent
In its Response the Respondent contends the following:
C. Additional Submissions
By its Additional Submission submitted in the case, the Complainant
asserts that:
§
the
services and the goods of the parties do not need to be identical or even
similar for a Complainant to have superior rights in a domain name;
§
the
quotations from the Examining Attorney from USPTO are not relevantt as its
decision in connection with the Respondent’s application for trademark
FINANCIAL PERSONALITY for class 36 is not final;
§
the
Respondent registered this trademark as a part of its battle against the
Complainant;
§
the
Respondent’s assertion as to the duration of its use of the FINANCIAL
PERSONALITY mark is not supported by any record;
§
the
Respondent’s request for a finding of reverse domain name hijacking is not
grounded;
By its Additional Submission submitted
in the case, the Respondent contends that:
FINDINGS
The Complainant is in the business of
management consulting providing, inter
alia, market analysis, research
and research consultation to financial service providers, services for which it
has continuously used since 2001 and registered later with the United States
for Patent and Trademark Registration the mark FINANCIAL PERSONALITY. The
Respondent registered the disputed domain name in June 2007. The disputed
domain name resolves to a website where the Respondent is making advertising of
its services under the FINANCIAL DNA trademark. The Respondent is not the owner
of any trademark with the name FINANCIAL PERSONALITY and is not known by this
name. The Respondent uses the term FINANCIAL PERSONALITY at the disputed domain
name in a merely descriptive way of its FINANCIAL DNA services. Having
considered the use of the term FINANCIAL PERSONALITY by both parties, the Panel
shall decide which one, the Complainant or the Respondent, has superior rights
in this term, ultimately finding that the Complainant has superior rights.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Complainant has
established rights in the FINANCIAL PERSONALITY mark (Reg. No. 3,211,373 issued
February 20, 2007) with the United States Patent and Trademark Office
(“USPTO”).
Respondent’s
<financialpersonality.com> domain name contains Complainant’s FINANCIAL
RESPONSIBILITY mark in its entirety, simply eliminates the space between the
two words of Complainant’s protected mark, and adds the generic top-level
domain (“gTLD”) “.com.”
In its Response, the Respondent
is stating that Coddington
Finance Corporation Pty Ltd (CFC) concedes that the disputed domain name is
identical to the
Having considered the above said, the Panel finds that Complainant’s registration of the FINANCIAL PERSONALITY mark with the USPTO sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that the complainant’s registration of the AMERIDREAM mark with the USPTO established its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”). The Panel also finds that the disputed domain name is identical to the trademark in which the Complainant has rights.
The assertion of the Respondent that
the disputed domain name is also a generic word in other contexts and that CFC
is the applicant for registration of the trade mark FINANCIAL PERSONALITY under
USA Service Mark Application No. 77/213,347 filed June 22, 2007 in Class
36 does not make the disputed domain name less identical to the trademark in
which the Complainant has rights, recognised by the USPTO registration
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <financialpersonality.com> domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
It is the opinion of the Panel that the Complainant has succeeded in doing so and the Respondent failed to rebut the Complainant’s showing.
An examination of the evidences submitted in this case results in the obvious conclusion that the Respondent is not and has not been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). The fact that CFC has used the words FINANCIAL PERSONALITY in close association with the mark FINANCIAL DNA, and with the book by Hugh Massie, “Financial DNA: Discover Your Unique Financial Personality For A Quality Life,” published in February 2006 by Wiley, cannot represent per se evidence that the Respondent is known under this Financial Personality name. In the context used in the said title, Financial Personality is, together with the rest of the words, descriptive of the Financial DNA association of words.
Respondent’s <financialpersonality.com> domain name resolves to a website offering financial
services in direct competition with Complainant’s business. The Panel cannot consider the statements of
the Respondent that the services offered on the website to which the disputed
domain name resolves are that distinguishable from those offered by the
Complainant under its trademark, so an Internet user will be able to see such difference
from the first moment the website opens. In addition, both the Complainant and
the Respondent are in the business connected with financial services. As the
Complainant pointed out in its additional submission the goods and the services
of the parties need not to be identical or even similar for a complainant to
have superior rights in domain name. See Sony Corporation v. Times Vision
Ltd, Claim Number: FA0009000095686 (Nat. Arb. Forum Mar. 9 2001). It is
enough that the services offered to have a common element which may induce
confusion to the Internet users, as it is in this case the financial services.
In conclusion, the
Panel finds that Respondent’s use is neither a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also Or. State Bar v.
A Special Day, Inc., FA 99657
(Nat. Arb. Forum Dec. 4,
2001) (“Respondent's advertising of legal services and sale of law-related
books under Complainant's name is not a bona fide offering of goods and
services because Respondent is using a mark confusingly similar to the
Complainant's to sell competing goods.”).
It
is obvious that the registration of the disputed domain name was made by the
Respondent with the knowledge of the Complainant’s trademark, as accepted
implicitly by it in the Response.
Moreover, as found above, the Respondent is using the disputed domain name to resolve to a website that offers services in competition with those offered by Complainant. Such use evinces a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
It is the opinion of the Panel that the Respondent’s use of the disputed domain name is likely to induce confusion among unwary Internet users expecting to view information regarding Complainant’s business.
Additionally, Respondent likely receives financial remuneration from its diversionary use of the <financialpersonality.com> domain name. Such use evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
Being considered all above, the Panel finds that that the also the third element of the Policy had been demonstrated by the Complainant.
Attempted reverse
hijacking of CFC’s domain name
Having found that the Complainant proved the three elements of the
Policy, the Panel considers it unnecessary to analyse the request of the
Respondent for a finding of attempted reverse hijacking of CFC’s domain name.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <financialpersonality.com> domain
name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: November 13, 2007
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum