MBSC Securities Corporation and The Dreyfus Fund Incorporated and The Dreyfus Corporation v. Paul Walker and Derek Anongsai c/o Dreyfus Corp and Alliance International Insurance c/o Whoo John and Alliance Ma
Claim Number: FA0910001288091
Complainant is MBSC
Securities Corporation and The
Dreyfus Fund Incorporated and The
Dreyfus Corporation (“Complainant”), represented by Edward E. Vassallo, of Fitzpatrick, Cella, Harper & Scinto,
New York, USA. Respondent is Paul Walker and Derek Anongsai c/o Dreyfus
Corp and Alliance International
Insurance c/o Whoo John and Alliance Ma (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <dreyfuscorp.com>, <dreyfus-corp.com>, <allianceintins.com>,
and <alliancema.com>.
The <dreyfuscorp.com>, <allianceintins.com>, and <alliancema.com> domain
names are registered with Enom, Inc. The <dreyfus-corp.com> domain
name is registered with Onlinenic, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 9, 2009.
On October 7, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <dreyfuscorp.com>, <allianceintins.com>, and <alliancema.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 14, 2009, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <dreyfus-corp.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 October 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 12, 2009 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@dreyfuscorp.com, postmaster@dreyfus-corp.com, postmaster@allianceintins.com, and postmaster@alliancema.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dreyfuscorp.com> and <dreyfus-corp.com> domain names are confusingly similar to Complainant’s DREYFUS FUND INC mark.
2. Respondent does not have any rights or legitimate interests in the <dreyfuscorp.com>, <dreyfus-corp.com>, <allianceintins.com>, and <alliancema.com> domain names.
3. Respondent registered and used the <dreyfuscorp.com>, <dreyfus-corp.com>, <allianceintins.com>, and <alliancema.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
MBSC Securities Corporation, The Dreyfus Fund Incorporated, and The Dreyfus Corporation (collectively, “Complainant”) are affiliated companies that have offered mutual funds and other financial services under the well-known DREYFUS FUNDS INC mark since 1950. Complainant is the owner of the DREYFUS FUNDS INC mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 676,125 issued March 24, 1959).
Paul Walker, Derek Anongsai c/o Dreyfus Corp, Alliance
International Insurance c/o Whoo John and Alliance Ma (collectively,
“Respondent”) registered the <alliancema.com>
domain name on June 18, 2007, the <allianceintins.com> domain name on December 23, 2008, the <dreyfuscorp.com>
domain name on May 28, 2009, and the <dreyfus-corp.com> domain
name on August 28, 2009. The <dreyfus-corp.com>
and <dreyfuscorp.com> domain names each resolve to a website
purporting to offer legal services under the DREYFUS FUNDS INC mark. The website prominently displays Complainant’s
lion head logo and the phrase “Dreyfus Corp.” throughout the website.
Complainant contends that Respondent is using each of the four disputed domain names to orchestrate a fraudulent scheme whereby Respondent is seeking out Complainant’s clients in an attempt to access their private financial information. Complainant contends that the <alliancema.com> and <allianceintins.com> domain names are being used as collateral to further legitimize the scheme.
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 Complainant, by registering its mark
with the USPTO (Reg. No. 676,125 issued March 24, 1959), has established its
rights in the DREYFUS FUNDS INC mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <dreyfus-corp.com> and <dreyfuscorp.com> domain names are confusingly similar to its DREYFUS FUNDS INC mark under Policy ¶ 4(a)(i). Each of the disputed domain names incorporate DREYFUS with the mere addition of the term “corp,” an abbreviation for the entity-designator “corporation,” and the affixation of the generic top-level domain “.com.” The Panel finds that Respondent has incorporated the distinctive portion of Complainant’s mark, namely, DREYFUS, into the disputed domain names and thus the omission of the phrase “FUNDS INC” is inconsequential. The <dreyfus-corp.com> domain name also has the addition of a hyphen between the terms. The Panel further finds that these minor alterations fail to distinguish the disputed domain names from Complainant’s DREYFUS FUNDS INC mark. Therefore, the Panel concludes that Respondent’s <dreyfus-corp.com> and <dreyfuscorp.com> domain names are confusingly similar to Complainant’s DREYFUS FUNDS INC mark under Policy ¶ 4(a)(i). See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks . . . nor does it alter the underlying [PG&E] mark held by Complainant”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) for the <dreyfus-corp.com> and <dreyfuscorp.com> domain
names.
Complainant does not allege that the <alliancema.com>
and <allianceintins.com> domain
names are confusingly similar to any mark in which Complainant has trademark
rights. Complainant contends however,
that the <alliancema.com> and <allianceintins.com> domain
names are being used in Respondent’s scheme to access Complainant’s customer’s
financial information. The Panel
concludes that Respondent’s <alliancema.com> and
<allianceintins.com> domain names are not identical or confusingly
similar to Complainant’s DREYFUS FUNDS INC mark and Complainant does not assert rights in any other marks. Thus, Complainant has not satisfied Policy ¶
4(a)(i) with respect to Respondent’s <alliancema.com>
and <allianceintins.com> domain names. See Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb.
Forum
Since Complainant has not satisfied Policy ¶ 4(a)(i) with respect to the <alliancema.com> and <allianceintins.com> domain
names, the Panel declines to analyze them under Policy ¶¶ 4(a)(ii) and
(iii). See Pom Wonderful LLC v. Redavid, FA 846577 (Nat.
Arb. Forum
Complainant asserts
that Respondent lacks rights and legitimate interests in the <dreyfus-corp.com>
and <dreyfuscorp.com> domain names. Complainant must first establish its prima facie case to support these
contentions, and the Panel finds that Complainant has done so in these
proceedings. Once Complainant has
produced a sufficient prima facie
case, the burden shifts to Respondent to show that it does have rights or
legitimate interests in the <dreyfus-corp.com> and <dreyfuscorp.com>
domain names under Policy ¶ 4(c).
Respondent failed to submit a response in these proceedings, thus the
Panel may infer that Respondent lacks rights and legitimate interests in the
disputed domain names. However, the
Panel will review the record to determine whether Respondent has any rights or
legitimate interests in the disputed domain names under Policy ¶
4(c). See 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); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Complainant
contends that Respondent is using the <dreyfus-corp.com> and <dreyfuscorp.com> domain
names to pass itself off as Complainant in a fraudulent financial scheme. The disputed
domain names each resolve to a website featuring Complainant’s lion head
logo as well as Complainant’s DREYFUS FUNDS INC mark in connection with
a company providing legal services.
Moreover, Complainant contends that Respondent is using the disputed
domain names to contact Complainant’s clients in an attempt to get them to
reveal their personal financial information.
Complainant contends that Respondent is using these websites in an
effort to entice individuals to give Respondent its private financial
information. The Panel presumes that Respondent is profiting from such use and
infers that Respondent is attempting to fraudulently pass itself off as
Complainant. Accordingly, the Panel
finds that Respondent has not made a bona
fide offering of goods or services or a legitimate noncommercial or fair
use under Policy ¶¶ 4(c)(i) or (iii),
respectively. See Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent
attempts to pass itself off as the complainant online, which is blatant
unauthorized use of the complainant’s mark and is evidence that the respondent
has no rights or legitimate interests in the disputed domain name); see also Crow
v. LOVEARTH.net, FA 203208 (Nat. Arb.
Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”).
Furthermore,
Complainant contends that Respondent is not commonly known by the disputed
domain names. The WHOIS information for
the <dreyfus-corp.com> and <dreyfuscorp.com> domain names identifies the registrant
as “Derek Anongsai c/o Dreyfus Corp” and “Paul Walker c/o Dreyfus Corp,” respectively. While this information may indicate a
connection between the disputed domain name and Respondent, there is no
evidence in the record to substantiate this claim. Thus, the Panel may presume that Respondent
is not commonly known by either the <dreyfus-corp.com> or <dreyfuscorp.com> domain
names under Policy ¶ 4(c)(ii). See
Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat.
Arb. Forum
See Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum
The
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Based
on the uncontested evidence presented by Complainant, the Panel finds that
Respondent is attempting to profit by creating a likelihood of confusion as to
Complainant’s sponsorship and affiliation with the disputed domain name due to
Respondent’s attempt to offer services similar to the genuine services offered
by Complainant. Therefore, the Panel finds that Respondent has engaged in
bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
See Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the site);
see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent
[used “HP” in its domain name] to benefit from the goodwill associated with
Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part,
to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated
by commercial gain, constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).”).
Respondent’s <dreyfus-corp.com> and <dreyfuscorp.com> domain names each resolve to a website promoting legal services under Complainant’s DREYFUS FUNDS INC mark. Complainant contends that Respondent is fraudulently attempting to pass itself off as a representative of Complainant to induce its clients into revealing private financial information, undoubtedly for financial gain. The Panel concludes that Respondent’s use of the disputed domain name to pass itself off as Complainant constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED as to the <dreyfus-corp.com> and <dreyfuscorp.com> domain names. Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief should be DENIED as to the <alliancema.com> and <allianceintins.com> domain names.
Accordingly, it is Ordered that the <dreyfus-corp.com> and <dreyfuscorp.com> domain names be TRANSFERRED from Respondent to Complainant.
Furthermore, it is also Ordered that the <alliancema.com>
and <allianceintins.com> domain
names REMAIN with Respondent.
Louis E. Condon, Panelist
Dated: November 22, 2009
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