Legg Mason, Inc. v. Michele Dinoia a/k/a
SZK.com
Claim
Number: FA0501000397104
Complainant is Legg Mason, Inc. (“Complainant”),
represented by Cora Tung Han, of Wilmer Cutler Pickering Hale and Dorr LLP, 2445 M Street NW, Washington, DC 20037. Respondent is Michele Dinoia a/k/a SZK.com (“Respondent”), Via Trilussa
11, Pineto, TE 64025, ITALY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwleggmason.com>, registered with Onlinenic,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 10, 2005.
On
January 6, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <wwwleggmason.com> is registered with Onlinenic,
Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc.
has verified that Respondent is bound by the Onlinenic, 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
January 13, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 2, 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@wwwleggmason.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
February 6, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwleggmason.com>
domain name is confusingly similar to Complainant’s LEGGMASON.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwleggmason.com> domain name.
3. Respondent registered and used the <wwwleggmason.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Legg Mason, Inc., is a Maryland corporation that has provided financial services
products since 1992. Complainant has
operated a website at the <leggmason.com> domain name since 1995, where
it offers information about Complainant and its products, including press
releases, investor information and descriptions of its financial services
products.
Complainant has
registered the LEGGMASON.COM mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,556,498 issued April 2, 2002).
Respondent
registered the <wwwleggmason.com> domain name on December 9,
2003. Respondent’s domain name resolves
to a website featuring links to competing financial services providers.
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.
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
established rights in the LEGGMASON.COM mark through registration with the
USPTO and through continuous use of the mark in commerce since 1995. See
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 and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark.
Domain names
that contain third-party marks in their entirety and merely affix the prefix
“www” to the marks have consistently been found to be confusingly similar to
the marks under the Policy. In this
case, the disputed domain name contains Complainant’s LEGGMASON.COM mark in its
entirety, along with the prefix “www.” Consequently, the disputed domain name
is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See
Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002)
holding that the letters "www" are not distinct in the "Internet
world" and thus Respondent 's <wwwmarieclaire.com> domain name is
confusingly similar to Complainant's MARIE CLAIRE trademark; see also Dana Corporation v. $$$ This
Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19,
2002) (finding Respondent's <wwwdana.com> domain name confusingly similar
to Complainant's registered DANA mark because Complainant's mark remains the
dominant feature).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint. As
a result, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence; 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.”).
Complainant has
asserted that Respondent has no rights and legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <wwwleggmason.com> domain
name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name; see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent’s use
of the domain name to operate a website that features links to competing
financial services is not a use in connection with 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 Ameritrade Holdings
Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) finding
that Respondent’s use of the disputed domain name to redirect Internet users to
a financial services website, which competed with Complainant, was not a bona
fide offering of goods or services; see
also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum
Dec. 6, 2002) finding that Respondent had no rights or legitimate interests in
a domain name that used Complainant’s mark to redirect Internet users to a
competitor’s website.
Furthermore, the
fact that Respondent’s domain name is merely a typosquatted variation of
Complainant’s LEGGMASON.COM mark is evidence that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See
Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******,
FA 156839 (Nat. Arb. Forum June 23, 2003) holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis-à-vis
Complainant; see also Nat’l Ass’n
of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”).
Moreover, there
is nothing in the record to indicate that Respondent is commonly known by the <wwwleggmason.com>
domain name or is otherwise authorized to register domain names featuring
Complainant’s LEGGMASON.COM mark. Thus,
the Panel concludes that Respondent lacks rights and legitimate interests in
the domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interests where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name) 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".
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <wwwleggmason.com> domain name, which contains a
confusingly similar version of Complainant’s LEGGMASON.COM mark, to operate a website
featuring links to competing financial services providers. The Panel finds that such use constitutes
disruption and is evidence that Respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iii).
See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain name to
promote competing auction sites; see
also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business.
The Panel infers that Respondent receives click-through fees for
diverting Internet users to the competing financial services providers. The Panel also finds that because the domain
name contains a confusingly similar version of Complainant’s LEGGMASON.COM
mark, consumers accessing Respondent’s domain name may become confused as to
Complainant’s affiliation with the resulting website. Thus, Respondent’s opportunistic use of the domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15,
2000) finding bad faith where Respondent linked the domain name to another
website <iwin.com>, presumably receiving a portion of the advertising
revenue from the site by directing Internet traffic there, thus using a domain
name to attract Internet users for commercial gain; see also Identigene,
Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) finding bad faith
where Respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that Complainant is the source of or is sponsoring the
services offered at the site.
Furthermore, the
fact that Respondent’s <wwwleggmason.com> domain name is merely a
typosquatted variation of Complainant’s LEGGMASON.COM mark is evidence that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) finding
the <wwwdewalt.com> domain name was registered to “ensnare those
individuals who forget to type the period after the “www” portion of [a]
web-address,” evidence that the domain name was registered and used in bad
faith; see also Canadian Tire
Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (“The absence of a dot between the ‘www’ and
‘canadiantire.com’ [in the <wwwcanadiantire.com> domain name is] likely
to confuse Internet users, encourage them to access Respondent’s site” and
evidenced bad faith registration and use of the domain name).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwleggmason.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
February 21, 2005
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