Morningstar, Inc. v. Purple Bucquet c/o Purple
Claim Number: FA1002001310402
Complainant is Morningstar,
Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morningstsr.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2010; the National Arbitration Forum received a hard copy of the Complaint on March 2, 2010.
On March 2, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <morningstsr.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 March 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 25, 2010 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@morningstsr.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <morningstsr.com> domain name is confusingly similar to Complainant’s MORNINGSTAR.COM mark.
2. Respondent does not have any rights or legitimate interests in the <morningstsr.com> domain name.
3. Respondent registered and used the <morningstsr.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morningstar, Inc., has registered its MORNINGSTAR.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,518,215 issued December 11, 2001). Complainant uses the mark in connection with financial and investment information provided by electronic means.
Respondent, Purple Bucquet c/o Purple, registered the disputed domain name June 12, 2008. The disputed domain name resolves to a web directory of third parties that include competitors of Complainant.
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.
Complainant asserts it has rights in its MORNINGSTAR.COM mark due to its registration with the USPTO (Reg. No. 2,518,215 issued December 11, 2001). The Panel finds that Complainant’s registration of its MORNINGSTAR.COM mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The disputed domain name is confusingly similar to
Complainant’s MORNINGSTAR.COM mark.
Respondent’s <morningstsr.com> disputed domain replaces the
“a” of Complainant’s mark with a “s,” which are
adjacent keys on a standard keyboard. The Panel finds the disputed domain name contains a
misspelled version of a Complainant’s MORNINGSTAR.COM mark, which creates a
confusing similarity between the disputed domain name and Complainant’s mark
under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29,
2001) (finding the <belken.com> domain name confusingly similar to the
complainant's BELKIN mark because the name merely replaced the letter “i” in
the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175
(Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to
be confusingly similar to the complainant’s INTELIUS mark because the domain
name differed from the mark by one letter and was visually similar). In addition, the Panel finds that the addition
of a gTLD is irrelevant in distinguishing a disputed domain name from a
registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007)
(finding that the mere addition of the generic top-level domain “.com” is
insufficient to differentiate a disputed domain name from a mark); see also 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.”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant asserts that Respondent has no rights or legitimate interests in the <morningstsr.com> domain name. Once Complainant has made a prima facie case in support of this, the burden to establish that Respondent has rights or legitimate interests in the disputed domain name shifts to the Respondent, pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. Due to Respondent’s failure to respond to the proceedings, the Panel will analyze the record in light of Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The WHOIS information for the <morningstsr.com> domain name lists “Purple Bucquet c/o Purple” as the registrant, which indicates that Respondent is not commonly known by the disputed domain name. Complainant asserts no license or other authorization has been given to Respondent to use the MORNINGSTAR.COM mark. Furthermore, Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Without affirmative evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s use of the <morningstsr.com>
domain name resolves to a web directory with links to third-party competitors
of Complainant. The Panel finds that
Respondent’s use of the <morningstsr.com> domain name is 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25,
2007) (finding that where a respondent has failed to offer any goods or
services on its website other than links to a variety of third-party websites,
it was not using a domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to 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)).
Complainant asserts that the disputed domain name is an
intentional misspelling of the MORNINGSTAR.COM mark. Complainant further
asserts that Respondent is capitalizing on this misspelling to misdirect
Internet users seeking Complainant’s services.
The Panel finds that this constitutes the practice of typosquatting,
which is evidence that Respondent lacks rights and legitimate interests in the
disputed domain name under 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 Microsoft Corp. v. Domain Registration Philippines, FA
877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the
<microssoft.com> domain name, the respondent had “engaged in
typosquatting, which provides additional evidence that [the] respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶
4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a web directory with links to third-party competitors of Complainant. The Panel finds Respondent’s registration and use of the <morningstsr.com> domain name to operate a web directory with links to third-party websites that compete with the Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant asserts that Internet users, searching for Complainant’s services, will be confused as to Complainant’s sponsorship or affiliation with the disputed domain name when it resolves to a web directory with links to third party competitors of Complainant. Respondent attempts to profit from this confusion through its presumed receipt of click-through fees by linking to third-parties. Therefore, the Panel finds Respondent’s use of the <morningstsr.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel has previously concluded that Respondent is
engaged in the practice of typosquatting through the use of the <morningstsr.com>
domain name. The Panel finds that this
practice is stand alone evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See 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); see also Dermalogica, Inc. v. Domains to Develop,
FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding
that the <dermatalogica.com> domain name was a “simple misspelling” of
the complainant's DERMALOGICA mark which indicated typosquatting
and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds 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 <morningstsr.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 12, 2010
National
Arbitration Forum
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