T. Rowe Price Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2005001895736
Complainant is T. Rowe Price Group, Inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), United States. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <itroweprice.com>, <ytoweprice.com>, ,<trowqeprice.com>, <actroweprice.com>, <wwwtwroweprice.com>, ,<tyroweprice.com>, <troiweprice.com>, <troqweprice.com>, <trtoweprice.com> and <ftroweprice.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 known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2020; the Forum received payment on May 11, 2020.
On May 12, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <itroweprice.com>, <ytoweprice.com>, <trowqeprice.com>, <actroweprice.com>, <wwwtwroweprice.com>, <tyroweprice.com>, <troiweprice.com>, <troqweprice.com>, <trtoweprice.com> and <ftroweprice.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2020 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@itroweprice.com, postmaster@ytoweprice.com, postmaster@trowqeprice.com, postmaster@actroweprice.com, postmaster@wwwtwroweprice.com, postmaster@tyroweprice.com, postmaster@troiweprice.com, postmaster@troqweprice.com, postmaster@trtoweprice.com, postmaster@ftroweprice.com. Also on May 18, 2020, 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 June 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, T. Rowe Price Group, Inc., is in the business of investment management. Complainant has rights in the T. ROWE PRICE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,374,970, registered July 30, 2013). See Compl. Ex. C. Respondent’s <itroweprice.com>, <ytoweprice.com>, <trowqeprice.com>, <actroweprice.com>, <wwwtwroweprice.com>, <tyroweprice.com>, <troiweprice.com>, <troqweprice.com>, <trtoweprice.com>, and <ftroweprice.com> domain names are all essentially identical and confusingly similar to Complainant’s T. ROWE PRICE mark because they are comprised of minor additions and misspelling created by the insertion of random letters as well as the removal of spaces and punctuation, and the addition of the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or permitted to use Complainant’s T. ROWE PRICE mark. Additionally, Respondent has made no use of the disputed domain names other than to misdirect consumers, interfere with Complainant’s business, and generate revenue.
Respondent registered and uses the disputed domain names in bad faith. Respondent has engaged in a pattern of registering domain names reflecting established trademarks of others. Also, Respondent disrupts Complainant’s business and attracts users to its own webpage for commercial gain. Further, Respondent’s domain name registrations constitute typosquatting. Finally, Respondent’s use of the well-known T. ROWE PRICE mark evidences bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is in the business of investment management.
2. Complainant has established its trademark rights in the T. ROWE PRICE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,374,970, registered July 30, 2013).
3. Respondent registered the <tyroweprice.com> domain name on April 15, 2019, the <trtoweprice.com> domain name on May 15, 2019, the <troiweprice.com> domain name on June 3, 2019, the <troqweprice.com> domain name on October 4, 2019, the <itroweprice.com> domain name on February 7, 2020, the <ytoweprice.com> domain name on March 6, 2020, the <trowqeprice.com> domain name on March 13, 2020, the <ftroweprice.com> domain name on March 16, 2020, the <actroweprice.com> domain name on March 20, 2020, and the <wwwtwroweprice.com> domain name on March 27, 2020.
4. Respondent has made no use of the disputed domain names other than to misdirect consumers, interfere with Complainant’s business, and generate revenue.
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:
(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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first issue to arise is whether the Complainant has a trademark or service mark on which it may rely. Complainant submits that it has rights in the T. ROWE PRICE mark based upon the registration of the mark with the USPTO. (e.g., Reg. No. 4,374,970, registered July 30, 2013). See Compl. Ex. C. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of its registration of the T. ROWE PRICE mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next issue is whether the disputed domain name is identical or confusingly similar to the T. ROWE PRICE mark. Complainant argues that Respondent’s disputed domain names are all essentially identical and confusingly similar to Complainant’s T. ROWE PRICE mark because they are comprised of minor additions and misspelling created by the insertion of random letters, the removal of spaces and punctuation, and the addition of the “.com” gTLD. Misspelling by addition, subtraction, or transposition of letters is generally insufficient to negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). Additionally, the removal of spaces and punctuation from a mark and the addition of a gTLD are irrelevant in determining confusing similarity. See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”). Thus, the Panel agrees with Complainant that the disputed domain names are confusingly similar to Complainant’s T. ROWE PRICE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s T. ROWE PRICE mark and to use it in its domain names making only minor additions and misspelling created by the insertion of random letters and the removal of spaces;
(b) Respondent registered the <tyroweprice.com> domain name on April 15, 2019, the <trtoweprice.com> domain name on May 15, 2019, the <troiweprice.com> domain name on June 3, 2019, the <troqweprice.com> domain name on October 4, 2019, the <itroweprice.com> domain name on February 7, 2020, the <ytoweprice.com> domain name on March 6, 2020, the <trowqeprice.com> domain name on March 13, 2020, the <ftroweprice.com> domain name on March 16, 2020, the <actroweprice.com> domain name on March 20, 2020, and the <wwwtwroweprice.com> domain name on March 27, 2020;
(c) Respondent has made no use of the disputed domain names other than to misdirect consumers, interfere with Complainant’s business, and generate revenue;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not licensed or otherwise permitted to use Complainant’s T. ROWE PRICE mark. Lack of authorization to use a mark constitutes a showing that a respondent lacks rights in a mark under Policy ¶ 4(a)(ii). 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 claims that Respondent has no business relationship whatsoever with Respondent. The Panel also notes that the WHOIS information of record lists the registrant of the disputed domain names as “Carolina Rodrigues / Fundacion Comercio Electronico.” See Compl. Ex. G. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(a)(ii);
(f) Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain names because Respondent has made no use of the disputed domain names other than to misdirect consumers, interfere with Complainant’s business, and generate revenue. Use of a disputed domain name to divert internet traffic away from a complainant’s webpage is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use). Complainant claims that the resolving webpages at the disputed domain names host commercial hyperlinks. Thus, the Panel finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
Secondly, Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent disrupts Complainant’s business and attracts users to its own webpage for commercial gain. Use of a disputed domain name to display competing hyperlinks may act as evidence of bad faith disruption of business under Policy ¶ 4(b)(iii) and attraction for commercial gain under Policy ¶ 4(b)(iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Complainant claims that Respondent uses the confusingly similar domain names to divert Internet users to Respondent’s webpage where users are presented with links that can redirect to the home page of Complainant’s competitors. As the Panel agrees, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii) and/or (iv).
Thirdly, Complainant submits that Respondent’s acts of typosquatting evidence bad faith registration and use. Typosquatting may act as independent evidence of bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Complainant argues that Respondent’s misspelling of the T. ROWE PRICE mark for use in the disputed domain names constitutes typosquatting. As the Panel agrees, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain names using the T. ROWE PRICE mark and in view of the conduct that Respondent has
engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <itroweprice.com>, <ytoweprice.com>, <trowqeprice.com>, <actroweprice.com>, <wwwtwroweprice.com>,<tyroweprice.com>, <troiweprice.com>, <troqweprice.com>, <trtoweprice.com> and <ftroweprice.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 12, 2020
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