Van Kampen Investments, Inc. v. Versata Software, Inc
Claim Number: FA0811001234696
Complainant is Van Kampen Investments, Inc. (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz
& Latman, P.C.,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <vankampem.com>, registered with Red Register, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 20, 2008.
On November 20, 2008, Red Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <vankampem.com> domain name is registered with Red Register, Inc. and that Respondent is the current registrant of the name. Red Register, Inc. has verified that Respondent is bound by the Red Register, 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 November 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 2008 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@vankampem.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 16, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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 <vankampem.com> domain name is confusingly similar to Complainant’s VAN KAMPEN mark.
2. Respondent does not have any rights or legitimate interests in the <vankampem.com> domain name.
3. Respondent registered and used the <vankampem.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Van Kampen
Investments, Inc., is a subsidiary of Morgan Stanley, offering investment
advice and services. Founded in 1982,
Complainant’s products and services include multiple proprietary mutual funds,
individual retirement accounts, and other investment vehicles. Complainant’s VAN KAMPEN mark is a federally
registered mark issued with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,502,489 October 30, 2001).
Respondent, Versata Software, Inc., registered the <vankampem.com> domain name on August 8, 2006. The disputed domain name resolves to a landing site with links to Complainant’s competitors.
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:
(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.
The Panel finds that registration of Complainant’s mark with
the USPTO is sufficient to establish Complainant’s rights in the VAN KAMPEN
mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing
The <vankempem.com>
domain name is confusingly similar to Complainant’s VAN KEMPEN mark pursuant to
Policy ¶ 4(a)(i). The superficial
differences between Respondent’s disputed domain name and Complainant’s mark
are a misspelling of Complainant’s mark – an “m” instead of an “n” – and the
addition of the generic top-level domain (“gTLD”) “.com.” These minor alterations do not negate the
confusingly similar aspects of Respondent’s disputed domain name and
Complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July
13, 2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive); see
also Valpak Direct Mktg. Sys., Inc. v. Manila
Indus., Inc., D2006-0714 (WIPO Aug.
17, 2006) (finding the <vallpak.com> domain name to be confusingly
similar to the VALPAK mark under Policy ¶ 4(a)(i).).
The Panel finds that
Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima
facie case in support of its allegations the burden shifts to Respondent to
prove it has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). The Panel
finds that Complainant has indeed established a prima facie case pursuant to Policy ¶ 4(a)(ii). See
Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June
6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant
prove the presence of this element (along with the other two), once a
Complainant makes out a prima facie
showing, the burden of production on this factor shifts to the Respondent to
rebut the showing by providing concrete evidence that it has rights to or
legitimate interests in the Domain Name.”); see
also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Because Respondent did not respond to the Complaint, the Panel chooses to examine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). The Panel may accept the allegations in the Complaint as true unless clearly contradicted. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The disputed domain name resolves to a landing site
displaying links to third-party commercial websites, many of which are
Complainant’s competitors. Respondent’s
website is presumed to be a pay-per-click website with Respondent garnering
referral fees when confused consumers click through the advertised links. Additionally, Respondent’s fees are accrued
on the back of Complainant’s good reputation.
The Panel finds that Respondent has not used 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 Disney Enters., Inc. v. Kamble,
FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a
pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)); see also Barnesandnoble.com
LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006)
(finding that the respondent’s use of the disputed domain names to divert
Internet users attempting to reach the complainant’s website and in breach of
the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)
nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent is commercially exploiting a fairly common and simple typographical mistake made by an Internet user, a practice characterized as “typosquatting.” The two letters – “m” and “n” – are evenly situated adjacent to each other on any standard QWERTY keyboard. The Panel finds that Respondent is specifically exploiting simple mistakes for its own commercial gain. Respondent’s practice of “typosquatting” demonstrates Respondent’s lack of rights and legitimate interests in the <vankempem.com> domain name pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds no evidence that Respondent is commonly
known by the disputed domain name. The
WHOIS information identifies Respondent as “Versata Software Inc.” Given the WHOIS information and Respondent’s
failure to respond, the Panel finds that Respondent is not commonly known by
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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.”); see
also 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.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name is primarily used to disrupt Complainant’s business. By using a confusingly similar domain name, Respondent is intentionally exploiting Complainant’s goodwill to attract users to Respondent’s website which contains commercial links to Complainant’s competitors’ websites. Such use of the disputed domain name evidences bad faith registration and use performed primarily for the purpose of disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Respondent is attempting to profit off the goodwill associated with Complainant’s VAN KAMPEN mark through a misspelled version of Complainant’s mark in the disputed domain name. Respondent is then able to reap commercial gain stemming from mistakes made by confused Internet users. The Panel concludes that this constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Respondent’s misspelling of Complainant’s VAN KAMPEN mark in the <vankampem.com> domain name indicates that Respondent is “typosquatting,” which is a further indication of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (“Respondent misspells the Mark with intent to intercept internet users from Complainant’s web site, given the fact that Complainant’s website is a popular website and the Disputed Domain Name is a misspelling of the Mark which is highly likely to occur. This typosquatting is evidence of bad faith.”); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
The Panel finds that Complainant has satisfied 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 <vankampem.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 30, 2008
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