MIS Quality Management Corp. v. Taro Yamada / Personal
Claim Number: FA1412001594681
Complainant is MIS Quality Management Corp. (“Complainant”), represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Taro Yamada / Personal (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moodysinc.com>, registered with GMO INTERNET, INC. DBA ONAMAE.COM.
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 December 10, 2014; the National Arbitration Forum received payment on December 10, 2014. The Complaint was submitted in both English and Japanese.
On December 16, 2014, GMO INTERNET, INC. DBA ONAMAE.COM confirmed by e-mail to the National Arbitration Forum that the <moodysinc.com> domain name is registered with GMO INTERNET, INC. DBA ONAMAE.COM and that Respondent is the current registrant of the name. GMO INTERNET, INC. DBA ONAMAE.COM has verified that Respondent is bound by the GMO INTERNET, INC. DBA ONAMAE.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 December 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2015 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@moodysinc.com. Also on December 22, 2014, 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 January 14, 2015, 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" 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.
Complainant
Complainant has registered MOODY’S with numerous trademark authorities worldwide, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 871,342, registered June 17, 1969) and the Japan Patent Office (“JPO”) (e.g., Reg. No. 3,225,264, registered Nov. 29, 1996). Complainant uses the MOODY’S mark for its financial and investment-related credit ratings, research, tools, and analysis services. The <moodysinc.com> domain name is confusingly similar to the MOODY’S mark as it comprises the mark in full, along with the generic term “inc” and the non-distinguishing gTLD “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <moodysinc.com> name. Nothing in the WHOIS demonstrates Respondent to be known by this name. Respondent is using the disputed domain name to divert users to a Wordpress template with no substantive content. Such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bad faith. Respondent has engaged in a pattern of bad faith as demonstrated by prior adverse UDRP decisions. Respondent has used the disputed domain name to intentionally attract users by creating a likelihood of confusion as to the affiliation of Respondent’s website with Complainant. Respondent’s bad faith registration is further demonstrated by Respondent’s registration of the domain name despite actual knowledge of the MOODY’S mark.
Respondent
Respondent did not submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDINGS
The Registration Agreement is written in Japanese, thereby making Japanese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 uses the MOODY’S mark for its financial and investment-related credit ratings, research, tools, and analysis services. Complainant claims it has registered MOODY’S with numerous trademark authorities worldwide, including the USPTO (e.g., Reg. No. 871,342, registered June 17, 1969) and the JPO (e.g., Reg. No. 3,225,264, registered Nov. 29, 1996). The Panel concludes that Complainant’s valid trademark registrations with the USPTO and JPO establish Complainant’s rights in the MOODY’S mark for purposes of Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that the <moodysinc.com> domain name is confusingly similar to the MOODY’S mark as it comprises the mark in full, along with the generic term “inc” and the non-distinguishing gTLD “.com.” The disputed domain name also omits the apostrophe from the MOODY’S mark. The Panel agrees that the addition of the generic business identifier “inc,” the removal of the apostrophe, and the affixation of the gTLD “.com” are insufficient to distinguish the resulting domain name from the MOODY’S mark. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the addition of the generic term “INC” does not change the confusing similarity); Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). As such, the Panel finds the <moodysinc.com> domain name is confusingly similar to the MOODY’S mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 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 has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the <moodysinc.com> domain name as nothing in the WHOIS demonstrates Respondent to be known by the name. The WHOIS lists “Taro Yamada” as registrant. The Panel finds Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See 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).
Complainant claims that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant claims that Respondent is using the disputed domain name to divert users to a Wordpress template that has no substantive content. Past panels have determined that a respondent’s use of a confusingly similar domain name to display a blank Wordpress template does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use. In Webster Financial Corp. and Webster Bank, Nat’l Ass’n v. Darren Bates, FA 1589756 (Nat. Arb. Forum Dec. 15, 2014), the panel wrote, “[r]espondent’s use of the disputed domain name in connection with an unaltered blog template amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” See also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”). The Panel finds Respondent is not using the domain name to provide a bona fide offering of goods or services, and Respondent’s use of the domain name is not a legitimate noncommercial or fair use as protected by Policy ¶¶ 4(c)(i) and (iii) respectively.
Complainant has proven this element.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Complainant claims Respondent has engaged in a pattern of bad faith as demonstrated by prior adverse UDRP decisions. See, e.g., United Way of America v. Taro Yamada c/o Personal, FA 1275398 (Nat. Arb. Forum Sept. 7, 2009); Crystal Mountain Manufacturing, Inc. v. Taro Yamada / Personal, FA 1574863 (Nat. Arb. Forum Sept. 27, 2014); Avocent Huntsville Corp. v. Taro Yamada / Personal, FA 1582613 (Nat. Arb. Forum Nov. 25, 2014). The Panel agrees that these prior cases decided against Respondent constitute a pattern of bad faith under Policy ¶ 4(b)(ii), and finds this is evidence of bad faith registration and use in the present case. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant argues that Respondent is using the disputed domain name to intentionally attract users by creating a likelihood of confusion with Complainant’s mark. The disputed domain name resolves to an unaltered Wordpress template. The Panel agrees that the use of the domain name is creating an opportunity for Respondent to profit from a likelihood of confusion, and finds bad faith 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).
Complainant argues that Respondent’s bad faith registration is further demonstrated by Respondent’s registration of the domain name despite actual knowledge of the MOODY’S mark. Although past panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found bad faith under Policy ¶ 4(a)(iii) where the circumstances support an inference of actual knowledge. For example, in Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012), the panel wrote, “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).” The Panel infers, based on the fame of the MOODY’S mark, that Respondent had actual notice of Complainant and its mark at the time of domain name registration, and therefore registered the <moodysinc.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <moodysinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 15, 2015
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