WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Teachers Insurance and Annuity Association of America v. Luca Mueller Case No. D2010-0223 1. The Parties
The Complainant is Teachers Insurance and Annuity Association of America of New York, United States of America, represented by Sutherland Asbill & Brennan, LLP, United States of America.
The Respondent is Luca Mueller of Unterfoehring, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with About Domain Dotcom Solutions Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2010. On February 16, 2010, the Center transmitted by email to About Domain Dotcom Solutions Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On February 25, 2010, a reply was received from Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR which 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” or “UDRP”), 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 March 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on March 24, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 7, 2010. 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 factual background is summarised from the information provided in the Complaint.
The Complainant has for many years offered savings and retirement products directed particularly towards members of the academic and other professions. The significance of the number “529” in its “529 College Savings Plans” is a reference to a section of the United States Internal Revenue Code that is applicable to such higher education savings plans in making them tax-efficient.
The Complainant is the holder of the following trademark at the United States Patent and Trademark Office (“USPTO”):
Trademark: PATH2COLLEGE 529 PLAN SAVE FOR THE FUTURE. TODAY. (as words or with device).
Registration number 3636025, filed September 13, 2007, registered June 9, 2009.
The Complainant also uses the domain names (registered on July 3, 2007) and (registered on August 15, 2007).
Nothing of significance is known about the Respondent other than what is provided in the registration document for the disputed domain name, which appears to have been registered or acquired by the Respondent on December 16, 2007. 5. Parties' Contentions A. Complainant
The Complainant has submitted a copy of the USPTO registration document for the trademark PATH2COLLEGE 529 PLAN SAVE FOR THE FUTURE. TODAY, being a service mark on the Principal Register for financial services and a wide variety of related services.
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark, which is well known through the promotion of its “Path2College 529 Plan” and through the use of the Complainant's domain names based upon its trademark. The Complainant says that the component “.com” in the disputed domain name does not detract from there being confusing similarity with its trademark. Furthermore the graphic element of the Complainant's trademark need not be taken into consideration since it cannot be reproduced in a domain name.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not use, or undertake demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; is not commonly known by the disputed domain name; and is not making a legitimate noncommercial or fair use of it.
The Complainant says that the Respondent's website, to which the disputed domain name resolves, links ultimately to websites promoting and selling financial products and services related to higher education, in competition with the Complainant's services. The Respondent is presumably being compensated for referrals to these links on a per-click basis as a result of the fame and distinctiveness of the Complainant's trademark. This is not a legitimate or bona fide use of the disputed domain name.
Furthermore the Respondent cannot be commonly known by the disputed domain name because there is no connection between the Respondent's name and the disputed domain name. The Respondent cannot reasonably be operating or administering a “529” scheme, as described by the Complainant, because these are highly regulated by law.
The Complainant says that the Respondent is not making a noncommercial or fair use of the disputed domain name because it is used for the generation of revenue for the Respondent by click-through referral of Internet users to advertisers on the strength of the Complainant's trademark, which is neither noncommercial nor fair.
The Complainant further contends that the disputed domain name has been registered and used in bad faith. In particular, it has been registered and used intentionally to attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark. The Respondent is relying on the Complainant's trademark to attract Internet users to the Respondent's website, from which they are referred to other websites in return for economic benefit to the Respondent.
The Complainant contends that only five days after the Complainant's public launch of its “Path2College 529 Plan”, the Respondent registered the disputed domain name and thereafter offered links to competing services, and suggests that the Respondent's action was calculated rather than accidental and that the Respondent knew or ought to have known about the Complainant's trademark. The Complainant also submits that the Respondent owns about 32,000 domain names and has had at least one adverse finding against it in a previous UDRP decision.
The Complainant has referenced a number of previous UDRP decisions that it submits should be treated as precedent in the present dispute.
The Complainant requests the transfer to it of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Panel is satisfied on the basis of the documentary evidence submitted that the Complainant has rights in the trademark PATH2COLLEGE 529 PLAN SAVE FOR THE FUTURE. TODAY, registered at the USPTO.
The Complainant's trademark comprises essentially two component parts, namely PATH2COLLEGE 529 PLAN and SAVE FOR THE FUTURE. TODAY. The disputed domain name is found by the Panel to be identical to the distinctive leading component PATH2COLLEGE 529 PLAN of the Complainant's trademark, and to be confusingly similar to the entire trademark within the meaning of paragraph 4(a)(i) of the Policy. The gTLD identifier “.com” is of no significance in the determination of confusing similarity in a disputed domain name. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
On the evidence presented by the Complainant, the field in which the disputed domain name is established as a website by the Respondent is that of finance, savings, investment and related products or services. This is essentially the same field as the Complainant's business.
The Respondent is using a domain name that has been found to be confusingly similar to the Complainant's trademark, for the purpose of operating a peripheral business that derives revenue from advertising activities. In the absence of any explanation from the Respondent, the Panel cannot see any grounds upon which this could be a legitimate or bona fide activity in the terms of paragraph 4(c)(i) of the Policy. There is no evidence to suggest that the Respondent, Luca Mueller, or the Respondent's business could commonly be known by the Complainant's completely different trademark or any component of that trademark in the terms of paragraph 4(c)(ii) of the Policy. The Respondent's use of the disputed domain name, since it evidently derives revenue on the basis of the Complainant's trademark, is neither noncommercial nor fair within the meaning of paragraph 4(c)(iii) of the Policy. Thus the Panel can find no basis under paragraph 4(c) of the Policy or otherwise whereby the Respondent could establish any rights or legitimate interests in the disputed domain name, and the Respondent has not offered any explanation in rebuttal. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarilyfor the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarilyfor the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on your website or location.
The screenshot presented in evidence of the website to which the disputed domain name resolves, shows a picture of two people against a background of books. Screen boxes headed “Education”, “Saving For College” and “High School” contain underlined headings that the Complainant states are links, and which have the appearance of being so to the Panel. The Complainant says on the basis of its investigations that these include links to suppliers of financial services offered in competition with its own.
Links in the box headed “Saving For College” include “College Funding” and “Education Savings Account”, which appear to be for financial services. It may reasonably be concluded on balance that the Respondent has not provided this Internet referral service, founded upon the Complainant's trademark, for other than the commercial benefit of the Respondent by means of the well-known click-through or pay-per-click business model. The derivation of revenue by Internet advertising referrals can be legitimate and is widely employed. Taking into account all of the evidence, however, and also the evidence that the disputed domain name was registered a few days after the Complainant publicly launched its “Path2College 529 Plan”, the Panel finds on the balance of probabilities that the disputed domain name was registered and is used intentionally to attract Internet users by confusion with the Complainant's trademark for purposes of the Respondent's financial gain, within the meaning of paragraph 4(b)(iv) of the Policy. 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.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: April 21, 2010
Full & Egal Universal Law Academy