Edfinancial Services, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1310001524578
Complainant is Edfinancial Services, LLC (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <edfiancial.com>, registered with PDR 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2013; the National Arbitration Forum received payment on October 15, 2013.
On October 18, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <edfiancial.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2013 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@edfiancial.com. Also on October 23, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" 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
1. Respondent’s <edfiancial.com> domain name is confusingly similar to Complainant’s EDIFINANCIAL mark.
2. Respondent does not have any rights or legitimate interests in the <edfiancial.com> domain name.
3. Respondent registered and uses the <edfiancial.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the EDFINANCIAL SERVICES and EDFINANCIAL marks and holds the following registrations with the United States Patent and Trademark Office (“USPTO”): EDFINANCIAL SERVICES (Reg. No. 2,977,695 registered July 26, 2005) AND EDFINANCIAL (Reg. No. 3,456,998 registered July1, 2008). Complainant has continuously used both marks in commerce since October 1, 2003. Complainant conducts business under the <edfinancial.com>, <edfinancial.net>, <edfinancial.org>, and <edfinancial.org> domain names.
Respondent registered the <edfiancial.com> domain name on October 16, 2005, and uses it to resolve to a website featuring links to various third party websites, including direct competitors of Complainant in the educational financial services industry.
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."
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.
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.”).
Complainant states that it is a leading provider of student education loan servicing and higher education services related to financial aid. Complainant owns the EDFINANCIAL SERVICES and EDFINANCIAL marks through its registrations with the USPTO, and contends that it has used both of its marks continuously in commerce since at least October 1, 2003. Previous panels have determined that a complainant can assert its rights in a trademark by providing the panel with evidence of its registration of that mark with a recognized trademark authority. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Panels also consistently find that it is irrelevant whether a complainant owns a registration for mark in the location of respondent’s residence. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel finds that Complainant has rights in the EDFINANCIAL SERVICES and EDFINANCIAL marks pursuant to Policy ¶ 4(a)(i) dating back to Complainant’s filing date for the EDFINANCIAL SERVICES mark on September 26, 2003. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”) Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Respondent’s <edfiancial.com> domain name is merely a misspelling of Complainant’s EDFINANCIAL mark. Previous panels have found that omitting letters and adding a gTLD are variations that do not overcome a finding of confusing similarity between a registered mark and a disputed domain name. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET). The Panel finds that the <edfiancial.com> domain name is confusingly similar to Complainant’s EDFINANCIAL marks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the disputed domain name, and is not authorized or licensed to use the disputed domain name. The WHOIS information lists “Private Registrations Aktien Gesellschaft / Domain Admin” as the registrant of the <edfiancial.com> domain name. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) found the the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) when there was nothing in the record or in evidence to indicate that the respondent went by the domain name. The Panel finds that there is no basis for concluding that Respondent is known by the <edfiancial.com> domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, as it resolves to a website featuring links to various third party websites, including direct competitors of Complainant. Complainant further argues that Respondent presumably receives click-through fees from the links present on the website. The Panel therefore finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant also argues that Respondent is typosquatting, merely omitting the letter “n” from the EDFINANCIAL mark. In the case of Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007), the panel found that the respondent’s lack of rights and legitimate interests in the <microssoft.com> domain name could be inferred by the vary fact that the domain name’s sole purpose was to embody a common spelling error that Internet users may make in seeking out the complainant’s MICROSOFT mark on the Internet. The Panel likewise finds that Respondent’s typosquatting is further evidence that Respondent lacks rights or legitimate interests in the <edfiancial.com> domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the domain name to confuse Internet users into believing the advertisements sponsored therein are endorsed or approved by Complainant, and receives revenue for each Internet user diverted through Respondent’s website. The Panel agrees and finds that Respondent’s use of the <edfiancial.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); 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 typosquatting is itself bad faith under 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 Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
Complainant further argues that Respondent had knowledge of Complainant’s rights in its marks at the time Respondent registered the disputed <edfiancial.com> domain name. Due to the obvious typosquatting, the Panel agrees and finds this to be further evidence that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <edfiancial.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 26, 2013
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