Charles Schwab & Co., Inc. v. Peter Smith
Claim Number: FA1708001743133
Complainant is Charles Schwab & Co., Inc. (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, California, USA. Respondent is Peter Smith (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwschwab.co> and <schwhab.com>, registered with Godaddy.Com, Llc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically August 4, 2017; the Forum received payment August 4, 2017.
On August 7, 2017, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <wwwschwab.co> and <schwhab.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@wwwschwab.co, postmaster@schwhab.com. Also on August 7, 2017, 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 August 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 names be transferred from Respondent to Complainant.
Complainant’s Allegations in this Proceeding:
Complainant is one of the leading financial services firms in the country. Complainant or its affiliates manage some $2.38 trillion in client assets and services, 9.3 million brokerage accounts, 1.4 million corporate retirement plan participants, nearly 1 million banking accounts, and serves more than 7,000 independent registered investment advisors. Complainant registered the SCHWAB mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,706,554, registered Apr. 15, 2003). See Compl., at Attached Ex. D. Respondent’s <wwwschwab.co> and <schwhab.com> domain names are identical or confusingly similar to Complainant’s mark as they intentionally misspell Complainant’s SCHWAB mark by either adding a character or adding the letters “www,” along with the generic top-level domain “.co” or “.com.”
Respondent has no rights or legitimate interests in the <wwwschwab.co> and <schwhab.com> domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or make legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to solicit business for a third site, and to help it gain contact and other personal information from users who believe that the website may be related to Complainant. See Compl., at Attached Ex. E (screenshots of resolving webpage).
Respondent registered and uses the <wwwschwab.co> and <schwhab.com> domain names in bad faith. Respondent disrupts Complainant’s business by directing financial services customers to a third-party financial services website to capitalize on Complainant’s business goodwill. See Compl., at Attached Ex. E. Additionally, the disputed domain names have been used to intentionally attract, for its own commercial gain, Internet users to the Markets World website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website or of a product or service thereon. Finally, Respondent must have had at least constructive knowledge of Complainant’s rights in the SCHWAB mark because of its registration with the USPTO. See Compl., at Attached Ex. D.
Respondent’s Contentions in Response:
The Panel notes that Respondent registered the <wwwschwab.co> and <schwhab.com> domain names March 25, 2017 and September 11, 2016, respectively. Respondent did not file a submission in this Arbitration and is in default.
Complainant established that it has rights and legitimate interests in the mark contained in its entirety in misspelled form in the two disputed domain names.
Respondent has no such rights or legitimate interests.
Respondent registered and used the disputed domain names in bad faith.
The disputed domain names are confusingly similar to Complainant’s protected mark.
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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar:
Complainant registered the SCHWAB mark with the USPTO (e.g. Reg. No. 2,706,554, registered Apr. 15, 2003). See Compl., at Attached Ex. D. Registration of a mark with the USPTO sufficiently shows a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). This Panel finds that Complainant established rights in the SCHWAB mark.
Complainant next urges that Respondent’s <wwwschwab.co> and <schwhab.com> domain names are identical or confusingly similar to Complainant’s mark as they intentionally misspell Complainant’s SCHWAB mark by either adding a character or adding the letters “www,” along with the generic top-level domain “.co” or “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016) (concluding that the addition of “www” takes advantage of a common typing error, and does not distinguish the domain name from the mark or overcome a finding of confusingly similar); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This Panel finds that the <wwwschwab.co> and <schwhab.com> domain names are confusingly similar to the SCHWAB mark under Policy ¶4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered two disputed domain names that contained misspelled versions of Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 contends that Respondent has no rights or legitimate interests in the <wwwschwab.co> and <schwhab.com> domain names. Where Respondent does not file a Response, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Peter Smith” as the registrant of the disputed domain names. See Compl., at Attached Ex. B. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the SCHWAB mark. Panels may rely on this evidence to support findings that Respondent has no rights or legitimate interests in the disputed domain names and the mark within them. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <wwwschwab.co> and <schwhab.com> domain names under a Policy ¶ 4(c)(ii) analysis.
Complainant argues that Respondent uses the disputed domain name to solicit business for a competing third-party site creating a suggestion that the website is related to Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant is not a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor . . . a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage for the disputed domain names, which contains the name “Markets World” and the message “Start Trading Binary Options.” See Compl., at Attached Ex. E (screenshots of resolving webpage). This Panel finds that Respondent attempts to compete with Complainant using Complainant’s own mark in misspelled form and is not offering bona fide goods or services under Policy ¶ 4(c)(i), and is not offering a legitimate noncommercial or fair use pursuant to a Policy ¶ 4(c)(iii) analysis.
Further, Complainant argues that Respondent engages in a phishing scheme to obtain personal contact information from users. Phishing schemes support findings that a Respondent failed to provide a bona fide offering of goods or services or make legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). The screenshot provided by Complainant shows that users can enter contact information and a password on the resolving webpage. See Compl., at Attached Ex. E. Accordingly, the Panel finds that Respondent phishes for personal information from Internet users, and is not providing bona fide goods or services under Policy ¶ 4(c)(i), or making legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims that Respondent registered and uses the disputed domain names in bad faith. Complainant alleges Respondent disrupts Complainant’s business by directing financial services customers to a third-party financial services website to capitalize on Complainant’s business goodwill. Disrupting a complainant’s business by capitalizing on the complainant’s goodwill and offering competing services supports findings of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). As mentioned previously, the screenshot of the resolving webpage provided by Complainant demonstrates Respondent’s competing use. See Compl., at Attached Ex. E. Accordingly, the Panel finds that Respondent disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Additionally, Respondent uses the disputed domain names to intentionally attract, for its own commercial gain, Internet users to the Markets World website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website or of a product or service thereon. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain supports findings of bad faith under Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). This Panel finds that Respondent attempted to commercially benefit from Complainant’s mark in bad faith under a Policy ¶ 4(b)(iv) analysis.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s SCHWAB mark. However, the Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge supports findings of bad faith registration and use 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). Complainant contends that Respondent must have had actual knowledge of the SCHWAB mark due to registration with the USPTO. See Compl., at Attached Ex. D. The Panel agrees that Respondent had actual knowledge of Complainant’s mark, because Respondent registered two domain names that each contained misspelled versions of SCHWAB and then used them in the same commercial area in which Complainant provides goods and services. Respondent encroached knowingly on the protected rights of another and attempted to compete with Complainant using a misspelled version of Complainant’s own protected mark. The Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii) with actual knowledge of Complainant’s rights in its mark.
Lastly, the Panel notes that the commentary addressing phishing in the foregoing section on rights or interests also applies to the findings of bad faith; it is bad faith use to opportunistically encroach on the rights of another and phish for personal information from unsuspecting Internet users seeking Complainant’s services and the Panel finds that such users would not willingly give such information but for the trust and goodwill associated with Complainant’s protected mark. It is appropriate to look at the totality of the circumstances when addressing the issue of a party’s bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <wwwschwab.co> and <schwhab.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 11, 2017
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