Morningstar, Inc. v. Purple Bucquet c/o Purple
Claim Number: FA1010001351948
Complainant is Morningstar, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Purple Bucquet c/o Purple (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moriningstar.com>, registered with Power Brand Center Corp.
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 October 13, 2010; the National Arbitration Forum received payment on October 13, 2010.
On October 14, 2010, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <moriningstar.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 October 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@moriningstar.com. Also on October 20, 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 18, 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 in 1984 and has continuously used its MORNINGSTAR marks in connection with providing to its customers financial information in the investment industry.
Complainant holds trademark registrations with United States Patent and Trademark Office (“USPTO”) for its MORNINGSTAR mark (including Reg. No. 1,866,773, issued December 13, 1994) and its MORNINGSTAR.COM mark (including Reg. No. 2,518,215, issued December 11, 2001).
Respondent registered the <moriningstar.com> domain name on November 7, 2002.
Respondent uses the disputed domain name to resolve to a website directory of third-party links, some of which compete with Complainant’s financial services business.
Respondent has been the respondent in multiple other UDRP proceedings in which the respective domain names were transferred to the respective complainants.
Respondent’s <moriningstar.com> domain name is confusingly similar to Complainant’s MORNINGSTAR.COM mark.
Respondent is not sponsored by or legitimately affiliated with Complainant, and Complainant has not given Respondent permission to use Complainant’s MORNINGSTAR.COM mark in the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <moriningstar.com>.
Respondent registered and uses the <moriningstar.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 trademark 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 MORNINGSTAR.COM mark via its registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
Moreover, Complainant is not required to register its mark within the country of residence of Respondent for its rights in the mark to exist under the Policy. See 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, but only that it can establish rights in its mark in some jurisdiction).
Respondent’s contested <moriningstar.com> domain name is confusingly similar to Complainant’s MORNINGSTAR.COM mark. The disputed domain name differs from Complainant’s mark only by the addition of the single letter “i.” The addition of a single letter fails to differentiate the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See, for example: Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)).
The Panel therefore concludes that Respondent’s <moriningstar.com> domain name is confusingly similar to Complainant’s MORNINGSTAR.COM trademark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must present a prima facie case against Respondent on the point that Respondent lacks rights to and legitimate interests in the disputed domain name. Once that is done, Respondent acquires the obligation to satisfy the Panel that it nonetheless has rights to or legitimate interests in the contested domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights to or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant has presented the requisite prima facie showing under this head of the policy, while, for its part, Respondent has failed to respond to the Complaint filed in this proceeding. We are therefore free to conclude that Respondent has no rights to or legitimate interests in the disputed domain name. See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003):
A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.
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”
In the interest of fairness, however, we elect to consider 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 contested domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not sponsored by or legitimately affiliated with Complainant, and that Complainant has not given Respondent permission to use Complainant’s trademark MORNINGSTAR.COM in the disputed domain name. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Purple Bucquet,” which does not resemble the disputed domain name. On this record, we must conclude that that Respondent is not commonly known by the disputed domain name so as to have established rights to or legitimate interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See 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.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that, without demonstrable evidence to support the assertion that a respondent is commonly known by a contested domain name, the assertion must be rejected).
We also observe that Complainant contends, without objection from Respondent, that Respondent uses the <moriningstar.com> domain name to redirect Internet users to a directory website that advertises links to third-party websites, some of which compete with Complainant’s business in the financial investment industries. In the circumstances here presented, we may comfortably presume Respondent receives pay-per-click revenue from the visits of Internet users to these links. Respondent’s use of the disputed domain in this manner does not comport with the requirements of 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 Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that a respondent’s use of the <hpcanada.com> domain name to post links to commercial websites was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain name to operate a website containing links to various commercial websites competing with the business of a complainant, which the panel found not to be a use 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)).
Finally under this head of the Policy, we take note of the fact that Respondent’s <moriningstar.com> domain name differs by only a single letter from Complainant’s MORNINGSTAR.COM mark. This constitutes typo-squatting, or the deliberate misspelling of the trademark of another in forming a domain name, and is therefore evidence that Respondent does not possess rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a 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).
See also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights and legitimate interests in 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’”).
The Panel thus finds that the elements of Policy ¶ 4(a)(ii) have been met.
Respondent has evidently been a respondent in multiple other UDRP proceedings in which contested domain names were transferred to various complainants. See, e.g., Morningstar, Inc. v. Purple Bucquet, FA 1310402 (Nat. Arb. Forum Apr. 12, 2010); Morgan Stanley v. Purple Bucquet, FA 1336613 (Nat. Arb. Forum Sept. 6, 2010); AOL Inc. v. Purple Bucquet, FA 1334349 (Nat. Arb. Forum Aug. 20, 2010). Because of Respondent’s pattern of registering domain names appropriating others’ trademarks, as evidenced by these prior UDRP proceedings, we conclude that Respondent’s activities constitute bad faith registration and use of the instant domain name under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) where a respondent previously registered domain names incorporating well-known third-party trademarks).
Respondent’s <moriningstar.com> domain name resolves to a website containing pay-per-click links to other third-party websites, some of which compete with the business of Complainant. Using the disputed domain name to operate such a website thus to facilitate competition with Complainant disrupts Complainant’s business. Such disruption shows bad faith registration and use of the disputed domain name 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 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)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).
Respondent’s use of a confusingly similar version of Complainant’s trademark MORNINGSTAR.COM in forming the <moriningstar.com> domain name is plainly intended to take advantage of the fame and goodwill associated with Complainant’s mark to attract Complainant’s customers to Respondent’s resolving website. This use of the disputed domain name creates a likelihood of confusion as to that Complainant is the source of or affiliated with Respondent’s website. Because the links present on Respondent’s webpage are likely pay-per-click links that generate revenue each time they are clicked, Respondent’s misuse of Complainant’s mark results in profit for Respondent. This use of the contested domain name indicates that Respondent registered and is using the disputed domain name in bad faith for purposes of 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 a respondent diverted to its own website Internet users searching for a complainant’s website, likely profiting in the process); see also 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).
Respondent’s registration of the contested <moriningstar.com> domain name constitutes typo-squatting. Typo-squatting demonstrates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typo-squatting in its purest form); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatologica.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)).
For all of these reasons, the Panel finds Policy ¶ 4(a)(iii) has been satisfied.
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 <moriningstar.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 2, 2010
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