TD AMERITRADE IP Company Inc. v. Robert DeHeart d/b/a Trump Worldwide
Claim Number: FA0704000964294
Complainant is TD AMERITRADE IP Company Inc. (“Complainant”), represented by Julia
Anne Matheson of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., 901 New York Avenue NW, Washington, DC 20001. Respondent is Robert DeHeart d/b/a Trump
Worldwide (“Respondent”), 63 East 11400 South Suite 221,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ameritradeuniversity.com>, registered with Primus Telco Pty Ltd.
The undersigned certifies that she has 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 as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 18, 2007; the National Arbitration Forum received a hard copy of the Complaint April 19, 2007.
On April 24, 2007, Primus Telco Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <ameritradeuniversity.com> domain name is registered with Primus Telco Pty Ltd and that Respondent is the current registrant of the name. Primus Telco Pty Ltd verified that Respondent is bound by the Primus Telco Pty Ltd registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 14, 2007, 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@ameritradeuniversity.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <ameritradeuniversity.com>, is confusingly similar to Complainant’s AMERITRADE mark.
2. Respondent has no rights to or legitimate interests in the <ameritradeuniversity.com> domain name.
3. Respondent registered and used the <ameritradeuniversity.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TD AMERITRADE IP
Company Inc., and its related companies provide securities brokerage services
and technology-based financial services to retail investors and institutional
clients. Complainant has used its
AMERITRADE mark and various marks incorporating the AMERITRADE mark since at
least 1981, and holds a trademark registration with the United States Patent
and Trademark Office (“USPTO”) for the AMERITRADE mark (Reg. No. 2,032,385
issued January 21, 1997). Complainant
also provides services to Internet users through websites located at the
<tdameritrade.com> and <ameritrade.com> domain names.
Respondent registered the <ameritradeuniversity.com>
domain name September 3, 2005.
Respondent’s disputed domain name resolves to a website that displays
hyperlinks to various third-party websites, including some in direct
competition with Complainant.
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 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 (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 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.
Complainant established with extrinsic evidence in this proceeding that it has rights in the AMERITRADE mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The disputed domain name that Respondent registered, <ameritradeuniversity.com>, is confusingly similar to Complainant’s AMERITRADE mark under Policy ¶ 4(a)(i) as it contains Complainant’s mark in its entirety with the addition of the common word “university” and the generic top-level domain (“gTLD”) “.com” to the end of the mark. Such additions fail to sufficiently distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleges that Respondent lacks such rights and legitimate interests in the disputed <ameritradeuniversity.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden of proof shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name and no other evidence in the record suggests that Respondent is commonly known by the <ameritradeuniversity.com> domain name. Moreover, Respondent is not authorized to use Complainant’s AMERITRADE mark. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent’s <ameritradeuniversity.com> domain name resolves to a website that displays hyperlinks to various third-party websites, some of which are in direct competition with Complainant. Such use is presumably for Respondent’s commercial benefit through the accrual of click-through fees. Accordingly, such use of Complainant’s mark is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent is operating the website
that resolves from the <ameritradeuniversity.com>
domain name for its own commercial benefit by displaying various hyperlinks on
the website, for which Respondent presumably receives click-through fees. Additionally, the Panel finds that the
disputed domain name is capable of creating a likelihood of confusion as to
Complainant’s affiliation with the disputed domain name and corresponding
website as the disputed domain name contains Complainant’s AMERITRADE mark in
its entirety. Accordingly, the Panel
finds evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that respondent engaged in bad faith registration
and use by using a domain name that was confusingly similar to complainant’s
mark to offer links to third-party websites that offered services similar to
those offered by complainant); see also
Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000) (finding bad faith where the respondent directed Internet users seeking
the complainant’s site to its own website for commercial gain).
The Panel further finds that Respondent’s use of the
disputed domain name to display third-party hyperlinks, some of which offer
services in direct competition with those offered by Complainant under its
AMERITRADE mark constitutes a disruption of Complainant’s business under Policy
¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12,
2000) (finding that the respondent has diverted business from the complainant
to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Complainant satisfied 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 <ameritradeuniversity.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 29, 2007.
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