WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
First Allied Securities, Inc. v. Belize Domain WHOIS Service Lt
Case No. D2007-1780
1. The Parties
The Complainant is First Allied Securities, Inc., Atlanta, Georgia, United States of America, represented by Law Offices of Eric S. Freibrun, Ltd., United States of America.
The Respondent is Belize Domain WHOIS Service Lt, City of Belmopan, Belize.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2007. On December 4, 2007, the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On December 4, 2007, Intercosmos Media Group, Inc. d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2007. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default.
The Center appointed Chiang Ling Li as the sole panelist in this matter on January 29, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant states that it is a New York corporation engaged in the business of the purchase and sale of securities and investment products and services.
The Complainant states that it is the owner of the domain name registered on April 9, 1998.
The Complainant states that it has continuously used its FIRST ALLIED and FIRST ALLIED SECURITIES marks (together as the “Trade Marks”) in commerce since 1994 for securities brokerage and related financial and investment services and products.
The Complainant’s parent entity, “Advanced Equities Financial Corporation”, filed a trade mark application for a variation of the FIRST ALLIED mark at the U.S Patent Office on November 6, 2007.
The Respondent registered the domain name on April 25, 2006 (the “Domain Name”).
The Complainant states that the Respondent is using the Domain Name for a website containing links to third parties in the financial field.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the Domain Name should no longer be registered with the Respondent but that it should be transferred to the Complainant.
The Complainant states that this should be done because, within the meaning of paragraph 4 of the Policy, the Domain Name is identical to the Complainant’s unregistered common law right namely, the service mark FIRST ALLIED SECURITIES; that the Respondent has no rights or legitimate interests in the Domain Name; and that the Domain Name has been registered and subsequently used in bad faith.
To support the first element, the Complainant relies on its unregistered common law trade mark FIRST ALLIED SECURITIES which it claims to have used continuously in commerce since 1994 for securities brokerage and related financial and investment services. The Complainant submits that it has around 500 financial consultants and 190 branches across the United States of America.
The Complainant states that during 2007 it would spend in excess of US$1,000,000 on advertising and promoting the Trade Marks. Furthermore, the 2007 revenue figures for its business under the Trade Marks would eclipse US$ 170,000,000.
To establish the second element, the Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent has not used or made any serious preparations to use the Domain Name for a bona fide offering of goods or services since the only use of the Domain Name has been the one of providing links to third party websites. Further, the Complainant indicates that the Respondent is not commonly known by the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. It contends that this is so because the only interpretation that can be reached based on the facts is that the Respondent registered the Domain Name with the intention of attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s FIRST ALLIED SECURITIES mark as to the source, affiliation, sponsorship and/or endorsement of the third party’s goods and services promoted on the Respondent’s website and that it has since used the Domain Name with the same intention.
In support of this contention, the Complainant asserts that the Respondent’s domain name points to a website that offers links with titles such as “Securities Broker” which leads to additional links for companies that offer the same services offered by the Complainant.
The Respondent has been the subject of numerous UDRP proceedings:
Ÿ Fat Face Holdings Ltd. v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2007-0626
Ÿ Above All Advertising Inc. v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2007-0775
Ÿ Enterprise Rent-A-Car Co. v. Whois Services c/o Belize Domain WHOIS Service, NAF Claim No. FA 992206
Ÿ C.R. Bard, Inc. and BCR, Inc. v. Belize Domain WHOIS Service Lt. a/k/a/ Whois Service, NAF Claim No. FA 979990
Ÿ Carnival Plc v. Belize Domain WHOIS Service Lt., NAF Claim No. FA 997973
Ÿ Genzyme Corp. v. Belize Domain WHOIS Service Lt., NAF Claim No. FA 1007978
Ÿ Kforce Inc. v. Belize Domain Whois Service Lt.,WIPO Case No. D2007-1317
The decisions in all the above cases were that the domain names at issue be transferred from the Respondent to the respective complainants.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy, that:
(i) the Domain Name is identical or confusingly similar to the trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate rights interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
It is to be noted that paragraph 4(a) of the Policy states that the Complainant must prove that each of the three elements is present. The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The mark FIRST ALLIED SECURITIES relied upon by the Complainant is a claimed common law mark, the provided evidence of which this Panel finds to be sufficient to establish a common law right. The Panel is therefore satisfied that the Complainant has established a sufficient trade mark right for the purpose of this UDRP claim.
In Above All Advertising Inc. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-0775, it was held that to successfully assert a common law right:
“The Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit the Complainant’s rights in common law trade mark.”
The Panel is satisfied that the Complainant has, on this basis, established sufficient common law rights in the trademark FIRST ALLIED SECURITIES, noting in addition its claimed use in the United States of America since 1994. The Complainant also registered its domain name on April 9, 1998. The Complainant has many branches across the United States of America. The Complainant apparently advertises extensively under the Trade Marks and the business generates high revenue figures.
The Panel finds that the domain name is identical to the Complainant’s mark FIRST ALLIED SECURITIES.
The Complainant has therefore established the first of the three elements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has failed to provide any evidence to demonstrate that it has rights or legitimate interests in the Domain Name. In such circumstances, the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy if it has made a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name (see Croatia Airlines d.d v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel has not been provided with evidence to show that the Respondent has used, or made demonstrable preparations to use, the disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent uses links on its website to other third party websites some of which are competitors of the Complainant, each of them securities broker/dealer firms offering services and products similar to the Complainant.
Furthermore, there is no indication that the Respondent has been commonly known by the Domain Name. There is no evidence that the Respondent is making legitimate, non-commercial or fair use of the Domain Name. The Respondent has not put forward proof to contradict the Complainant’s credible allegation that it may be obtaining “pay-per-click” remuneration.
The Panel concludes that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name registered by the Respondent is identical to the Complainant’s trademark. The Respondent’s website at “www.” is apparently being used to post a number of links to securities and investment services including those of third parties competing with the Complainant. The Panel finds such use is likely to divert Internet traffic intended for the Complainant to Respondent’s website and third party websites. In this case, the Panel finds that use of the Domain Name falls squarely within paragraph 4(b)(iv) of the Policy.
Further, the facts presented in the present case appear to be broadly consistent with those of previous UDRP disputes involving the Respondent and resulting a transfer determination.
The Panel is satisfied in the circumstances that the disputed domain name was registered and is being used in bad faith.
The Panel concludes that the requirements under paragraph 4(a)(iii) of the Policy have been met.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Chiang Ling Li
Sole Panelist
Date: February 12, 2008
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