Ameritrade Holding Corporation v. Venta
and Leonard Bogucki
Claim
Number: FA0506000489322
Complainant, Ameritrade Holding Corporation (“Complainant”),
is represented by Julia Anne Matheson of Finnegan Henderson Farabow Garrett & Dunner LLP, 901 New York Avenue NW, Washington,
DC, 20001, USA. Respondent is Venta and Leonard Bogucki
(“Respondent”), al. Focha 1, Krakow, Poland 30-111, US.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwameritrade.com>, registered with eNom,
Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
31, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 8, 2005.
On
June 2, 2005, eNom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <wwwameritrade.com> is registered with eNom,
Inc. and that Respondent is the current registrant of the name. Furthermore, eNom, Inc. has verified that
Respondent is bound by the eNom, 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
June 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 5,
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@wwwameritrade.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
July 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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 <wwwameritrade.com>
domain name is confusingly similar to Complainant’s AMERITRADE mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwameritrade.com> domain name.
3. Respondent registered and used the <wwwameritrade.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since
1975, Complainant, Ameritrade Holding Corporation, has provided securities
brokerage services and technology-based financial services to retail investors
and institutional clients. During the
fiscal year 2004, Complainant averaged approximately 168,000 trades per day and
had approximately 2,600,000 client accounts.
Complainant offers its services electronically via its website, located
at the <ameritrade.com> domain name, via touch-tone telephone, fax, and
through affiliated brokers. Complainant
has owned the <ameritrade.com> domain name since October 1995 and has
used it to identify Complainant’s website since that date. Complainant’s website allows customers to
customize the website to fit their needs, offers extensive information on
investments, and provides financial planning calculators. Having received numerous industry awards for
its technology and services, Complainant has become the largest online
brokerage firm.
Complainant
holds numerous registrations for the AMERITRADE mark with the United States
Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 2,032,385 issued
May 28, 1996; Reg. No 2,411,005 issued Dec. 5, 2000; Reg. No. 2,701,664 issued
Apr. 1, 2003; Reg. No. 2,634,398 issued Oct. 15, 2002).
On July 2, 2001,
Respondent registered the <wwwameritrade.com> domain name. Respondent uses the domain name for a
pay-per-click website, advertising sponsored links to Complainant’s competitors
for stock quotes, stock research, and finance information.
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. 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 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.
Because
Complainant holds several registrations with the USPTO for the AMERITRADE mark,
Complainant has presented a prima facie case of rights in the mark. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's
federal trademark registrations establish Complainant's rights in the BLIZZARD
mark.”); see also Innomed Techs., Inc. v.
DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the
NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”) Respondent’s failure to submit a response leaves the Panel
without evidence to dispute Complainant’s presumption of rights. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.”). Thus, the Panel holds that Complainant has established rights for
purposes of Policy ¶ 4(a)(i).
Respondent’s
<wwwameritrade.com> domain name is confusingly similar to
Complainant’s AMERITRADE mark, as the domain name incorporates Complainant’s
mark and adds a “www” prefix.
Respondent does not distinguish the mark by adding the “www” prefix
because the letters are not a distinct part of a website address. Rather, Respondent takes advantage of a
typographical error frequently made by computer users. 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 the respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to the
complainant's MARIE CLAIRE trademark); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that the respondent’s domain name <wwwbankofamerica.com>
is confusingly similar to the complainant’s registered trademark BANK OF
AMERICA because it “takes advantage of a typing error (eliminating the period
between the www and the domain name) that users commonly make when searching on
the Internet”).
Moreover,
Respondent’s addition of the gTLD “.com” to AMERITRADE’s mark is not a
distinguishing difference because computer users often assume that typing a company’s
name or trademark followed by a “.com” would resolve to that company’s
website. See Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users
searching for a company’s Web site often assume, as a rule of thumb, that the
domain name of a particular company will be the company name or trademark
followed by ‘.com.’”). Because the
addition of a gTLD is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis,
the Panel finds that Respondent’s registered domain name is confusingly similar
to the AMERITRADE mark. See
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept.
27, 2002) (finding it is a “well established principle that generic top-level
domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); 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.”).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i).
By arguing that
Respondent does not have rights or legitimate interests in the <wwwameritrade.com>
domain name, Complainant establishes a prima facie case and shifts the
burden to the Respondent. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that
where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”). Respondent’s failure to
submit a response leaves Complainant’s assertion uncontested, leading the Panel
to conclude that Respondent lacks rights and legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”).
Respondent’s
failure to respond is sufficient to satisfy Policy ¶ 4(a)(ii). However, the Panel will continue with an
analysis of Respondent’s rights under Policy ¶ (4)(a)(ii), including the
elements of Policy ¶ 4(c).
Respondent is
using the confusingly similar <wwwameritrade.com> domain name to
operate a website that features links to competing financial services
websites. Such diversionary and
competing use does 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 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); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat.
Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly
similar domain name to operate a pay-per-click search engine, in competition
with the complainant, was not a bona fide offering of goods or services); see
also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering of goods
or services nor a legitimate noncommercial or fair use because the respondent
used the names to divert Internet users to a website that offered services that
competed with those offered by the complainant under its marks).
Additionally,
Respondent has not provided any evidence to demonstrate that Respondent is
commonly known by the <wwwameritrade.com> domain name. Without evidence to indicate that Respondent
is commonly known by the disputed domain name, the Panel finds that Respondent
has not established rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See 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”); see
also 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).
Moreover, the
fact that the <wwwameritrade.com> domain name is a typosquatted
variation of Complainant’s AMERITRADE mark provides further evidence that
Respondent lacks rights and legitimate interests in the disputed 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 the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
the complainant’s DINERS CLUB mark, was evidence in and of itself that the
respondent lacks rights or legitimate interests in the disputed domain name vis
á vis the complainant); see also Nat’l Ass’n of Prof’l Baseball Leagues,
Inc. 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.”).
Accordingly,
the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
registered and is using the disputed domain name to operate a website that
features links to financial services websites that are in competition with
Complainant. The Panel holds that such
use constitutes disruption and is evidence that Respondent registered and is
using the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (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).
Additionally, Respondent’s <wwwameritrade.com> domain name
resolves to a website featuring services similar to those offered by
Complainant. The Panel infers that
Respondent receives click-through fees for diverting Internet users to
competing financial services websites.
Because of the domain name’s confusing similarity to Complainant’s
AMERITRADE mark, consumers accessing Respondent’s domain name are likely to
become confused and believe that Complainant is the source of the services
offered at the site. The Panel
concludes that Respondent’s commercial gain from the consumers’ confusion
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the 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 the complainant is the source of
or is sponsoring the services offered at the site); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent registered a domain name
confusingly similar to the complainant’s mark and the domain name was used to
host a commercial website that offered similar services offered by the
complainant under its mark).
Moreover,
Respondent registered the <wwwameritrade.com> domain name with actual
or constructive knowledge of Complainant’s rights in the AMERITRADE mark due to
Complainant’s registration of the mark with the USPTO. See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”). Because Respondent’s website provides links
for directly competing services, incorporates Complainant’s entire mark in its
domain name, and because of the fame of Complainant’s AMERITRADE mark, the
Panel concludes that Respondent’s registration of the disputed domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”); see
also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum
Feb. 25, 2003) (inferring that the respondent’s registration of the
<wwwremax.com> domain name, incorporating the complainant’s entire mark,
was done with actual notice of the complainant’s rights in the mark prior to
registering the infringing domain name, evidencing bad faith); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive
knowledge of the complainant’s EXXON mark given the worldwide prominence of the
mark and thus the respondent registered the domain name in bad faith).
Furthermore,
Respondent’s registration of the <wwwameritrade.com> domain name
as a typosquatted variation of Complainant’s AMERITRADE mark provides evidence
that Respondent desired to attract computer users who intended to reach
Complainant’s website by typing the string of characters “www.ameritrade.com”
but forgot the period after the “www” prefix.
Thus, the Panel concludes that Respondent registered and used the
disputed 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,” which was evidence that the domain name was registered and used
in bad faith); see also Nat’l Ass’n of Prof’l Baseball League, Inc.
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the
intentional misspelling of words with [the] intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”).
The Panel finds
that 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 <wwwameritrade.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: July 19, 2005
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