Legg Mason & Co., LLC v. HEMANG INFRASRUCTURE PRIVATE LIMITED
Claim Number: FA1009001347287
Complainant is Legg Mason & Co., LLC ("Complainant"), represented by Gretchen L. Klebasko, Maryland, USA. Respondent is HEMANG INFRASRUCTURE PRIVATE LIMITED ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leggmasonpartners.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2010; the National Arbitration Forum received payment on September 20, 2010.
On September 23, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD confirmed by e-mail to the National Arbitration Forum that the <leggmasonpartners.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@leggmasonpartners.com. Also on September 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant was founded as a stock brokerage firm in 1899.
Complainant uses its LEGG MASON mark to provide financial services in the asset management industry.
Complainant holds a registration with United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,799,634, issued October 19, 1993) for its LEGG MASON service mark.
Respondent registered the <leggmasonpartners.com> domain name on August 2, 2006.
The disputed domain name resolves to a website featuring a directory of links to third-party websites, some which directly compete with Complainant’s asset management business.
Respondent’s <leggmasonpartners.com> domain name is confusingly similar to Complainant’s LEGG MASON mark.
Respondent is not commonly known by the <leggmasonpartners.com> domain name.
Complainant has not authorized or licensed Respondent to use its mark or to register the <leggmasonpartners.com> domain name.
Respondent does not have any rights to or legitimate interests in the domain name <leggmasonpartners.com>.
Respondent has been a party to other UDRP proceedings which resulted in a finding of bad faith and transfer of disputed domain names to various complainants.
Respondent registered and uses the disputed <leggmasonpartners.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the LEGG MASON service mark via registration of the mark with a national trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
Moreover, Complainant is not required to register its mark within the country of origin of Respondent. It is sufficient that Complainant can claim rights in its mark in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Respondent’s <leggmasonpartners.com> domain name is confusingly similar to Complainant’s LEGG MASON mark. The disputed domain name differs from Complainant’s mark only by the addition of the generic word “partners,” the deletion of the space between the terms of Complainant’s mark, and the addition of the generic top-level domain (“gTLD”) “.com.” These differences fail properly to distinguish the disputed domain name from Complainant’s mark under the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of a complainant combined with a generic word or term).
Similarly the deletion of a space between the terms of the mark in forming a domain name fails to distinguish the domain name from the mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a mark does not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i). Finally, the addition of a gTLD likewise fails to distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
Thus, the Panel concludes that Respondent’s <leggmasonpartners.com> domain name is confusingly similar to Complainant’s LEGG MASON service mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <leggmasonpartners.com> domain name. Previous panels have found that once a complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a contested domain name. 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.
Complainant has made out a prima facie case on the point of Respondent’s lack of rights and interests to the contested domain name. Owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we are entitled to presume that Respondent does not have rights to or legitimate interests in the <leggmasonpartners.com> domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests in a contested domain name where a respondent failed to respond to the allegations of a complaint filed under the Policy). Nonetheless, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <leggmasonpartners.com> domain name and that it has not authorized or licensed Respondent to use its mark or register the <leggmasonpartners.com> domain name. Moreover, the pertinent WHOIS information identifies the domain name holder only Respondent as “Hemang Infrastructure Private Limited,” which is not similar to the disputed domain name. On this record, we must conclude that Respondent is not commonly known they the <leggmasonpartner.com> domain name so as to have established that it has rights to or legitimate interests in the contested 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 a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” was a factor in determining that Policy ¶ 4(c)(ii) does not apply).
We also note that there is no dispute as to Complainant’s allegation that Respondent uses the disputed domain name to resolve to a directory website containing links to the third-party websites which offer goods and services in competition with Complainant’s asset management business. In the circumstances here presented, we may comfortably presume that Respondent receives click-through fees from the visits of Internet users to these links. Respondent’s use of the contested domain name to operate a website featuring links to the websites of Complainant’s business competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the 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 a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert Internet users seeking that complainant’s goods and services to websites competing with that 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the websites of a complainant’s competitors in the financial services industry).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been a party to other UDRP proceedings which resulted in a finding of bad faith and transferred the disputed domain names to various complainants. See Tyra Banks and Telepictures Productions Inc. v. Hemang Infrastructure Private Limited, FA1006001330940 (Nat. Arb. Forum Aug. 3, 2010); see also Lifetime Brands, Inc. v. Hemang Infrastructure Private Limited, FA1005001327173 (Nat. Arb. Forum July 1, 2010). These prior UDRP proceedings are evidence of a pattern of bad faith registration and use of domain names, which stands as evidence that Respondent has registered and used the instant domain name in bad faith as provided in Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to other UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of various complainants); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where a respondent registered many domain names unrelated to its business which infringed on famous marks and websites).
Respondent’s <leggmasonpartners.com> domain name resolves to a website featuring a directory of links, some of which resolve to the websites of Complainant’s competitors in the financial services industry. Respondent’s use of the disputed domain name in this manner disrupts Complainant’s business because Internet users intending to use the asset management services of Complainant may choose to use a competitor’s services as a result of Respondent’s use of the disputed domain name under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using disputed domain names to operate a commercial search engine with links to the products of a complainant and to that complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Internet users searching for Complainant’s services may instead find Respondent’s website because of the confusing similarity between Complainant’s mark and the disputed domain name. Internet users may thus become confused as to Complainant’s possible sponsorship of or affiliation with the disputed domain name, resolving website and featured links. Respondent presumably attempts to profit from this confusion through the receipt of click-through fees. Respondent’s use of the disputed domain name in this fashion constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites featuring services similar to those offered by that complainant).
For all of these reasons, the Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <leggmasonpartners.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 16, 2010
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