Thomson Reuters Global Resources v. TodaysWeb Ltda / TodaysWeb Ltda.
Claim Number: FA1511001645861
Complainant is Thomson Reuters Global Resources (“Complainant”), represented by Thomas Walsh Walsh of MontaguLaw, P.C., United States. Respondent is TodaysWeb Ltda / TodaysWeb Ltda. (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aspatore.com>, registered with Tucows Domains Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2015; the Forum received payment on November 6, 2015.
On November 9, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <aspatore.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 November 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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@aspatore.com. Also on November 10, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant made the following contentions.
1. Complainant is a leading publisher and provider of information for businesses and professionals in the legal, financial, tax and accounting, healthcare, science, and media markets. Under the ASPATORE mark, Complainant annually publishes works from C-Level executives and partners from the world’s most respected companies and law firms. These publications provide professionals of all levels with business and legal intelligence from industry insiders. Complainant acquired the ASPATORE trademark together with the goodwill of the underlying business when it purchased the company of the same name, Aspatore, Inc., in 2007. Aspatore, Inc., had been using the domain name since at least as early as 2000.
2. By reason of the extensive use of the ASPATORE mark and the goodwill associated with it, Complainant owns common law rights in the mark that predate Respondent’s registration of the disputed domain name.
3. On or around August 2012, upon information and belief, the <aspatore.com> domain was inadvertently allowed to lapse. At some point thereafter, Respondent registered the infringing domain name. Attached Exhibit G contains screenshots from the website as it existed when owned by Complainant. The <aspatore.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark and adds the generic top-level domain “.com.”
4. Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to pass itself off as Complainant in a blatant attempt to cause consumer confusion and profit as a result of the confusion.
5. Respondent has registered and is using the disputed domain name in bad faith. First, Respondent registered and is using the disputed domain name in an attempt to disrupt and compete with Complainant’s business. Second, Respondent attracts and confuses Internet users for commercial profit through its use of the infringing domain name. Third, Respondent uses the disputed domain name to conduct a phishing scam, whereby unsuspecting Internet users are asked to make donations and are directed to a link to another website registered to Respondent, where visitors are asked to submit personal information as well as payment. See Compl., at Attached Ex. I (screenshots from disputed domain name). Last, Complainant has garnered significant goodwill in its mark, thereby imputing Respondent’s actual knowledge from Respondent’s attempts to capitalize on such goodwill.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a leading publisher and provider of information for businesses and professionals in the legal, financial, tax and accounting, healthcare, science, and media markets under the ASPATORE mark.
2. Complainant has established common law trademark rights in the ASPATORE mark.
3. Complainant originally owned the disputed domain name, but in or about August 2012, it inadvertently allowed its registration to lapse, whereupon Respondent registered the domain name.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant holds no relevant trademark registrations in the ASPATORE mark with any governmental authority. However, panels have consistently found that a complainant may establish Policy ¶ 4(a)(i) rights in a mark under the common law, without any such registration. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
By reason of the extensive use of the ASPATORE mark and the goodwill associated with it and the evidence adduced by Complainant to show that use, Complainant contends that it owns common law rights in the mark that predate Respondent’s registration of the disputed domain name pursuant to Policy ¶ 4(a)(i). The Panel agrees with that submission. In or around August 2012, on information and belief, the <aspatore.com> domain was inadvertently allowed to lapse. At some point thereafter, Respondent registered the infringing domain name. Complainant argues that Respondent removed its information from the website of the infringing domain name on or about November 6, 2015, when Complainant filed the original complaint. Previous panels have concluded that the fact that a complainant held the domain name prior to the respondent’s registration evidences rights in the domain name under Policy ¶ 4(a)(i). See Marty Taylor Homes, Inc. v. JNPR Mgmt., FA 366170 (Nat. Arb. Forum Jan. 5, 2005) (finding that the complainant’s prior use of the disputed domain name, which was identical to the asserted trademark, was evidence of its rights in the mark). As the Panel agrees with Complainant’s contentions, the Panel finds that Complainant has demonstrated common law rights to the ASPATORE mark pursuant to Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ASPATORE mark. Complainant argues that the <aspatore.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark and adds the gTLD “.com.” Previous panels have held that the affixation of the gTLD “.com” does not serve to distinguish a respondent’s disputed domain name adequately from a complainant’s 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). Accordingly, the Panel finds find that Respondent’s disputed domain name is confusingly similar to Complainant’s ASPATORE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ASPATORE trademark and to use it in its domain name, Complainant having been the previous registered owner of the disputed domain name;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “TodaysWeb Ltda / TodaysWeb” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. The Panel notes Exhibit B to the Complaint for additional WHOIS information. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply);
(e) Complainant contends 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. Complainant argues that Respondent uses the disputed domain name to pass itself off as Complainant in a blatant attempt to cause consumer confusion and profit as a result of the confusion. In so arguing, Complainant asserts that the website to which the disputed domain name resolves is an exact replica of Complainant’s website as Complainant’s mark is prominently displayed on the top of Respondent’s resolving webpage, along with the same coloring, look, and feel found on Complainant’s website. Moreover, Complainant alleges that Respondent copied text from Complainant’s website, including links to Complainant’s “About Us,” “Contact Us,” and “Terms of Use” sections. The Panel notes Attached Exhibits I and K for screenshots from the infringing website and Complainant’s website, respectively. Previous panels have held that there is not a bona fide offering of good or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) where a respondent attempts to pass itself off as the complainant. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Therefore, the Panel finds 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 under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and is using the disputed domain name in an attempt to disrupt and compete with Complainant’s business. Previous panels have found evidence of bad faith registration and use under Policy ¶ 4(b)(iii) where a respondent’s website was nearly identical to that of the complainant. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). For this reason, the Panel finds that Respondent’s disputed domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant asserts that Respondent attracts and confuses Internet users for commercial profit through its use of the infringing domain name. Previous panels have determined that a respondent demonstrated bad faith registration and use where the respondent used a disputed domain name intentionally to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Thirdly, Complainant contends that Respondent uses the disputed domain name to conduct a phishing scam, whereby unsuspecting Internet users are asked to make donations and are directed to a link to another website registered to Respondent, where visitors are asked to submit personal information as well as payment. The Panel notes Attached Exhibits I and L for screenshots from the website to which the infringing domain name resolves and screenshots from todaysweb.com, the other website owned by Respondent. Past panels have concluded that a respondent demonstrated bad faith registration and use under Policy ¶ 4(a)(iii) where the respondent used the disputed domain name to acquire the personal and financial information of the complainant’s customers fraudulently. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). As such, the Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Fourthly, while Respondent has purportedly used passing off in an attempt to phish for Internet users’ personal information, the Panel is able look to the totality of the circumstances in determining Respondent’s actual knowledge of the ASPATORE mark in which Complainant asserts rights. See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed). Therefore, as the Panel concludes that Respondent had actual knowledge of the ASPATORE mark, then the Panel agrees that Respondent registered and used the disputed domain name in bad faith subsequent to Complainant’s lapse in renewing the registration of the domain name.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aspatore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 10, 2015
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