WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Massachusetts Financial Services Company v. SWI D, Incorporated
Case No. D2007-0841
1. The Parties
Complainant is Massachusetts Financial Services Company (“Complainant”), a corporation organized and existing under the laws of the State of Delaware, with a principal place of business located in Boston, Massachusetts, United States of America.
Respondent is SWI D, Incorporated (“Respondent”), a corporation located in Fort Lauderdale, Florida, United States of America.
2. The Domain Name and Registrar
The domain name at issue is (the “Domain Name”). The registrar is eNom, located in Bellevue, Washington, United States of America.
3. Procedural History
On June 8, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On June 12 and 15, 2007, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. Complainant paid the required fee. On June 18, 2007, the Center received an Amendment to the Complaint from Complainant.
On June 13, 2007, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in Respondent’s name.
The Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On June 20, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under Paragraph 2(a) of the Rules.
On July 12, 2007, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On August 14, 2007, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.
4. Factual Background
In 1924, Complainant Massachusetts Financial Services Company established the first mutual fund in the United States of America. With that invention, Complainant helped make the United States stock market, previously the exclusive domain of the wealthy, accessible to the average investor. Complainant offers a complete selection of financial products and services, including mutual funds, annuities, retirement plans, college savings plans, and insurance plans, to address investors’ varying needs over time – as well as the needs of the investment professionals with whom they work – to create investment opportunities both in the United States and abroad.
Complainant owns United States Registration No. 1,980,695, issued June 18, 1996, for the service mark MASSACHUSETTS FINANCIAL SERVICES (the “Mark”). Complainant uses the service mark extensively as its trade name and in association with its services and financial products. Complainant registered its domain name in 1994, utilizing the “mfs” acronym for its name and service mark and has registered a domain name utilizing the Mark on April 20, 2007.
Neither Respondent nor Respondent’s administrative contact, Mr. Tumbel, is or has ever been a representative, employee or agent of Complainant, nor are they licensed to use the Complainant’s Marks.
5. Parties’ Contentions
A. Complainant’s contentions
i. Complainant contends that it has a registration of the MASSACHUSETTS FINANCIAL SERVICES Mark, that its trademark registration is valid and subsisting, and that the registration serves as prima facie evidence of its ownership and the validity of the MASSACHUSETTS FINANCIAL SERVICES Mark. 15 U.S.C. � 1115.
ii. Complainant argues that the Domain Name is confusingly similar to the MASSACHUSETTS FINANCIAL SERVICES Mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the primary element or dominant portion of the MASSACHUSETTS FINANCIAL SERVICES Mark with the addition of required “.com” extension.
iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant further alleges that Respondent’s website states that it is a full service multimedia and advertisement company that specializes in regional and national marketing strategies by placing high profile keywords and content with major search engines and online directories. Respondent’s website further states that it provides content for any potential user searching for a financial firm. Complainant contends that Respondent provides no financial services of its own at its website, nor does Respondent appear to have any connection with Massachusetts. Complainant alleges that Respondent adopted the disputed Domain Name only to divert traffic from Complainant’s business to Respondent’s own business. There is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed Domain Name. Respondent chose an available Domain Name that copies a term confusingly similar to Complainant’s registered MASSACHUSETTS FINANCIAL SERVICES Mark and one that would draw customers and potential customers to Respondent because of the confusion. Complainant further contends that Respondent registered the disputed Domain Name explicitly for the purpose of (i) making illegitimate use of Complainant’s Mark or (ii) diverting traffic to Respondent’s own business website. Therefore, Respondent’s use of the Domain Name cannot be bona fide or legitimate.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known as Massachusetts Financial Services or as Massachusetts Financial. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the MASSACHUSETTS FINANCIAL SERVICES Mark, in whole or in part in a domain name or in any other manner.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the service mark at issue.
iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).
Complainant contends that Respondent has intentionally attempted to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s MASSACHUSETTS FINANCIAL SERVICES Mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Complainant alleges that Respondent has violated Paragraph 4(b)(iv).
B. Respondent’s contentions
i.-iv. Respondent has chosen not to respond to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Because both Complainant and Respondent are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772.
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Limited and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has a registration of the MASSACHUSETTS FINANCIAL SERVICES Mark, that its trademark registration is valid and subsisting, and that the registration serves as prima facie evidence of Complainant’s ownership and the validity of the MASSACHUSETTS FINANCIAL SERVICES Mark. 15 U.S.C. � 1115.
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. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has chosen not to contest Complainant’s contentions regarding the MASSACHUSETTS FINANCIAL SERVICES Mark.
Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the MASSACHUSETTS FINANCIAL SERVICES Mark.
Identity or Confusing Similarity
Complainant further contends that the Domain Name is identical with and confusingly similar to the MASSACHUSETTS FINANCIAL SERVICES Mark pursuant to the Policy Paragraph 4(a)(i).
Complainant argues that the Domain Name is confusingly similar to the MASSACHUSETTS FINANCIAL SERVICES Mark, because it wholly incorporates the primary element or dominant portion of the Mark with the addition of required “.com” extension.
Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the MASSACHUSETTS FINANCIAL SERVICES Mark.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and are legally identical). The addition of other non-distinctive terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to complainant’s registered trademark.
The Panel notes that the entirety of the primary element or dominant portion of the MASSACHUSETTS FINANCIAL SERVICES Mark is included in the Domain Name.
Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition � 23:50 (4th ed. 1998). The addition of the phrase “.com” is non-distinctive because it is a gTLD required for registration of a domain name.
Therefore, the Panel finds that the Domain Name is confusingly similar to the MASSACHUSETTS FINANCIAL SERVICES Mark pursuant to the Policy Paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Complainant contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. In essence, Complainant alleges Respondent chose an available Domain Name that copies a term confusingly similar to Complainant’s registered MASSACHUSETTS FINANCIAL SERVICES Mark and one that would draw customers and potential customers to Respondent because of the confusion. Complainant further contends that Respondent registered the disputed Domain Name explicitly for the purpose of (i) making illegitimate use of Complainant’s Mark or (ii) diverting traffic to Respondent’s own business website. Therefore, Respondent’s use of the Domain Name cannot be bona fide or legitimate.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not known as Massachusetts Financial Services or Massachusetts Financial. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the MASSACHUSETTS FINANCIAL SERVICES Mark, in whole or in part in a domain name or in any other manner.
Complainant has alleged Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the service mark at issue.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Complainant has sustained its burden of proving that Respondent lacks rights to or legitimate interests in the Domain Name. Respondent has chosen not to respond to Complainant’s allegations. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy Paragraph 4(a)(ii).
Bad Faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy Paragraph 4(a)(iii).
Complainant contends that Respondent has intentionally attempted to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s MASSACHUSETTS FINANCIAL SERVICES Mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Complainant alleges that Respondent has violated Paragraph 4(b)(iv).
Complainant has sustained its allegations that Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion. The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy Paragraph 4(b)(iv).
Therefore, the Panel finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy Paragraph 4(a)(iii).
7. Decision
The Panel concludes (a) that the Domain Name is confusingly similar to Complainant’s registered MASSACHUSETTS FINANCIAL SERVICES Mark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: August 28, 2007
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