The Complainant is Mesirow Financial, Inc. of Chicago, Illinois, United States of America (“US”), represented by Edwards Wildman Palmer LLP, US.
The Respondent is Tatjana P. Kolpakova of Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2013. On August 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 4, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Russian. On September 7, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
On September 6, 2013, the Center sent an email communication to the Complainant inviting it to amend the Complaint, namely the paragraph relating to the Complainant’s submission to one (or two) appropriate mutual jurisdiction(s) with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the disputed domain name. The Complainant filed an amendment to the Complaint on September 10, 2013.
The Center verified that the Complaint together with the amendment to 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 both in English and in Russian, and the proceedings commenced on September 11, 2013. On the same day the Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Russian; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2013.
The Center appointed Ladislav Jakl as the sole panelist in this matter on October 14, 2013. 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.
On November 12, 2013, the Panel issued Procedural Order No. 1 noting that, due to an administrative oversight, the notification of the Complaint was not sent to an email address available in the website to which the disputed domain name resolved, as indicated in Annex D to the Complaint, and inviting the Respondent to indicate whether it intended to participate in these proceedings. The Respondent did not reply to the Order. Accordingly, the Panel has proceeded to render the Decision based on the evidence available in the record. 4. Factual Background
The Complainant currently owns incontestable United States federal trademark registration MESIROW FINANCIAL, No.1556080, filed on July 21, 1988 and registered on September 12, 1989, covering “Financial services namely, stock and mutual fund brokerage services; investment banking services; providing venture capital; financial planning services; asset management services; health, life and disability insurance brokerage services and real estate financing and leasing services” in International Class 36. In addition, the Complainant owns a family of marks, including MESIROW FINANCIAL for a wide variety of related financial, banking, investment and insurance services. These marks include, among others U.S. registration No. 1568777, filed on July 21, 1988; U.S. registration No. 2311763, filed on January 11, 1999; U.S. registration No. 3490017, filed on October 2, 2007. Copies of the certificates of registration for the MESIROW FINANCIAL service marks are attached hereto as Annex C to the Complaint. The Complainant’s markets services are available from the domain name .
The Complainant has invested a substantial amount of time and resources to promote and advertise the MESIROW FINANCIAL service mark and the goods and services associated therewith. Conservatively, the Complainant has spent USD 2.5 million per year to advertise and promote its businesses, goods and services under the MESIROW FINANCIAL service mark. As a result, the Complainant has developed extremely valuable goodwill and an outstanding reputation in the MESIROW FINANCIAL service mark. The mark is undeniably famous for financial services, and indicates the high quality of services originating exclusively with the Complainant.
The disputed domain name was registered on March 26, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that it owns and has extremely well-established rights in the MESIROW FINANCIAL service mark, under which it has provided goods and services for more than thirty years (i.e., since at least as early as November 18, 1977). See, Janus Int’l Holding Co. v. Rademacher,WIPO Case No. D2002-0201. The disputed domain name is confusingly similar to the Complainant’s MESIROW FINANCIAL service mark, with the only difference being the grammatical usage of the term “Finance,” namely Complainant’s service trademark ends in “ial,” i.e., FINANCIAL, while the diputed domain name ends in “e,” i.e., “finance”. The UDRP panels have held that domain names are likely to be held confusingly similar to established trademarks if they incorporate the trademark or a variation of the trademark. See, Playboy Enterprises International, Inc. v. Sookwan Park,WIPO Case No. D2001-0778; Merrell Pharmaceuticals Inc. v. Daniel Laforge, NAF Claim No. 420671. Because the disputed domain name differs from the Complainant’s established MESIROW FINANCIAL mark by only three letters, consumers will likely be attracted to such a website based on the mistaken belief that it is an authorized site where they can enter into transactions for the Complainant’s goods and services or with third-parties affiliated with the Complainant. See Alaska Stock LLC v. Darin Yates Studios / Darin Yates,WIPO Case No. D2004-0858; Louis Vuitton v. Net-Promotion,WIPO Case No. D2000-0430. The likelihood of confusion is increased here because the Respondent holds itself out on the Respondent site, using the Complainant’s name, and (falsely) provides the Complainant’s former business address as its U.S. address. For these reasons, the Complainant concludes that the disputed domain name is confusingly similar to the Complainant’s MESIROW FINANCIAL service mark.
As to rights or legitimate interests, in respect of the disputed domain name, the Complainant essentially contends that the Respondent has never been authorized by the Complainant to use any of the MESIROW FINANCIAL service marks or any trademark confusingly similar thereto as a trademark or as part of a domain name. This fact gives rise to a presumption that the Respondent cannot establish that it has rights or any legitimate interests in the disputed domain name. See, e.g., Nilfisk-Advance A/S v. Leong Tak Lang,WIPO Case No. D2000-1299; Guerlain S.A. v. SL, Blancel Web,WIPO Case No. D2000-1191. Moreover, the Respondent cannot establish rights in the disputed domain name under paragraph 4(c)(i) of the Policy as it has never made any use of, or demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s use of the disputed domain name to intentionally trade on the well-known mark of the Complainant, in order to lure Internet users to a website unrelated to the trademark owner, cannot and does not constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847). The Complainant further contends that the Respondent’s use of the disputed domain name, that is confusingly similar to the Complainant’s trademark on a website purporting to offer financial products and services, is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to the Policy (Intesa Sanpaolo S.p.A. v. Andrey A Barchenkov,WIPO Case No. D2007-0087; Harrice Simons Miller v. H. Rheyne,WIPO Case No. D2004-0504; The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World,WIPO Case No. D2000-0474). For these reasons, the Respondent therefore cannot establish rights in the disputed domain name under paragraph 4(c)(i) of the Policy and cannot show that it used or demonstrably prepared to use the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.
According to the Complainant, the Respondent also cannot establish rights in the disputed domain name under paragraph 4(c)(ii) of the Policy because the Respondent has never been commonly known by the disputed domain name and has not acquired trademark or service mark rights in this domain name. Nothing in the Respondent’s WhoIs information or in any other information known about the Respondent implies that the Respondent is commonly known by the disputed domain name (American Diabetes Association v. Domain Administration Limited,WIPO Case No. D2006-0921; PHE, Inc. v. Nadeem Qadir,WIPO Case No. D2005-1315; Bioland e.V v. Lee Yi,WIPO Case No. D2002-1147; Dell Inc. v. George Dell and Dell Net Solutions,WIPO Case No. D2004-0512). The Respondent had never been commonly known by the disputed domain name and had not acquired trademark or service mark rights in this domain name prior to the registration of the disputed domain name (Neteller plc v. Prostoprom,WIPO Case No. D2007-1713; World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
The Complainant further argues that the Respondent’s use of the disputed domain name misdirects potential visitors seeking the Complainant’s commercial website to the Respondent’s own website and then to third-party commercial websites, for which activity the Respondent presumably receives compensation. The Respondent’s use of the disputed domain name to misdirect consumers is not a bona fide offering of goods or services, and therefore does not constitute a legitimate noncommercial or fair use of the disputed domain name under the Policy (Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073).
The Complainant concludes that the Respondent should have no rights or legitimate interests in the disputed domain name.
Furthermore, the Complainant argues that the disputed domain name is also being used in bad faith, as the only reason that the Respondent could have possibly registered the disputed domain name is in order to attract users looking for the Complainant’s website, for the Respondent’s own commercial gain. Registration and use of an infringing domain name in order to misdirect consumers, display banner advertisements or links to third-party commercial websites, or subject users to unsolicited pop-up advertisements is evidence of bad faith under paragraph 4(b)(iv) of the Policy (Hanover Communications Limited v. Maison Tropicale S.A.,WIPO Case No. D2007-1456; Bank of Nova Scotia v. Domain Administration Limited,WIPO Case No. D2007-0883; Red Bull GmbH v. Unasi Management Inc.,WIPO Case No. D2005-0304; Dell Inc. v. George Dell and Dell Net Solutions,WIPO Case No. D2004-0512). The prominent display of the Complainant’s MESIROW FINANCIAL service mark on the Respondent’s website adjacent to promotions for the Respondent’s financial services further evidences the Respondent’s registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) (HPR Commodities LLC v. Rob Harper,WIPO Case No. D2007-0153; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432; Western Union Holdings, Inc. v. XYZ a/k/a Chahat Topiwala,WIPO Case No. D2005-0945). The Respondent’s prominent use of a mark nearly identical to the Complainant’s MESIROW FINANCIAL mark on its website, as well as identifying itself outright as the Complainant on its website and listing the Complainant’s former address as its own, is designed to mislead Internet users who are trying to reach the Complainant’s website into believing they have reached the Complainant’s website.
Finally, the Complainant introduces that the gap of 24 years between registration of the Complainant’s MESIROW FINANCIAL trademark and the Respondent’s registration of the disputed domain name is also an indication of bad faith. See, e.g., TPI Holdings Inc. v. Belle Murshid (Domains by Proxy, Inc.),WIPO Case No. D2010-0114; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
For these reasons, the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Russian. Paragraph 11(a) of the UDRP provides, considering the circumstances of the proceeding, that the Panel may determine that the language of this proceeding may be different than the language of the registration agreement. Nevertheless, considering all the circumstances of the case, the Complainant respectfully requests for English to be the language of the administrative proceedings. The Respondent did not comment on the language of the proceeding by the specified due date. The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein decides that the language of the administrative proceedings be English (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836; F. Hoffmann-La Roche AG v. Onotole Vasermane,WIPO Case No. D2010-2074; F. Hoffmann-La Roche AG v. Nikolay Fedotov,WIPO Case No. D2011-1636).
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
There is no doubt that the disputed domain name incorporates the Complainant’s trademark MESIROW FINANCIAL with the only difference being the use of the term “finance”, namely Complainant’s service mark ends in “ial”, while the diputed domain name ends in “e”. The addition of “e” instead of “ial” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. The UDRP panels have held that domain names are likely to be held confusingly similar to established marks if they incorporate the trademark or a variation of the trademark (Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Playboy Enterprises International, Inc. v. Sookwan Park,WIPO Case No. D2001-0778; Merrell Pharmaceuticals Inc. v. Daniel Laforge, NAF Claim No. 420671). As well the inclusion of the gTLD suffix “.com” does not avoid confusing similarity of domain names and trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund,WIPO Case No. D2007-1310). Moreover, the Complainant’s registration and use of its trademark MESIROW FINANCIAL predates the Respondent’s registration of the disputed domain name.
For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular without limitation shall demonstrate:
(i) before the Respondent obtained the notice of the dispute, had not used of, or had not made demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as individual, business, or other organization) has not been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent was not 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 the Respondent before any notice of the dispute, had not used, or had not made demonstrable preparations to use, the disputed domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services. Moreover, it is necessary to accept the arguments of the Complainant that the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy as it has never made any use of, or demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s use of the disputed domain name to intentionally trade on the well-known mark of another, in order to lure Internet users to a website unrelated to the trademark owner, cannot and does not constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847).
The Respondent has not been commonly known by the disputed domain name, even if it has acquired no trademark rights. The Respondent also cannot establish rights in the disputed domain name under paragraph 4(c)(ii) of the Policy because the Respondent has never been commonly known by the disputed domain name and has not acquired trademark or service mark rights in the disputed domain name. It is necessary to accept the arguments of the Complainant that it has never authorized or licensed the Respondent to use its MESIROW FINANCIAL trademark within the disputed domain name and therefore the Respondent was not able to establish rights or legitimate interests in the disputed domain name. Mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg,WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design,WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia,WIPO Case No. D2010-0490). Moreover, the Panel notes that the website the disputed domain name currently points to a directory website which features links to the Complainant and third-party links to websites directly competing with the Complainant (Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784). The Respondent has never been authorized by the Complainant to use any of its trademarks or any mark confusingly similar thereto as a mark or as part of a domain name. This fact gives rise to a presumption that the Respondent cannot establish rights or any legitimate interests in the disputed domain name (Nilfisk-Advance A/S v. Leong Tak Lang,WIPO Case No. D2000-1299; Guerlain S.A. v. SL, Blancel Web,WIPO Case No. D2000-1191).
The disputed domain name misdirects potential visitors seeking the Complainant’s commercial website to the Respondent’s own website and then to third-party commercial websites, for which activity the Respondent presumably receives compensation. The Respondent’s use of the disputed domain name to misdirect consumers is not a bona fide offering of goods or services, and therefore does not constitute a legitimate noncommercial or fair use of the domain name under the Policy (Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Panel finds that it is necessary to accept the arguments of the Complainant that the disputed domain name is being used in bad faith, as the Complainant has submitted evidence, unchallenged by the Respondent, that it is obvious that the Respondent knew or must have known of the Complainant’s trademark at the time it registered the disputed domain name. The Respondent registered the disputed domain name in order to attract Internet users seeking for the Complainant’s website, for the Respondent’s own commercial gain. It is necessary to accept the arguments of the Complainant that the registration and use of an infringing domain name in order to misdirect consumers, display banner advertisements or links to third-party commercial websites, or subject users to unsolicited pop-up advertisements is evidence of bad faith under paragraph 4(b)(iv) of the Policy (Hanover Communications Ltd., v. Maison Tropicale, S.A.,WIPO Case No. D2007-1456; Bank of Nova Scotia v. Domain Administration Limited,WIPO Case No. D2007-0883; Red Bull GmbH v. Unasi Management Inc.,WIPO Case No. D2005-0304; Dell Inc. v. George Dell and Dell Net Solutions,WIPO Case No. D2004-0512). Due to the fact that the disputed domain name directs Internet users to a web page relating to the Complainant’s business, the Respondent cannot have ignored the Complainant’s business reputation at the time of registration of the disputed domain name. The Panel finds that the disputed domain name is also being used in bad faith, as intentionally attempts for commercial purpose to attract Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent's websites of the products or services posted on or Respondent´s website (Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. D2006-0049). The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by the Complainant and that, as a result, the Respondent may generace unjustified revenues and therefore is illegitimately capitalizing on the Complainant’s trademark fame.
For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Date: November 20, 2013
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