The Complainant is Massachusetts Financial Services Company of Boston, Massachusetts, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
The Respondent is Hoang Steven Thanh Nguyen, Multi Financial Solutions Pty Ltd of West Sunshine, Victoria, Australia. 2. The Domain Names and Registrar
The disputed domain names , and are registered with TierraNet d/b/a DomainDiscover. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2011. On February 18, 2011, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain names. On the same day, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 23, 2011.
The Center verified that the Complaint together with the amended 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 February 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 24, 2011. 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, Massachusetts Financial Services Company, uses MFS in the United States and internationally as its trade name and as a trademark in association with a broad selection of financial products and services, including investment management services. As of January 31, 2011, the Complainant manages approximately USD 225 billion in client assets.
The Complainant owns a United States registration for MFS (No. 1,233,922) which issued on April 5, 1983. The Complainant also owns several registrations incorporating the MFS element, including MFS FAMILY OF FUNDS (United States Registration No. 1,405,244), MFS LIFETIME INVESTMENT PROGRAM (United States Registration No. 1,751,546), MFS INVESTMENT MANAGEMENT (United States Registration No. 2,174,308), MFS ORIGINAL RESEARCH (United States Registration No. 2,271,380), MFS HERITAGE PLANNING (United States Registration No. 2,319,977), and MFS INVESTMENT MANAGEMENT & Design (United States Registration No. 3,111,492).
In addition to the United States Registrations, the Complainant owns an Australian registration for MFS (No. 860010) which was issued on December 11, 2000, as well as a number of registrations incorporating the MFS element.
The Complainant owns the domain name , which was registered on July 1994 and is active. The Complainant also owns additional domain names including , , , and , all of which are active and pertain to financial services.
The disputed domain names , and were registered on April 16, 2009, August 16, 2006 and November 21, 2008 respectively. Currently, the disputed domain names revert to a single website offering financial services.
Although each of the disputed domain names is operational, when the user types in the domain name, he or she is redirected to the domain name . 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Complainant owns a registration for the trademark MFS both in the United States and Australia. The Complainant has also used MFS extensively as a trade name. The Respondent has registered the disputed domain names , and , which are identical to the Complainant’s registered trademark except for the addition of the descriptive terms “funds”, “markets”, and “forex”.
The Complainant submits that each descriptive term in the domain name relates to a part of the Complainant’s business, in that the Complainant (1) establishes and manages mutual funds; (2) researches, utilizes and participates in financial markets in the course of providing its investment services; and (3) engages in foreign exchange (which is commonly known as “forex”) trading in connection with its management of various investment products.
The Complainant submits that the disputed domain names incorporate the whole of the Complainant’s registered mark and are therefore confusingly similar to the Complainant’s registered mark MFS. The Complainant relies on UDRP Decisions which recognize that a domain name is confusingly similar for the purposes of the first factor of the Policy if it incorporates the complainant’s mark in its entirety because the mark and domain name, when directly compared, are confusingly similar (see Wal-Mart Stores, Inc. v Richard MacLeod d/b/a/ For Sale, WIPO Case No. D2000-0662 and Leo Quinones, Jr. v William Chambers,WIPO Case No. D2003-0252).
Rights or Legitimate Interests
The Complainant submits that its adoption and use of the MFS trademark and trade name in both the United States and Australia precedes the Respondent’s registration of any of the disputed domain names.
The Complainant submits that the Respondent and its administrative contact are not and have never been authorized or licensed to use the MFS mark. The Complainant further submits that the Respondent is not commonly known by the name MFS.
The Complainant believes that the Respondent has adopted the disputed domain names in order to divert traffic from the Complainant’s business to its own business. The Complainant submits that because the Complainant’s name is a well-known business name in the financial industry (and especially famous for mutual funds), it is inconceivable that the Complainant company was not present in the mind of the Respondent when it chose those domain names to operate a business providing the same or highly similar services to that of the Complainant. The Complainant has also provided, by way of affidavit, evidence of irregularities in the Respondent’s sites, from which it may be inferred that the Respondent has used a false connection with the Complainant to increase the prestige of its business to lure prospective clients to its sites.
The Complainant submits that there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith for the following reasons: (i) Respondent was or must have been aware of the Complainant’s rights in the MFS trademark and trade name at the time the Respondent registered confusingly similar disputed domain names; (ii) the Respondent registered and is using disputed domain names that deliberately and misleadingly copy the Complainant’s MFS trademark, and are confusingly similar with the Complainant’s trade name, so as to trade on the reputation and goodwill associated with the Complainant for the purposes of financial gain; (iii) the Respondent’s websites promote a business that appears to be in competition to the Complainant’s business; (iv) the Respondent’s actions result in the public being misled or confused as to the origin, sponsorship, or association of the information or services promoted, offered, or sold on , and ; (iv) the Respondent demanded exorbitant compensation to transfer each domain name to the Complainant; and (v) the Respondent is thereby preventing the registered trademark owner from obtaining and using the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
For the purposes of this proceeding, the Panel finds, on the balance of probabilities, that the disputed domain names are in common control of the Respondent within the meaning of paragraph 3(c) of the Rules. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the mark MFS by virtue, inter alia, of the United States and Australian trademark registrations filed in these proceedings.
The Panel further finds that the disputed domain names , , and are confusingly similar to the Complainant’s registered mark MFS, because each of the domain names contains MFS as the first and dominant element. The addition of the descriptive words “funds”, “markets” and “forex” do not serve to distinguish the domain names from the registered trademark. In the circumstances, the descriptive words actually increase the confusing similarity, given the connection to the Complainant’s services.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel notes that the Respondent did not file any response to the Complaint, and accordingly has not contested any of the facts stated in the Complaint. As a result, the Panel is prepared to accept the Complainant’s contention that its MFS mark and business are well-known.
The Panel finds no evidence that the Respondent is commonly known by the name MFS. The Panel further finds that neither the Respondent nor its administrative contact has ever been a representative of the Complainant or been licensed to use the MFS mark.
The Panel finds that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services. On the contrary, a review of the evidence submitted by the Complainant suggests that the Respondent used a false connection to the Complainant to enhance the prestige of its business.
The Respondent has filed no evidence that it is making legitimate noncommercial or fair use of the disputed domain names.
The Complainant has therefore satisfied the requirements under paragraph 4(c) and 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel, upon review of the evidence filed in the Complaint, and in view of the Respondent’s failure to file any response contesting the facts therein, finds that the Respondent registered and has used the disputed domain names in bad faith.
The Panel is prepared to find that the Respondent was or must have been aware of the Complainant’s rights to the trademark and trade name MFS when it registered confusingly similar disputed domain names, and when it began operating a website in connection with the confusingly similar disputed domain names which provides identical or similar services to that of the Complainant. The Panel is prepared to infer that the Respondent is deliberately trading on the goodwill and reputation of the Complainant and the Complainant’s trademark for the purposes of monetary gain. The Complainant has satisfied the requirements under paragraph 4(a)(iii) 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 disputed domain names , , and be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Dated: April 7, 2011
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