Thomson Reuters Global Resources Unlimited Company v. Domain Administrator / China Capital Investments Limited
Claim Number: FA1710001752415
Complainant is Thomson Reuters Global Resources Unlimited Company (“Complainant”), which is
represented by Alexandre A. Montagu, New York, USA. Respondent is Domain Administrator / China Capital Investments Limited (“Respondent”), of Hong Kong, China, which is represented by Roman Popov, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thomsonreuders.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2017; the Forum received payment on October 5, 2017.
On October 9, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thomsonreuders.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@thomsonreuders.com. Also on October 12, 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 November 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, doing business under the THOMSON REUTERS mark, is a global provider of information for businesses and professionals in the spheres of finance, law, taxation and accounting, science and the media.
Complainant holds a registration for the THOMSON REUTERS trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,105,789, registered February 28, 2012.
Respondent registered the domain name <thomsonreuders.com> on or about April 11, 2017.
The domain name is confusingly similar to Complainant’s THOMSON REUTERS mark.
Respondent has not been commonly known by the domain name.
Respondent is not affiliated with Complainant in any capacity.
Complainant has not licensed or otherwise authorized Respondent to use the THOMSON REUTERS mark in any way.
Respondent is not making either a bona fide offering of goods and services by means of the domain name or a legitimate non-commercial or fair use of it.
The domain name resolves to a website hosting click-through links to the websites of enterprises offering goods and services in competition with the business of Complainant.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has offered to sell the domain name to Complainant for an unspecified sum.
Respondent’s use of the domain name disrupts Complainant’s business.
The domain name is an instance of typo-squatting.
Respondent registered the domain name with knowledge of Complainant and its rights in the THOMSON REUTERS mark.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the THOMSON REUTERS trademark and service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Honeywell Int’l Inc. v. r9.net, FA 445594 (Forum May 23, 2005) (finding that a UDRP complainant’s registration of its mark with national trademark authorities was sufficient to establish its rights in that mark under the Policy ¶ 4(a)(i)).
This is so without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Hong Kong, China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <thomsonreuders.com> domain name is confusingly similar to Complainant’s THOMSON REUTERS trademark and service mark. The domain name incorporates the mark in its entirety, while misspelling the term “Reuters” yet retaining phonetic similarity, and by adding the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Forum July 15, 2004):
Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
See also Lucasfilm Entertainment Company Ltd. LLC v George Ring, FA 1673825 (Forum June 7, 2016) (finding that, although a respondent’s domain name <lukasfilm.com> incorporated the LUCASFILM mark of another and merely substituted a phonetically identical ‘k’ for the ‘c,’ it was nonetheless confusingly similar to that mark).
Further, see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <thomsonreuders.com> domain name, that Respondent is not affiliated with Complainant in any capacity, and that Complainant has not licensed or otherwise authorized Respondent to use the THOMSON REUTERS mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Administrator” of “China Capital Investments Limited.” On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006), finding that given the WHOIS contact information for a disputed domain name, a panel could infer that a UDRP respondent was not commonly known by that domain name in any derivation. To the same effect, see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum November 17, 2003).
We next observe that Complainant asserts, without objection from Respondent, that Complainant is not making either a bona fide offering of goods and services by means of the <thomsonreuders.com> domain name or a legitimate non-commercial or fair use of it, in that the domain name resolves to a website hosting click-through-links to websites offering goods and services in competition with the business of Complainant, and that Respondent profits from the operation of the resolving website through the receipt of click-through-fees. This employment of the domain name is indeed neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use of it under Policy ¶ 4(c)(iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 2015).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the challenged <thomsonreuders.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015):
The use of a domain name’s resolving website to host links to [the websites of commercial] competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s use of the <thomsonreuders.com> domain name, which we have found is confusingly similar to Complainant’s THOMSON REUTERS mark, is an attempt by Respondent to prosper illicitly from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy ¶ 4(b)(iv), this too demonstrates Respondent’s bad faith in registering and using the domain name. On the point, see Red Hat, Inc. v. Haecke, FA 726010 (Forum July 24, 2006).
It is likewise plain from the evidence that the <thomsonreuders.com> domain name is, as alleged, an instance of typo-squatting, which has been described in these terms:
Typo[-]squatting is a practice whereby a domain name registrant . . . deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.
See Webster Financial Corporation v. IS / ICS INC, FA 16070016833 (Forum August 11, 2016).
It should go without saying that:
Respondent’s typo[-]squatting is, in itself, evidence of bad faith [registration and use of a domain name] under Policy ¶ 4(a)(iii).
See Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA1405001562139 (Forum July 2, 2014).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <thomsonreuders.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 16, 2017
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