American Century Proprietary Holdings, Inc. v. Spiral Matrix
Claim Number: FA0510000584708
Complainant is American Century Proprietary Holdings, Inc. (“Complainant”), represented by Mark A. Nieds, of Leydig, Voit & Mayer, Ltd., Two Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, KE 30100, KE.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <americancenturyinsurance.com> and <americancenturymutualfunds.com>, registered with Intercosmos Media Group, Inc. d/b/a DirectNIC.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 25, 2005.
On October 24, 2005, Intercosmos Media Group, Inc. d/b/a DirectNIC.com confirmed by e-mail to the National Arbitration Forum that the <americancenturyinsurance.com> and <americancenturymutualfunds.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a DirectNIC.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a DirectNIC.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a DirectNIC.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 25, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 14, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@americancenturyinsurance.com, and postmaster@americancenturymutualfunds.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 18, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americancenturyinsurance.com> and <americancenturymutualfunds.com> domain names are confusingly similar to Complainant’s AMERICAN CENTURY mark.
2. Respondent does not have any rights or legitimate interests in the <americancenturyinsurance.com> or <americancenturymutualfunds.com> domain names.
3. Respondent registered and used the <americancenturyinsurance.com> and <americancenturymutualfunds.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Century Proprietary Holdings, Inc., as assignee of American Century Services Corporation, provides a wide variety of financial services and investment options to individual investors, institutional investors, and investment professionals and employs approximately 2,000 people to serve its customers. Complainant currently has over 1.5 million individual and institutional customers. In 2004, Complainant spent more than $22 million dollars in advertising. Complainant first registered the AMERICAN CENTURY mark with the U.S. Patent and Trademark Office (“USPTO”) on July 29, 1997 (Reg. No. 2,084,652).
Respondent registered the <americancenturyinsurance.com> and <americancenturymutualfunds.com> domain names on July 24, 2005 and June 11, 2005, respectively. The websites associated with the domain names offer links to websites “offering links to a variety of financial services.”
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."
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.”).
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.
Complainant has provided evidence of its trademark
registration of the AMERICAN CENTURY mark with the USPTO. The Panel accepts this evidence as proof
that Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); Innomed Techs., Inc. v.
DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
The Panel finds that the <americancenturyinsurance.com>
and <americancenturymutualfunds.com> domain names are confusingly
similar to Complainant’s AMERICAN CENTURY mark. The only difference is the addition of the words “insurance” and
“mutual funds,” which do not significantly distinguish the domain name from the
mark and are descriptive of Complainant’s services. See Space Imaging LLC v. Brownell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where the respondent’s domain
name combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business); Marriott Int’l, Inc. v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the
respondent’s domain name <marriott-hotel.com> is confusingly similar to
the complainant’s MARRIOTT mark).
Complainant has established Policy ¶ 4(a)(i).
Respondent is not licensed to use Complainant’s mark. Respondent is appropriating Complainant’s
mark to provide, as Complainant states, “links to a variety of financial
services.” The Panel infers that these
linked financial services are not Complainant’s but, rather, competing
third-party services. The Panel finds
that appropriating Complainant’s mark to link to competitors is neither a bona
fide offering of a good or service pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
There is nothing in the record, including the WHOIS
registration information, which indicates that Respondent is 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 Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use).
Complainant has established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s mark to refer
Internet users seeking out Complainant to competitors’ websites. The Panel finds that Respondent has
registered the <americancenturyinsurance.com> and <americancenturymutualfunds.com>
domain names, which are confusingly similar to Complainant’s AMERICAN CENTURY
mark, to usurp Complainant’s goodwill; this is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Gen. Media
Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001)
(finding bad faith where a competitor of the complainant registered and used a
domain name confusingly similar to the complainant’s PENTHOUSE mark to host a
pornographic web site); Disney Enters., Inc. v.
Noel, FA 198805 (Nat. Arb. Forum Nov. 11,
2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Complainant has established 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 <americancenturyinsurance.com> and <americancenturymutualfunds.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 1, 2005
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