T. Rowe Price Group, Inc. v. Venkateshwara Distributor Private Limited. / HEMANG INFRASRUCTURE PRIVATE LIMITED
Claim Number: FA1612001705342
Complainant is T. Rowe Price Group, Inc. (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Venkateshwara Distributor Private Limited. / HEMANG INFRASRUCTURE PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <roweprice.com>, <tpricerowe.com>, <trowepice.com>, <troweprive.com>, <trowsprice.com>, <trpweprice.com>, and <teroweprice.com>, registered with Tirupati Domains and Hosting Pvt Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2016; the Forum received payment on December 1, 2016.
On December 3, 2016, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the Forum that the <roweprice.com>, <tpricerowe.com>, <trowepice.com>, <troweprive.com>, <trowsprice.com>, <trpweprice.com>, and <teroweprice.com> domain names are registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the names. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt Ltd. 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 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017 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@roweprice.com, postmaster@tpricerowe.com, postmaster@trowepice.com, postmaster@troweprive.com, postmaster@trowsprice.com, postmaster@trpweprice.com, and postmaster@teroweprice.com. Also on December 12, 2016, 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 January 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain names be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: UDRP Rule 3(b)(viii).
T. ROWE PRICE (India Reg. No. 2621334) (Stylized and Design) in International Class 36 used in connection with “Financial affairs; monetary affairs; house mark for providing a full range of services in the investment and financial field, namely, investment brokerage, investment management, asset management, investment advice, investment consultation, financial research, banking, tax consultation, administration of college savings plans, charitable fund raising, donor-advised investment of funds for charitable purposes, administration of charitable giving programs offering a variety of financial investment options, retirement planning, and variable annuities investment.” Date of registration: October 30, 2013.
T. ROWE PRICE (India Reg. No. 1365805) in International Class 36 used in connection with “Financial affairs, monetary affairs, insurance in the field of annuities, investment management, providing a full range of financial investment services and providing a full range of electronic services via the internet in the financial investment field.” Date of registration: June 21, 2005.
T. ROWE PRICE (India Reg. No. 1003153) in International Class 16 used in connection with “A full range of publications and printed matter in the investment, investment brokerage, asset management and financial field, and a full range of publications and printable matter downloadable from the internet in the investment, investment brokerage, asset management and financial field.” Date of registration: April 21, 2001.
T. ROWE PRICE (US Reg. No. 4374970) in International Classes 9 and 36 used in connection with “Downloadable software in the nature of mobile applications in the investment, investment brokerage, financial asset management and financial field which enables users to manage personal account information, view personal account balances, perform personal mutual fund transactions, check the status of pending personal transactions and view personal transaction history, view personal account asset allocation and performance information and charts, conduct personal fund research, and access insights on current market events;” and “Providing online non-downloadable videos and content featuring information in the investment, investment brokerage, financial asset management and financial field.” Date of registration: July 30, 2013.
T. ROWE PRICE (US Reg. No. 2785262) in International Classes 9, 16 and 36 used in connection with “[A] full range of publications and printed matter downloadable from the Internet, namely, newsletters, magazines, reports, guides, charts, worksheets, forms, instructional materials, educational materials, bulletins, pamphlets, and booklets in the investment, investment brokerage, asset management and financial field;” “[A] full range of publications and printed matter, namely, newsletters, magazines, reports, guides, charts, worksheets, forms, instructional materials, educational materials, bulletins, pamphlets, booklets, posters, and leaflets in the investment, investment brokerage, asset management and financial field;” and “[A] full range of services in the investment and financial field, namely, investment brokerage, investment management, asset management, investment advice, investment consultation, financial research, banking, [ tax consultation ] administration of college savings plans, charitable fund raising, donor-advised investment of funds for charitable purposes, administration of charitable giving programs offering a variety of financial investment options, retirement planning, and variable annuities investment; and a house mark for providing a full range of electronic services via the Internet in the investment and financial field, namely, mutual fund investment, investment brokerage, investment management, asset management, investment advice, investment consultation, and financial research, banking, [ tax consultation, ] administration of college savings plans, charitable fund raising, donor- advised investment of funds for charitable purposes, administration of charitable giving programs offering a variety of financial investment options, retirement planning, financial calculators and analyzers, and variable annuities investment.” Date of registration: November 25, 2003.
T. ROWE PRICE (US Reg. No. 1493517) in International Class 36 used in connection with “Mutual fund investment services.” Date of registration: June 21, 1988.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
1. Complainant is T. Rowe Price Group, Inc. (T. Rowe Price), a United States corporation with its global headquarters in Baltimore, Maryland.
2. According to the WHOIS Database, the Respondent in this administrative proceeding is Venkateshwara Distributor Private Limited., whose listed address is B / 12 Synthofine Estate, Off Arrey Road, Behind Virwani, Goregaon (E), Mumbai, Maharashtra, 400063, IN and HEMANG INFRASRUCTURE PRIVATE LIMITED, whose listed address is BLOCK NO 2, 3RD FLOOR, ABBAS MANZIL, OPP CIGARATE FACTORY, SAHAR ROAD, ANDHERI EAST, Mumbai, Maharashtra, 400099, IN.
3. As discussed above, Although Respondent has used two different sets of registration data or aliases in connection with the seven (7) domain names covered by this Complaint, Complainant believes that the registrant of all seven (7) domain names is the same underlying individual, or that the domains are under common control of affiliated individuals or entities, in light of the following evidence:
• Both apparent registrants are located in Mumbai, India, and the addresses reflected in the Whois data appear to be within 10 km of one another;
• Both apparent registrants use a similar formulation for their email addresses namely “info@[nameofentity].com”;
• Both apparent registrants use a similar formulation for their organization monikers, namely “[Indian Surname] [generic term such as distributor / infrastructure] Private Limited.”
• All seven (7) of the domain names use identical name servers, belonging to parkingcrew.net;
• All seven (7) of the domain names previously used the same proxy service, namely Domain Whois Protect Service;
• All seven (7) of the domain names use the same registrar, namely Tirupati Domains;
• All seven (7) of the domain names are registered in the same TLD, namely .COM;
• All seven (7) domain names use similar typographical variations;
• Both the venkateshwaradpl.com and hemanginfra.com domain names, which are reflected in the email addresses used in connection with the seven (7) domain names here, use the same proxy service, namely Domain Whois Protect Service;
• Both the venkateshwaradpl.com and hemanginfra.com domain names use the same registrar, namely Tirupati Domains;
• Both the venkateshwaradpl.com and hemanginfra.com domain names use the same name servers, namely fastdnsservers.com;
• Both the venkateshwaradpl.com and hemanginfra.com domain names resolve to identical web pages with identical source code, namely a page containing the text “Directory Listing Denied This Virtual Directory does not allow contents to be listed” implying identical name server settings and the lack of any default index pages;
• The venkateshwaradpl.com and hemanginfra.com domain names were created exactly two (2) weeks apart, on February 18, 2009 and March 4, 2009, respectively; and
• The venkateshwaradpl.com and hemanginfra.com domain names were both last updated on the same date at precisely the same time, namely November 29, 2016 at 06:33:35Z.
• Both apparent registrants are serial cybersquatters. See, e.g., AutoZone IP, LLC v. Venkateshwara Distributor Private Limited, FA1512001653467 (Forum Jan. 22, 2016) (“The Panel notes that Respondent has been the respondent in twenty-five cases, all of which resulted in the transfer of the disputed domain names”); Brooks Brothers Group, Inc. v. Hemang Infrastructure Private Limited, FA1303001488754 (Forum Apr. 23, 2013) (“‘These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶4(b)(ii)) (internal citations omitted).
Therefore, Complainant asserts that all seven (7) of the domain names covered by this Complaint are registered to the same underlying individual using multiple aliases, or that the domains are under common control of affiliated individuals or entities, and that the Panel has the authority to determine the disposition of all seven (7) of these domain names in connection with this single Complaint. UDRP Rule 3(c).
4. This dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as “UDRP,” or “the Policy”) and the Administrative Panel has jurisdiction to decide the dispute. The Domain Name Registration Agreement (the “Registration Agreement”), pursuant to which the Disputed Domain Names were registered, incorporates the Policy.
5. In addition, in accordance with the Policy, Paragraph 4(a), Respondent is required to submit to a mandatory administrative proceeding because:
(a) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(c) The Disputed Domain Names have been registered and are being used in bad faith.
6. This Complaint is based upon Complainant’s trademark/service mark, T. ROWE PRICE, which has been used by Complainant in India since at least as early as 2001, and in the United States since at least as early as 1988; however, Complainant owns numerous other registrations for the trademark/service mark T. ROWE PRICE in jurisdictions around the world (collectively, the “T. ROWE PRICE Marks”).
7. In addition, the domain names TROWEPRICE.COM, T-ROWE-PRICE.COM, TROVVEPRICE.COM, TROWAPRICE.COM, TROWE-PRICE.COM, and TROWEPRICE.IN, among numerous others, are currently registered to Complainant either in Complainant’s name or through its wholly-owned subsidiary T. Rowe Price Associates, Inc. (collectively the “T. ROWE PRICE Domain Names”). Some of these domain names have been used in Complainant’s business as early as 1995 and have been continuously used and associated with Complainant’s business since that time. For example, TROWEPRICE.COM directs Internet users to Complainant’s website, which makes extensive use of the T. ROWE PRICE Marks.
8. Complainant has promoted the T. ROWE PRICE Marks globally, and the T. ROWE PRICE Marks have widespread recognition in India, the United States, and worldwide. In 2015, CNBC rated T. ROWE PRICE the 8th best global investment management firm, and Investments & Pensions Europe rated T. ROWE PRICE the 21st best global asset manager of 2015. In 2016, Fortune Magazine ranked T. ROWE PRICE 3rd in its industry among the “World’s Most Admired Companies.” In addition, the T. ROWE PRICE Marks are frequently mentioned in top periodicals and other news sources in India and accessible to Internet users in India.
9. Complainant is an American publicly-owned asset management firm headquartered in Baltimore, Maryland, founded in 1937 by Thomas Rowe Price, Jr. Complainant (either directly or through its affiliates) offers global investment management products, tools, and services, including mutual funds, subadvisory services, separate account management, recordkeeping, and related services for individuals, institutions, retirement plan sponsors, and financial intermediaries. As of 2016, Complainant employed 508 investment professionals worldwide, had $812.9 billion in assets under management, employed 172 fixed income professionals with $189.3 billion in fixed income assets, and employed 302 equity professionals with $623.6 billion in equity assets. As of 2016, Complainant ranked as the 26th largest asset management firm by assets under management.
10. As a result of the foregoing, Complainant has developed extremely valuable goodwill and an outstanding reputation in the T. ROWE PRICE Marks and the T. ROWE PRICE Domain Names. The T. ROWE PRICE Marks are famous and are indications of high quality and origin associated exclusively with Complainant.
11. The Disputed Domain Names were registered in the name of Respondent on October 23, 2016 (roweprice.com), February 14, 2016 (tpricerowe.com), October 3, 2016 (trowepice.com), April 28, 2016 (troweprive.com), April 12, 2016 (trowsprice.com), January 13, 2016 (trpweprice.com), and April 5, 2016 (teroweprice.com), respectively, with Tirupati Domains and Hosting Private Limited (the “Registrar”).
12. The Disputed Domain Names resolve to a variety of content or otherwise fail to resolve to any active website, as follows:
· roweprice.com resolves to an apparently legitimate website for Fidelity Investments Retirement Planning, which offers goods and services competitive to those of Complainant;
· tpricerowe.com fails to resolve to any active website due to a connection time out error;
· trowepice.com attempts to resolve to http://xml.pdn- 2.com/click?adv=5069&i=fXVFgSAop3E_0, but fails to resolve to any active website due to a connection time out error;
· troweprive.com resolves to a parked page containing third party sponsored advertising listings including links to goods and services competitive to those of Complainant (citing “My Account,” “T Rowe Price,” “401K Retirement Plan,” “Retirement Investment Plans,” Invest for Retirement,” “Retirement Advice,” “Retirement Financial Planning,” “Ira Retirement,” “401 K Retirement Plan,” and “Benefits of a Roth Ira” that each link to a separate page of hyperlinks to third party content including competitors of Complainant and, in some instances, to Complainant’s own website). The page also contains embedded Google Adsense advertising as reflected in the page source code, and embedded links to parkingcrew.net as reflected in the source code, which is affiliated with malware and other malicious activity;
· trowsprice.com resolves to a parked page containing third party sponsored advertising listings including links to goods and services competitive to those of Complainant (citing “Signe [sic] In,” “401K Retirement Plan,” “401 K Retirement Plan,” “401K Profit Sharing Plan,” “How to Rollover a 401K,” and “Ira Retirement Plan” that each link to a separate page of hyperlinks to third party content including competitors of Complainant and, in some instances, to Complainant’s own website). The page also contains embedded Google Adsense advertising as reflected in the page source code, and embedded links to parkingcrew.net as reflected in the source code, which is affiliated with malware and other malicious activity;
· trpweprice.com resolves to a parked page containing third party sponsored advertising listings including links to goods and services competitive to those of Complainant (citing “My Account,” “401K Retirement Plan,” “401 K Retirement Plan,” “Register,” “Ira Retirement Plan,” “Benefits of a Roth Ira”, “Pension Annuity Calculator,” and “What Is a Roth 403 B” that each link to a separate page of hyperlinks to third party content including competitors of Complainant and, in some instances, to Complainant’s own website). The page also contains embedded Google Adsense advertising as reflected in the page source code, and embedded links to parkingcrew.net as reflected in the source code, which is affiliated with malware and other malicious activity; and
· teroweprice.com resolves to various revolving websites containing malware or similar harmful malicious content.
13. In addition, the roweprice.com domain name is listed for sale through the Sedo online domain name auction platform, and advertised for sale on the Domain Tools Whois search page for the domain name.
14. Respondent’s second level domain names are typographical variations that are confusingly similar to the T. ROWE PRICE Mark.
15. Respondent is not a licensee of Complainant nor is it authorized to use Complainant’s T. ROWE PRICE Marks or Complainant’s T. ROWE PRICE Domain Names.
16. Respondent registered and is using the Disputed Domain Names in bad faith, having registered the Disputed Domain Names with knowledge of Complainant’s rights in the T. ROWE PRICE Marks, having registered the Disputed Domain Names as part of a pattern of bad faith registration and use of seven domain names targeting Complainant’s T. ROWE PRICE Marks, having offered one of the Disputed Domain Names for sale at public auction, having used the Disputed Domain Names in connection with various content including websites offering goods and services directly competitive with those offered by Complainant and parked pages containing pay-per-click third party sponsored listings advertising goods and services directly competitive with those of Complainant, and/or passively holding the Disputed Domain Names.
17. Under Section 4(a) of the Policy, a domain name registration may be cancelled or transferred upon a showing that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the registrant 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.
[a.] The <roweprice.com>, <tpricerowe.com>, <trowepice.com>, <troweprive.com>, <trowsprice.com>, <trpweprice.com>, and <teroweprice.com> Domain Names Are Identical Or Confusingly Similar To The T. ROWE PRICE Marks In Which Complainant Has Well-Established Rights. UDRP Rule 3(b)(ix)(1); Policy ¶4(a)(i).
18. The Disputed Domain Names consist of various typographical variations of the words “T. ROWE PRICE,” which are confusingly similar to the Complainant’s well-established trademarks and domain names. There are only minor typographical differences between Complainant’s marks and the Disputed Domain Names, as well as the addition of the generic top level domain extension “.COM.”
19. It is well-established that a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. In this case, the Respondent’s second level domain names are common or obvious misspellings of the T. ROWE PRICE Marks, thereby creating confusing similarity between the Disputed Domain Names and Complainant’s trademarks. More specifically:
· roweprice.com merely omits the “t” from the beginning of the domain name, which would otherwise be identical to the T. ROWE PRICE Marks;
· tpricerowe.com merely transposes the order of the elements of the mark such that “PRICE” comes before “ROWE” – otherwise, the domain name would be identical to the T. ROWE PRICE Marks;
· trowepice.com merely omits the letter “r” from the word “PRICE” – otherwise, the domain name would be identical to the T. ROWE PRICE Marks;
· troweprive.com merely substitutes the letter “v” for the letter “c” in the word “PRICE,” where “v” is immediately next to the letter “c” on a standard ASCII/QWERTY keyboard, taking advantage of a common missed keystroke – otherwise, the domain name would be identical to the T. ROWE PRICE Marks;
· trowsprice.com merely substitutes the letter “s” for the letter “e” in the word “ROWE,” where “s” is immediately diagonal to the letter “e” on a standard ASCII/QWERTY keyboard, taking advantage of a common missed keystroke – otherwise, the domain name would be identical to the T. ROWE PRICE Marks;
· trpweprice.com substitutes the letter “p” for the letter “o” in the word “ROWE,” where “p” is immediately next to the letter “o” on a standard ASCII/QWERTY keyboard, taking advantage of a common missed keystroke – otherwise, the domain name would be identical to the T. ROWE PRICE Marks; and
· teroweprice.com adds the letter “e” after the letter “t” and before the letter “r” where “e” is immediately next to the letter “r” on a standard ASCII/QWERTY keyboard, taking advantage of a common missed/additional keystroke – otherwise, the domain name would be identical to the T. ROWE PRICE Marks.
20. Respondent’s use of typographical variations of Complainant’s marks is therefore sufficient to find confusing similarity between the Disputed Domain Names and Complainant’s T. ROWE PRICE Marks.
[b.] Respondent Has No Rights Or Legitimate Interest In Respect Of The <roweprice.com>, <tpricerowe.com>, <trowepice.com>, <troweprive.com>, <trowsprice.com>, <trpweprice.com>, and <teroweprice.com> Domain Names. UDRP Rule 3(b)(ix)(2); Policy ¶4(a)(ii); Policy ¶4(c).
21. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Respondent has never been authorized by Complainant to use the T. ROWE PRICE Marks in any manner, much less as part of the Disputed Domain Names.
22. Respondent has no legitimate interests in the Disputed Domain Names given that the Disputed Domain Names were registered well after Complainant had registered its T. ROWE PRICE Marks and had established extensive goodwill.
23. The Disputed Domain Names do not reflect Respondent’s common name.
24. Use of a domain name that is 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 or legitimate non-commercial fair use under the Policy.
25. In addition, the majority of websites associated with the Disputed Domain Names have never provided any substantive content of their own, are therefore not bona fide offerings of goods and services within the meaning of the UDRP, and therefore cannot confer upon Respondent any legitimate interest in the domain names by virtue of their existence.5
26. Finally, it is well-established that, where Complainant contends Respondent has no rights or legitimate interests in a disputed domain name, the burden of proof shifts to Respondent to come forward with proof to the contrary. Absent a showing to the contrary by Respondent, Complainant has therefore established that Respondent has no legitimate interests in the Disputed Domain Names.
[c.] The <roweprice.com>, <tpricerowe.com>, <trowepice.com>, <troweprive.com>, <trowsprice.com>, <trpweprice.com>, and <teroweprice.com> Domain Names Have Been Registered And Used In Bad Faith. UDRP Rule 3(b)(ix)(3); Policy ¶4(a)(iii); Policy ¶4(b).
27. The Disputed Domain Names have been registered and used in bad faith. Under Section 4(b) of the Policy, any of the following non-exhaustive circumstances shall be evidence of the use and registration of a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
28. First, Respondent has registered the Disputed Domain Names in bad faith according to Section 4(b)(i) of the Policy. One of the Disputed Domain Names, namely roweprice.com, is advertised for sale and available for sale by auction through the Sedo online domain name auction service at a minimum starting price of USD $90. The offering of at least one of the Disputed Domain Names for sale at a grossly inflated price through an online domain name auction service demonstrates that Respondent “registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant…or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.”
29. Second, Respondent has registered the Disputed Domain Names in bad faith according to Section 4(b)(ii) of the Policy. Respondent’s registration of the Disputed Domain Names demonstrates that Respondent has deliberately engaged in a pattern of conduct aimed at preventing Complainant from defensively registered typographical variations of its T. ROWE PRICE Mark in the .COM gTLD, having registered several typographical variations of Complainant’s key trademarks in this gTLD. This conduct clearly demonstrates that Respondent has targeted Complainant’s trademarks as part of a pattern of bad faith registrations. Thus, Respondent has registered the Disputed Domain Names in order to prevent Complainant from reflecting variations of its T. ROWE PRICE Mark in the .COM gTLD, evidencing a pattern of such conduct with respect to Complainant’s T. ROWE PRICE Mark.
30. Respondent has also registered the Disputed Domain Names in bad faith according to Section 4(b)(iv) of the Policy. Respondent is using the Disputed Domain Names in connection with websites that offer goods and services directly competitive with those of Complainant, as well as parked pages containing pay-per-click sponsored listings linking to third party content that offer goods and services directly competitive with those of Complainant. More specifically:
· roweprice.com resolves to an apparently legitimate website for Fidelity Investments Retirement Planning, which offers goods and services competitive to those of Complainant;
· troweprive.com resolves to a parked page containing third party sponsored advertising listings including links to goods and services competitive to those of Complainant (citing “My Account,” “T Rowe Price,” “401K Retirement Plan,” “Retirement Investment Plans,” Invest for Retirement,” “Retirement Advice,” “Retirement Financial Planning,” “Ira Retirement,” “401 K Retirement Plan,” and “Benefits of a Roth Ira” that each link to a separate page of hyperlinks to third party content including competitors of Complainant and, in some instances, to Complainant’s own website). The page also contains embedded Google Adsense advertising as reflected in the page source code, and embedded links to parkingcrew.net as reflected in the source code, which is affiliated with malware and other malicious activity;
· trowsprice.com resolves to a parked page containing third party sponsored advertising listings including links to goods and services competitive to those of Complainant (citing “Signe [sic] In,” “401K Retirement Plan,” “401 K Retirement Plan,” “401K Profit Sharing Plan,” “How to Rollover a 401K,” and “Ira Retirement Plan” that each link to a separate page of hyperlinks to third party content including competitors of Complainant and, in some instances, to Complainant’s own website). The page also contains embedded Google Adsense advertising as reflected in the page source code, and embedded links to parkingcrew.net as reflected in the source code, which is affiliated with malware and other malicious activity; and
· trpweprice.com resolves to a parked page containing third party sponsored advertising listings including links to goods and services competitive to those of Complainant (citing “My Account,” “401K Retirement Plan,” “401 K Retirement Plan,” “Register,” “Ira Retirement Plan,” “Benefits of a Roth Ira”, “Pension Annuity Calculator,” and “What Is a Roth 403 B” that each link to a separate page of hyperlinks to third party content including competitors of Complainant and, in some instances, to Complainant’s own website). The page also contains embedded Google Adsense advertising as reflected in the page source code, and embedded links to parkingcrew.net as reflected in the source code, which is affiliated with malware and other malicious activity.
Thus, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s websites or other on-line locations, by creating a likelihood of confusion with Complainant’s T. ROWE PRICE Mark as to the source, sponsorship, affiliation, or endorsement of its website or location.
31. At least one of the Disputed Domain Names also resolves to a website that attempts to distribute malware. The website very clearly indicates that the user’s computer is being infected with viruses and other malicious software and warns the user to contact a purported support telephone number for assistance, and the reported virus, the ZEUS virus, is a well- known malware indicator. The use of a domain name to distribute malware to Internet users’ computers demonstrated Respondent’s bad faith under Policy ¶4(b)(iv)).
32. Furthermore, Complainant’s rights in the T. ROWE PRICE Marks are so well established, and its T. ROWE PRICE brand has achieved a level of recognition and fame such that Respondent has no colorable argument that he is unaware of the T. ROWE PRICE brand. The Disputed Domain Names are only valuable because of their association with the T. ROWE PRICE brand.
33. Respondent was on notice of Complainant’s T. ROWE PRICE Marks prior to registering the Disputed Domain Names, given the global fame of Complainant’s T. ROWE PRICE Marks,13 further evidencing Respondent’s bad faith intent in registering and using the Disputed Domain Names.
34. In this context, Respondent’s passive holding of certain of the Disputed Domain Names, namely tpricerowe.com, trowepice.com, troweprive.com, trowsprice.com, and trpweprice.com, evidences bad faith registration and use.
35. The only conclusion that can be drawn from the evidence is that Respondent has registered and used the Disputed Domain Names in bad faith in accordance with Section 4(b) of the Policy.
36. For the reasons described above, the Disputed Domain Names are identical or confusingly similar to Complainant’s T. ROWE PRICE Marks, Respondent lacks rights or legitimate interest in the Disputed Domain Names, and the Disputed Domain Names were registered and used in bad faith, in violation of Policy ¶(4)(a).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order transferring or canceling a domain name:
(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(f), 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 (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.”).
Preliminary Issue: Multiple Respondents
Complainant claims the entities who control the domain names at issue are effectively controlled by the same person and/or entity, who are operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant claims the two registrants are the same underlying individual, or that the domains are under common control of affiliated individuals or entities, in light of the following evidence:
Respondent has not responded to this claim (or any other claim in this Proceeding). This Panel concludes Complainant presented sufficient circumstantial evidence demonstrating the listed entities are jointly controlled.
Complainant claims rights in the T. ROWE PRICE mark based upon Complainant’s registration with the United States Patent and Trademark Office (“USPTO”) and Intellectual Property India (“IPI”) (e.g., USPTO–Reg. No. 1,493,517, registered June 21, 1988; IPI–Appl. No. 1003153, registered Apr. 12, 2001). Registration of a mark with a governmental authority (such as the USPTO or IPI) is sufficient evidence for a complainant’s right in a mark. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum April 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶4(a)(i) rights in the ASTUTE SOLUTIONS mark.); see also T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Complainant’s registration of the T. ROWE PRICE mark with the USPTO and IPI is sufficient to establish Complainant’s right in the mark for the purposes of Policy ¶4(a)(i).
Complainant claims the disputed domain names are confusingly similar to the T. ROWE PRICE mark because they all contain the mark in its entirety, differing only by various typographical variations, the omission of the spaces and period in the mark, and addition of the generic top-level domain (“gTLD”) “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. Punctuation (in this case a period) is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis (the period is reserved as a delimiter in domain name syntax). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶4(a)(i).”).
Complainant claims the domain names make minor typographic changes to the T. ROWE PRICE mark. Respondent’s <roweprice.com> and <trowepice.com> differ by the removal of one letter, the “t” and the second “r,” respectively. Omitting a single letter does not distinguish a domain name from a mark under a Policy ¶4(a)(i) analysis. See Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). Respondent’s <tpricerowe.com> differs from the mark by inverting the words “Rowe” and “price” in the mark. Inverting the words in a mark is not sufficient to overcome a finding of confusing similarity. See Bloomberg L.P. v. Herrington Hart, NIRT, FA 464790 (Forum June 1, 2005) (“The Panel finds that the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”). Respondent’s <troweprive.com>, <trowsprice.com>, and <trpweprice.com> change only a single letter in the mark to a letter immediately adjacent or diagonal on a standard QWERTY keyboard; changing the “c” to a “v,” the first “e” to an “s,” and “o” to a “p,” respectively. Changing a single letter of a mark in a domain name does not adequately distinguish the domain name from the mark, especially where the original letter and the one replacing it are adjacent on a standard QWERTY keyboard. See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). Finally, <teroweprice.com> differs from the T. ROWE PRICE mark through the addition of the letter “e” to create a phonetically identical domain name. Addition of a single letter to a mark to form a domain name, especially when the result is phonetically identical, does not distinguish the domain name from the mark under Policy ¶4(a)(i). See Citadel LLC and its related entity, KCG IP Holdings LLC v. JOEL LESPINASSE, FA 1593973 (Forum Jan. 8, 2015) (finding, “The added letters ‘l’ and ‘e’ in the disputed domain names have no distinguishing value especially given the phonetic similarity to Complainant’s CITADEL mark.”). All of the disputed domain names are confusingly similar to Complainant’s T. ROWE PRICE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims Respondent has no rights or legitimate interests in the disputed domain names because it is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the T. ROWE PRICE mark in any manner. When there is no response in a Proceeding, WHOIS information and common sense can support a finding the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information for <roweprice.com>, <trowepice.com>, <troweprive.com>, <trowsprice.com>, and <teroweprice.com> presently lists Respondent as “Venkateshwara Distributor Private Limited;” and <tpricerowe.com> and <trpweprice.com> presently list “HEMANG INFRASRUCTURE PRIVATE LIMITED” as the registrant. Common sense reveals no obvious connection between Respondent’s names and the domain names. Respondent has not submitted any evidence to indicate it has been authorized to register a domain name using Complainant’s mark. Complainant denies such authorization. Therefore, this Panel concludes Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has not been commonly known by any of the disputed domain names under Policy ¶4(c)(ii).
Complainant claims Respondent’s lack of rights or legitimate interests in the disputed domain names is evidenced by its failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s <roweprice.com> resolves to an apparently legitimate website for a third-party—Fidelity Investments Retirement Planning— which offers competing goods and services. Using a domain name to divert Internet users to a website which offers competing services does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶4(c)(i) and 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Respondent’s <tpricerowe.com> and <trowepice.com> do not resolve to an active page because of a timeout error. Failure to make an active use of a domain name can be evidence of a Respondent’s lack of rights per Policy ¶¶4(c)(i) and 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Under the circumstances of this case, the Panel so finds.
Respondent’s <troweprive.com>, <trowsprice.com>, and <trpweprice.com> resolve to parked pages containing third-party sponsored advertising images with links to competing goods and services. Using a disputed domain to advertise and link to a complainant’s competitors does not confer rights or legitimate interests pursuant to Policy ¶¶4(c)(i) or 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use). The resolving sites for these three domain names also contain embedded Google Adsense advertising, and embedded links to <parkingcrew.net>, which is affiliated with malware and other malicious activity. Respondent’s <teroweprice.com> resolves to various websites containing malware and other harmful malicious content. Using a domain to host and/or distribute malware does not demonstrate a respondent’s rights or legitimate interests in the domain name under the Policy. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”).
Respondent registered the disputed domain names using a privacy service. The owner of record disclaims any right to control the domain name. The beneficial owner conceals its identity. This means Respondent did nothing to publicly associate itself with the domain names. This means Respondent cannot have acquired any rights simply by registering the domain names.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent demonstrated Policy ¶4(b)(i) bad faith registration and use by offering <roweprice.com> for sale at a grossly inflated price. Offering a domain for sale for an amount in excess of the original owner’s cost is evidence of Policy ¶4(b)(i) bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”). Listing <roweprice.com> for sale by auction through the Sedo online domain name auction service at a minimum starting price of USD $90 constitutes offering the domain name for sale for more than its cost basis (this Panel takes judicial notice most .com domain names can be registered for roughly $10.00/year). This adequately demonstrates Respondent registered and is using <roweprice.com> in bad faith under Policy ¶4(b)(i).
Complainant claims Respondent’s registration of the seven domain names with only typographical differences to the T. ROWE PRICE mark is evidence that such registration was part of a pattern of bad faith registration, and thus constitutes Policy ¶4(b)(ii) bad faith. This Panel would disagree. Policy 4(b)(ii) provides: “[Respondents has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” [emphasis added] Complainant owns the troweprice.com domain name, which means Complainant reflects its mark in a domain name.
Complainant claims Respondent registered and is using a number of the disputed domain names in bad faith under Policy 4(b)(iv) because the domains resolve to websites that offer or link to websites offering goods or services which directly compete with Complainant’s business. The <roweprice.com> resolves directly to a website of a direct competitor of Complainant (Fidelity Investments Retirement Planning). It also tries to download malware, both of which are evidence of Policy ¶4(b)(iv) bad faith. See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶4(b)(iv)) and See Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶4(a)(iii)). The <troweprive.com>, <trowsprice.com>, and <trpweprice.com> domains resolve to parked pages containing third-party sponsored advertising images including links to competing goods and services. The pages also contain embedded links to Google Adsense, evidence Respondent is gaining commercially from the parked pages. Respondent registered and uses the <roweprice.com>, <troweprive.com>, <trowsprice.com>, and <trpweprice.com> domains in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent’s bad faith is evidenced by several of the domains resolving to a website which attempts to distribute malware or viruses. Using a disputed domain to distribute malware is adequate evidence of Policy ¶4(a)(iii) bad faith. The <teroweprice.com> and <roweprice.com> domains resolve to various websites containing malware or similar malicious content. The <troweprive.com>, <trowsprice.com>, and <trpweprice.com> domains resolve to parked pages that contain embedded links to <parkingcrew.net>, a domain name affiliated with malware and other malicious activity. All of this constitutes bad faith registration and use of <teroweprice.com>, <roweprice.com>, <troweprive.com>, <trowsprice.com>, and <trpweprice.com> domain names pursuant to Policy ¶4(a)(iii).
Complainant claims Respondent registered and uses the <tpricerowe.com>, <trowepice.com>, <troweprive.com>, <trowsprice.com>, and <trpweprice.com> domains in bad faith. Failure to make active use of a disputed domain name is evidence of bad faith pursuant to Policy ¶4(a)(ii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). <tpricerowe.com> and <trowepice.com> do not resolve to an active page due to timeout error. <troweprive.com>, <trowsprice.com>, and <trpweprice.com> resolve to parked pages. The <tpricerowe.com>, <trowepice.com>, <troweprive.com>, <trowsprice.com>, and <trpweprice.com> domain names are being passively held, showing Policy ¶4(a)(iii) bad faith.
Complainant claims it is inconceivable Respondent could have registered the disputed domain names without actual knowledge of Complainant's rights in the mark in light of the fame and notoriety of Complainant's T. ROWE PRICE mark. This Panel would agree because of Respondent’s forwarding of the <roweprice.com> domain to a competitor (Fidelity Investments). Actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, Respondent registered all of the domain names using a WHOIS privacy service. In a commercial context, this raises the rebuttable presumption of bad faith registration and use. There is no bona fide reason to conceal the identity of an actor in the commercial marketplace. This Panel is willing to find bad faith on this ground alone, in light of the lack of a response from Respondent.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <roweprice.com>, <tpricerowe.com>, <trowepice.com>, <troweprive.com>, <trowsprice.com>, <trpweprice.com>, and <teroweprice.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 16, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page