Complainant is TheS, Inc. of New York, New York, United States of America (“U.S.A.”), represented by Davis Wright Tremaine LLP, U.S.A.
Respondent is SoftQuest Corporation of Norwalk, Connecticut, U.S.A. 2. The Domain Names and Registrar
The disputed domain names, listed below, are each registered with TierraNet Inc.d/b/a DomainDiscover:
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on September 7, 2010. On September 8, 2010, the Center transmitted by email to TierraNet a request for registrar verification in connection with the disputed domain names. On September 10, 2010, TierraNet responded by email confirming that Respondent is listed as the registrant for each of the domain names and providing contact details and other information pertinent to the registrations.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 6, 2010.
The Center appointed Debra Stanek as the sole panelist in this matter on October 21, 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
Complainant alleges that it began using the ACTION ALERTS PLUS as a mark in connection with a stock information and advisory service in May 2001 and began using the domain name in January 2002.
In June 2003, Respondent registered the domain names and and early the following year registered , , and . It appears that Respondent previously used some of the domain names to advertise and promote a different service relating to stock trading information and advice and may have used others in connection with that service. Currently, the domain names do not resolve to active websites. 5. Parties’ Contentions A. Complainant 1. Identical or Confusingly Similar
Complainant is a well-known publisher of online financial publications, including the website at “www.thes”. In May 2001, Complainant began using the mark ACTION ALERTS PLUS for a subscription service that provides stock trading information and stock market updates. In January 2002, Complainant registered the domain name .
The Complaint alleges that the service has “hundreds of thousands of subscribers” and since 2001, Complainant has “spent millions” in advertising its services under the mark. The Complaint includes examples showing current use of the mark.
Each of the disputed domain names at issue is confusingly similar to Complainant’s mark and domain name. Four of the domain names either add or omit the letter “s” after “action” or “alert”, , , , and . The fifth, , additionally omits the term “plus.” These changes do “not render the [d]omain [n]ames … dissimilar” to Complainant’s mark or domain name. In fact, the disputed domain names are derived from misspellings of Complainant’s trademark. 2. Rights or Legitimate Interests
Respondent registered the domain names after Complainant began using its mark. Complainant asserts, on information and belief, that Respondent is not known by the domain names and Complainant has not authorized Respondent to use its mark.
Further, the company identified as Respondent’s “administrative contact” is owned by an individual, a Mr. S. Rifaey, who offers a similar stock trading information service to subscribers. Printouts from the Internet Archive Wayback Machine show that the domain names appear to have been used in connection with that service. Currently, the domain names to do not resolve to active sites. 3. Registered and Used in Bad Faith
The fact that each of the domain names is a trivial variation of Complainant’s ACTION ALERT PLUS mark suggests that Respondent was familiar with Complainant’s mark and service when it registered the domain names, which indicates bad faith.
It is clear that Respondent registered the domain names in an effort to divert for its own commercial gain visitors who were seeking Complainant’s “www.” website.
Respondent’s current “passive holding” of the domain names may constitute bad faith.
On June 17, 2010 Complainant wrote to Respondent, demanding that it transfer two of the domain names to Complainant. Respondent refused and in a telephone call demanded that Complainant sue or pay USD14,000 – representing “holding costs” for each of the registrations. In response, Complainant offered, by email and fax, to reimburse Respondent for a portion of its holding costs, however Respondent did not respond.
Respondent has engaged in a pattern of bad faith conduct by acquiring the domain names, using them for its commercial gain, and more recently, passively holding the domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to prevail, Complainant must prove, as to each of the disputed domain names1, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent’s failure to respond is that it has not made any argument or offered any evidence described in paragraph 4(c) of the Policy, such as using (or preparing to use) a domain name before the dispute, being known by a domain name, or making legitimate noncommercial or fair use of a domain name, that might support a finding that Respondent has rights or legitimate interests in any of the domain names, nor has Respondent provided any evidence on the issue of bad faith. 1. Identical or Confusingly Similar
Complainant does not allege that its mark is registered. Consistent with the consensus view, where a complainant is seeking to enforce rights in a mark that is not registered, the Panel looks for evidence regarding, inter alia, length of use and amount of sales, the nature and extent of its advertising, consumer surveys, or media recognition that would establish trademark rights in the mark. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7 (setting out the consensus view requiring a complainant asserting rights in unregistered trademark rights to provide that it is a “distinctive identifier” that is associated with complainant or its goods and services).
The evidence supplied by Complainant’s is minimal.. Complainant alleges that it has been using the ACTION ALERTS PLUS mark since May 2001, that it has acquired “hundreds of thousands of subscribers”, and that, since 2001, it has “spent millions” in advertising. However, these allegations are supported only by the certification of Complainant’s counsel. As a general matter, this Panel gives little or no weight to unsupported statements by a party’s representative as to factual matters that would not, in ordinary circumstances, be within the representative’s personal knowledge, and that are easily established by documentary evidence.
The Complaint does include printouts of its website and some other materials showing current use of ACTION ALERTS PLUS. The Panel finds that those materials do show use of ACTION ALERTS PLUS as a trademark since at least 2009. Therefore, Complainant has established rights in the mark.
A domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark. For purposes of this comparison, the Panel ignores lack of spaces between terms and the addition of the generic top-level domains, neither of which are relevant for these purposes.
Here, four of the domain names consist of minor variations of Complainant’s ACTION ALERTS PLUS mark, consisting of some combination of “action” or “actions” with “alert” or “alerts” all followed by “plus.” The Panel finds that the trivial variations between these domain names and Complainant’s mark do not effectively differentiate or distinguish the domain names from the mark.
The fifth of the domain names consists of “actions” and “alerts” without the term “plus.” Here, the omission of the word “plus” does slightly distinguish the domain name in appearance and pronunciation. However, in the Panel’s view, the dominant portion of the domain name remains the combination of a variant of “action” and “alerts”, which is confusingly similar to Complainant’s mark.
Accordingly, the Panel finds that each of Respondent’s domain names is confusingly similar to a mark in which Complainant has rights. 2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy as to each of the domain names.
The evidence of Respondent’s past use of the domain names in connection with a stock market information and advice service shows that Respondent is not making a noncommercial or fair use of any of the domain names. There is no evidence that Respondent is or has been known by any combination of the terms (in plural or singular form) “action”, “alert,” or “plus.” See Policy, paragraph 4(c)(ii). Finally, it does not appear that Respondent has used – or could legitimately use – any of the domain names in connection with a bona fide offering. As noted above, although Complainant has not provided, apart from the allegations of the Complaint, evidence of its use of ACTION ALERTS PLUS prior to 2009, Complainant’s claim of use of ACTION ALERTS PLUS as a mark in early 2002 is readily confirmed by publicly-available information.2
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the domain name. 3. Registered and Used in Bad Faith
Complainant must establish that each of the domain names was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
The Panel concludes that Complainant’s rights in its mark predate Respondent’s registration and use of the domain names and, based on the content of the websites previously associated with the domain names and the adverse inferences that arise from Respondent’s failure to respond to the Complaint, that Respondent most likely knew Complainant’s ACTION ALERTS PLUS mark and service and registered the domain names with Complainant’s mark in mind. Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the domain names and that the use of the domain names was not in connection with a bona fide offering of goods or services.
Under these circumstances, the Panel finds that Complainant has established that Respondent has registered and is using the domain names in bad faith. 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 each of the domain names:
be transferred to Complainant.
Debra J. Stanek
Sole Panelist
Dated: November 4, 2010
1 See Rules, paragraph 3(c) (“The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”)
2 Consistent with the consensus view, the Panel undertook limited factual research to confirm the assertions in the complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5 (Panel may visit site linked to disputed domain name and may undertake limited factual research into the public record). A Google search resulted in references that confirmed when Complainant established its service and confirmed Complainant’s claim of trademark rights that predated Respondent’s registration of the domain names.
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