T. Rowe Price Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2102001931976
Complainant is T. Rowe Price Group, Inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2021; the Forum received payment on February 12, 2021.
On February 15, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.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 February 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2021 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@troweprife.com, postmaster@tsroweprice.com, postmaster@trowpriceonline.com. Also on February 16, 2021, 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 March 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, T. Rowe Price Group, Inc., is one of the world’s largest providers of investment management services and offers an array of mutual funds, subadvisory services, and separate account management for individual and institutional investors, retirement plans, and financial intermediaries. Complainant has rights in the T. ROWE PRICE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,785,262, registered Nov. 25, 2003).
2. The domain names, <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com>,[i] are confusingly similar to Complainant’s T. ROWE PRICE mark because they simply remove any punctuation and spacing, add additional letters or terms to create misspellings of the mark, and add the “.com” generic top-level domain (“gTLD”).
3. Respondent does not have any rights or legitimate interests in the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com>, domain names because Complainant has not licensed or permitted Respondent to use the T. ROWE PRICE mark. Respondent also does not have any rights or legitimate interests in the domain names because Respondent uses the domain names to misdirect consumers, interfere with Complainant’s business, and generate revenue.
4. Respondent uses the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names in bad faith. Respondent engages in a pattern of bad faith registration and use.
5. Respondent also disrupts Complainant’s business and attracts users for commercial gain by offering pay-per-click hyperlinks to competing and unrelated third-party websites on the resolving webpages for the domain names.
6. Additionally, Respondent engages in typosquatting.
7. Respondent’s bad faith is also evidenced by the use of a privacy service to hide its identity.
8. Respondent’s use of the domain names constitutes opportunistic bad faith as the T. ROWE PRICE mark is well-known.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the T. ROWE PRICE mark. Respondent’s domain names are confusingly similar to Complainant’s T. ROWE PRICE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names and that Respondent registered and uses the domain names 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:
(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”).
Complainant has rights in the T. ROWE PRICE mark through its registration of the mark with the USPTO, as well as other international trademark agencies (e.g., Reg. No. 2,785,262 registered Nov. 25, 2003). Registration of a mark with the USPTO is sufficient to show that a complainant has rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence that it has, in fact, registered its T. ROWE PRICE mark with the USPTO and thus the Panel holds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names are identical or confusingly similar to Complainant’s T. ROWE PRICE mark because they simply remove any punctuation and spacing, add additional letters or terms to create misspellings of the mark, and add the “.com” gTLD. The removal of punctuation or spacing and the addition of terms or letters, as well as a gTLD, to a complainant’s mark does not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Wiluna Holdings, LLC v. Zhichao Yang, FA 1780211 (Forum May 3, 2018) (“Additionally, each at-issue domain name contains a misspelling or misprint of Complainant’s CLIPS4SALE and CLIPS4SALE.COM trademarks where an extra letter is added to the marks in forming the domain name.”); see additionally U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Other than the insertion of random letters, and the elimination of spaces, the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names are essentially identical to the T. ROWE PRICE mark. Therefore, the Panel holds that these domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have any rights or legitimate interests in the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names because Complainant has not licensed or permitted Respondent to use Complainant’s T. ROWE PRICE mark. A respondent may not have rights or legitimate interests in a domain name when the WHOIS information does not indicate that a respondent is commonly known by the domain name and where a complainant has not authorized a respondent to use its mark. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, The WHOIS information provided by Complainant lists the registrant of the disputed domain names as “Carolina Rodrigues / Fundacion Comercio Electronico” and nothing in the record indicates that Respondent is known by any of the domain names or that Complainant authorized Respondent to use the T. ROWE PRICE mark. Therefore, the Panel holds that Respondent has no rights or legitimate interests in the <troweprife.com>, <tsroweprice.com> and <trowpriceonline.com> domain names because Respondent is not commonly known by the these domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the domains to divert Internet users and disrupt Complainant’s business by hosting links unrelated Complainant’s business on the resolving webpages and redirecting consumers to fraudulent third-party sites. A respondent may be found to not make a bona fide offering of goods or services or a legitimate noncommercial fair use of a domain name under Policy ¶¶ 4(c)(i) and (iii) where the respondent uses a confusingly similar domain name that redirects users to a webpage with unrelated hyperlinks or to a website that disseminates malware. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
The record contains screenshots of each of the resolving websites for the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names. Each of the resolving websites features pay-per-click hyperlinks unrelated to Complainant’s business of managing investments, such as “Search Website”, “Google Search Website,” and “How to Get a Replacement Birth Certificate.” Several of the domain names also redirect users to a website that prompts them to download a browser extension. Complainant persuasively argues that this website likely engages in fraudulent activity. Therefore, the Panel holds that Respondent is not using the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names in bad faith because Respondent engages in a pattern of bad faith registration. A pattern of bad faith registration may be found where a respondent has a longstanding history of cybersquatting, under Policy ¶ 4(b)(ii). Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”). Complainant has provided evidence that Respondent is a known cybersquatter and provides evidence of previous UDRP proceedings in which Respondent had registered infringing domain names containing Complainant’s mark and bad faith was found. Thus, the Panel holds that Respondent has registered the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent registered and uses the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names in bad faith because Respondent disrupts Complainant’s business and attracts users for commercial gain by offering pay-per-click hyperlinks to competing and unrelated third-party websites. The use of a domain name incorporating the mark of another to divert Internet users and host competing and unrelated hyperlinks to third-party websites is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Complainant has provided evidence of the resolving webpages for the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names which feature various pay-per-click hyperlinks, some of which redirect users to a webpage that offers a likely fraudulent browser extension. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the T. ROWE PRICE mark at the time of registering the <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. The Panel agrees that Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has 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 <troweprife.com>, <tsroweprice.com>, and <trowpriceonline.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 25, 2021
[i] The date each domain name was registered is as follows: <trowpriceonline.com> was registered on May 4, 2020; <tsroweprice.com> was registered on May 11, 2020; and <troweprife.com> was registered on December 11, 2020.
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