National Arbitration Forum

 

DECISION

 

INVESTools Inc v. KingWeb Inc. c/o DNS Admin

Claim Number: FA0511000598845

 

PARTIES

Complainant is INVESTools Inc. (“Complainant”), represented by Paul C. Van Slyke, of Locke Liddell & Sapp, LLP, 600 Travis Suite 3400, Houston, TX 77002.  Respondent is KingWeb Inc. c/o DNS Admin (“Respondent”), 624 Lakeshore Road E Suite #110, Toronto, ON L5G 1J4, Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <investtools.com>, registered with Moniker Online Services, Inc. The domain name was registered by Respondent on September 10, 1998.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

           

            Jeffrey M. Samuels, Chair

            David H. Bernstein, Panelist

            Anne M. Wallace, Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2005.

 

On November 17, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <investtools.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 November 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 12, 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@<investtools.com> by e-mail.

 

A timely Response was received and determined to be complete on December 12, 2005.

 

Complainant filed a timely “Additional Submission” on December 19, 2005.

 

On December 27, 2005, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, David H. Bernstein, and Anne M. Wallace as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Since 1995, Complainant INVESTools, Inc. has operated a series of investor training courses.  The curriculum teaches investors how to evaluate markets and make decisions about when, where, and how to invest.  See Affidavit of Dan Olson, vice president of marketing for INVESTools, Inc., attached as Exhibit 1 to Amended Complaint.

 

Complainant owns the following four (4) U.S. trademark registrations: 

 

Registration No. 2,028,670, which issued on January 7, 1997, for the mark INVESTOOLS, as used in connection with providing investment information by means of a global computer information network;

 

Registration No. 2,723,809, which issued on June 10, 2003, for the mark INVESTOOLS, as used in connection with educational services, namely seminars, workshops, and classes regarding searching, researching and analyzing stocks;

 

Registration No. 2,741,378, which issued on July 29, 2003, for the mark INVESTOOLS, as used on printed publications, namely books, workbooks, manuals, pamphlets, handouts, magazines and newsletters regarding searching, researching and analyzing stocks; and

 

Registration No. 2,723,810, which issued on June 10, 2003, for the mark INVESTOOLS,  as used on pre-recorded media, namely, audiotapes, videotapes, compact discs, and DVDs featuring information regarding searching, researching and analyzing stocks; and software for use in analyzing data and generating spreadsheets and other reports in the fields of searching, researching and analyzing stocks.

See Amended Complaint, Exhibits 4-7.

 

Complainant also owns the domain names <investools.com> and <investortoolbox.com>.

 

Complainant contends that the disputed domain name <investtools.com>, is confusingly similar to its registered mark INVESTOOLS.  Complainant notes that the only differences between the mark and the domain name are that the domain name contains an additional letter “t” and the top-level domain indicator “.com.”  According to Complainant, these differences, either alone or collectively, do not render the domain name “significantly different” from the mark INVESTOOLS.

 

Complainant further asserts that Respondent has neither rights nor legitimate interests with respect to the <investtools.com> domain name.  Complainant argues that Respondent currently uses the <investtools.com> domain name as a “parking service” that allows Complainant’s competitors to advertise their own websites for a fee. See Amended Complaint, Exhibit 10.  Complainant further urges that Respondent cannot establish that it is using the domain name in connection with a “bona fide” offering of goods or services, that it is commonly known by the domain name, or that it is making a legitimate noncommercial or fair use of the domain name.

 

With respect to the issue of “bad faith” registration and use, Complainant argues that such “bad faith” is demonstrated by Respondent’s failure to make any use of the domain name, other than as a parking service in order to redirect internet traffic to Complainant’s competitors.  According to Complainant, by using the <investtools.com> domain name, Respondent has and will intentionally attempt to attract, for commercial gain, internet users by creating a likelihood of confusion with Complainant’s INVESTOOLS mark as to the source, sponsorship, affiliation, or endorsement of the web site.  Complainant also contends that Respondent is guilty of “typosquatting” and that such action, itself, is evidence of the requisite bad faith.

 

B. Respondent

Respondent contends that the registered domain name is not confusingly similar to Complainant’s registered mark.  According to Respondent, in fact, it is the omission of the additional letter “t” in the registered mark INVESTOOLS that causes confusion.  Respondent urges that its addition of a “t” in the domain name <investtools.com> actually makes the domain name a set of two highly generic and descriptive terms, rather than an attempt to cause confusion by adding a “typo” to the domain.

 

Respondent further contends that it has been making fair use of the domain name to direct internet users to various forms of investment tool websites, using the generic words “invest” and “tools.”  Because of the inherent descriptiveness of the domain name, Respondent argues, its site attracts users who are interested in various investment tools, including those of Complainant. Respondent notes that it derives revenue from companies that pay to advertise on its site.

 

Respondent takes issue with Complainant’s contention that use of the disputed domain name causes traffic to be improperly diverted from Complainant’s website at <investools.com>. Respondent contends that it merely directs users to websites that offer investment tools, including those of the Complainant.  “Had the user been looking for the complainant, they would quickly see the link and follow through.  We are in no way preventing the user from reaching the complainant’s website, nor enticing the user to choose any link other than Complainant’s link.  We are simply providing a vast array of different websites that have offerings related to the terms `invest’ and `tools’, which is by all means a legitimate business offering.”

 

Finally, Respondent argues that the domain name was not registered and is not being used in bad faith.  In support of such assertions, Respondent contends that, at the time of registration, it had never heard of Complainant or of Complainant’s domain name <investools.com>.  It further maintains that the domain name was registered “simply as a good generic descriptive name with which to use to offer a broad range of `investment tools’.”  It also points out that it could have, but chose not to, register the domain name <investool.com>.  Furthermore, Respondent asserts, Complainant’s decision to wait over seven (7) years to file this proceeding “goes a long way in proving that they perceived no likelihood of confusion, or direct confusion over this period.”  It also points out that it does not sell goods that are in direct competition with Complainant’s goods and services.

 

C. Additional Submissions

In its “Additional Submission[1],” Complainant argues that Respondent cannot rely upon the listing of Complainant’s website as evidence of legitimate use since such listing has never been authorized by Complainant.  See Declaration of Dan Olson, attached as Exhibit 1 to Additional Submission.

 

Complainant’s “Additional Submission” also includes evidence indicating that, during 2003, Respondent maintained <investtools.com> as a commercial directory website containing a number of ads and links to gambling websites and some ads for adult pornography.  See Exhibit 3 to “Additional Submission.”  In addition, according to Complainant, the 2003 version of the <investtools.com> site provides a link that allows users to get information about purchasing the domain name and does not contain any links offering information about investment tools.

 

Complainant also maintains that if Respondent’s goal was to register a domain name that was inherently descriptive or generic with respect to its purported services, “<investmenttools.com>” would have been a more appropriate domain name.

 

FINDINGS

The Panel concludes that Complainant has met its burden of establishing that the domain name is identical or confusingly similar to a mark in which it has rights but that Complainant has not met its burden of establishing that Respondent lacks a legitimate interest in the domain name and that the domain name was registered in “bad faith.”  Thus, the Panel denies the request to transfer the domain name to Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

As Complainant notes, the only differences between the mark INVESTOOLS and the domain name <investtools.com> is that the domain name includes an additional letter “t” as well as the top-level domain indicator “.com.”  The Panel finds that such “differences” are too insubstantial to avoid a determination that the domain name is, at a minimum, confusingly similar to the INVESTOOLS mark.  See Target Brands, Inc. v domaen.com, et al. FA560157 (Nat. Arb. Forum Oct. 28, 2005) (domain names <ttarget.com> and <ttarget.info> held confusingly similar to TARGET mark); see also Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000) (<pomellato.com> found identical to POMELLATO mark because the generic top-level domain “.com” is not relevant).

 

The Panel further determines that, based on Complainant’s ownership of U.S. registrations for the mark INVESTOOLS, as well as its use of such mark, Complainant has established rights in the INVESTOOLS mark.

 

Rights or Legitimate Interests

 

The Panel concludes that Complainant has not met its burden of establishing that Respondent does not have rights or legitimate interests in the domain name.  In view of our finding on the issue of “bad faith” registration and use, we conclude that Respondent’s use of the disputed domain name for a website that direct users to links to investment-related sites is “in connection with a bona fide offering of goods or services,” within the meaning of paragraph 4(c)(i) of the Policy.

 

Registration and Use in Bad Faith

 

The applicable Policy requires evidence of bad faith registration and use.  The Panel concludes that evidence of bad faith registration is lacking in this case.  There is no evidence that Respondent actually knew of Complainant’s rights in the INVESTOOLS mark and intentionally registered the domain name to attract to its website, for commercial gain, Internet users who are searching for Complainant’s mark.  Indeed, Respondent certified that it had never heard of Complainant or of the INVESTOOLS mark at the time it registered the domain name.   If such was the case, then it cannot be held that Respondent’s registration of the domain name was in bad faith.  See Twinedent AB v. twinkles.com, FA 391308 (Nat. Arb. Forum Feb. 11, 2005) (absent evidence that respondent was aware of existence of complainant’s mark when respondent registered the domain name, “it is impossible for respondent to have registered the disputed domain in bad faith); see also Advanced Drivers Education Products and Training, Inc. v. MDNH, Inc., (Marchex), FA 567039 (Nat. Arb. Forum Nov. 10, 2005) (“[i]f [r]espondent never heard of [c]omplainant or its mark, then its registration of the Domain Name could not possibly have been part of a bad faith scheme to confuse Internet users into believing the [r]espondent’s site was… affiliated with complainant”).

 

This is not to suggest, however, that a respondent in an ICANN proceeding can always avoid a determination of “bad faith” registration merely by asserting that it had never heard of complainant or of its mark.  Where, for example, the complainant’s mark possesses a high degree of commercial strength, a panel may presume knowledge of such mark by a respondent, even where such respondent contends to the contrary.  This is not such a case, however.  There is no evidence in the record, for example, regarding Complainant’s advertising and promotional activities under the INVESTOOLS mark or the extent of such use.  While the affidavit of Complainant’s vice president for marketing indicates that 182,000 students have graduated from Complainant’s investor training courses since 1995, there is no evidence of how many individuals were exposed to the INVESTOOLS mark as of the time Respondent registered its domain name, i.e., September 10, 1998.

 

Complainant attempts to establish the requisite “bad faith” registration and use through reliance on the concept of constructive notice emanating from issuance to Complainant of four (4) U.S. trademark registrations.  Most panels, however, have declined to introduce the concept of constructive notice into the UDRP.  See Alberto-Culver Co. v.  Pritpal Singh Channa D2002-0757 (WIPO Oct. 7, 2002). As noted in the Advanced Drivers Education case, application of the concept of constructive notice “would be inconsistent with both the letter and spirit of the policy, which requires actual bad faith” and which “is designed to prohibit cases of abusive cybersquatting.”

 

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

Jeffrey M. Samuels, David H. Bernstein, Anne M. Wallace

                                                                                                                        Panelists

 

 

Dated: January 9, 2006

 

 

 

 

 

 

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