Morningstar,
Inc. v. FIG
Claim Number: FA0910001290566
Complainant is Morningstar,
Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mornigstar.com>, registered with Fabulous.com Pty Ltd.
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.
Hon. Karl V. Fink (Ret) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2009.
On October 21, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <mornigstar.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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@mornigstar.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 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 <mornigstar.com> domain name is confusingly similar to Complainant’s MORNINGSTAR mark.
2. Respondent does not have any rights or legitimate interests in the <mornigstar.com> domain name.
3. Respondent registered and used the <mornigstar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an investment and financial services company that promotes its business under the MORNINGSTAR mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on December 13, 1994 (Reg. No. 1,866,773). Complainant has used the MORNINGSTAR mark to promote its services since at least as early as 1984. Complainant serves more than 6.5 million individual investors, and now operates in 19 countries.
Respondent registered the <mornigstar.com> domain name on May 22, 1999. The disputed domain name resolves to a website that contains advertisements and links to third-party websites that compete with Complainant.
Respondent has been the respondent is at least three other
UDRP proceedings where the disputed domain names were transferred to the
respective complainants. See Am.
Univ. v. FIG
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 has
established sufficient rights in the MORNINGSTAR mark through registration of
the mark with the USPTO (Reg. No. 1,866,773 issued
Complainant contends that
Respondent’s <mornigstar.com>
domain name is confusingly similar to its MORNINGSTAR mark. The <mornigstar.com> domain name differs from Complainant’s mark in two ways:
(1) the second letter “n” has been removed from the mark; and (2) the generic
top-level domain (gTLD) “.com” has been added to the mark. The Panel finds that removing a single letter does not sufficiently
distinguish a domain name from a mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding
that the <pfzer.com> domain name was confusingly similar to the
complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila
Indus., Inc., FA 805029 (Nat.
Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com>
domain name was confusingly similar to the complainant’s HACRES mark because it
omitted the letter “e” from the mark and added the generic top-level domain
“.com”). The Panel also finds that the addition of the gTLD “.com” does not sufficiently
distinguish a domain name from the incorporated mark for the purposes of Policy
¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”). Therefore, the Panel finds that because the changes to the
MORNINGSTAR mark do not sufficiently distinguish the disputed domain name from
Complainant’s mark, Respondent’s disputed domain name is confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <mornigstar.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and that Respondent has failed to submit a Response. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); 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”).
Complainant contends that Respondent is not commonly known
by the <mornigstar.com> domain name nor has it ever been the owner
or licensee of the MORNINGSTAR mark. The
WHOIS listing for the disputed domain name lists Respondent as “FIG Vietnam c/o
Domain Admin,” and without a Response by Respondent, there is no evidence in
front of the Panel that is contrary to Complainant’s contentions. Because there is no evidence that Respondent
has ever been known by any variant on the MORNINGSTAR mark, the Panel therefore
finds that Respondent is not commonly known by the <mornigstar.com> domain name pursuant to Policy ¶
4(c)(ii). See Foot Locker Retail,
Inc. v. Gibson, FA 139693
(Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER
family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce
Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of
the disputed domain names prior to their registration, and concludes that
Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also RMO, Inc.
v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy
¶ 4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail").
Complainant contends
that Respondent is using the <mornigstar.com> domain name to operate a website that contains
links to Complainant’s competitors.
The Panel finds that using a domain name incorporating a mark to promote
the businesses of competitors of the mark’s owner is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice
Holding Co., FA 621292 (Nat.
Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names
confusingly similar to the complainant’s WAL-MART mark to divert Internet users
seeking the complainant’s goods and services to websites competing with the
complainant did not constitute 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 Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum
July 29, 2005) (holding that the respondent’s use of disputed domain names to
market competing limousine services was not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating
the complainant’s CAREY mark in order to profit from the mark). The Panel therefore finds that Respondent’s
use of the <mornigstar.com>
domain name is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <mornigstar.com> domain name under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has been a party to at
least three other proceedings under the UDRP resulting in the transfer of the
disputed domain names. See Am. Univ.
v. FIG
Complainant contends that
Respondent is using the <mornigstar.com> domain name (initial registration: May 22, 1999) to host a website advertising competitors of Complainant,
and that this diversion of Internet users to competing businesses is an
intentional disruption of Complainant’s business by Respondent. Consequently, Complainant contends that
Respondent’s actions are evidence of Respondent’s registration and use
of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). The Panel agrees with Complainant’s
contentions and finds that Respondent’s competitive use of the disputed domain
name indicates that Respondent registered and is using the disputed domain name
in bad faith pursuant to Policy ¶ 4(b)(iii).
See 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); see also David Hall Rare
Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007)
(finding that the respondent registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed
domain name to advertise goods and services of complainant’s competitors,
thereby disrupting the complainant’s business).
Complainant also contends that Respondent is collecting
“click-through” fees from the companies to which Respondent is diverting
Internet users, and that these fees constitute commercial gain which is
evidence of Respondent’s bad faith registration and use of the <mornigstar.com>
domain name pursuant to Policy ¶
4(b)(iv). The Panel agrees and finds
that Respondent’s commercial gain from its use of the <mornigstar.com>
domain name is evidence of its bad faith
registration and use of the <mornigstar.com> domain name pursuant to Policy ¶ 4(b)(iv). See
Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006)
(finding that the respondent engaged in bad faith registration and use by using
a domain name that was confusingly similar to the complainant’s mark to offer
links to third-party websites that offered services similar to those offered by
the complainant); see also Maricopa Cmty. Coll. Dist. v. College.com,
LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers
that Respondent receives click-through fees for diverting Internet users to a
competing website. Because Respondent’s
domain name is identical to Complainant’s
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 <mornigstar.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret), Panelist
Dated: November 30, 2009
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