The Complainant is Jackson National Life Insurance Company of Lansing, Michigan, United States of America, represented by Dickinson Wright, PLLC, United States of America.
The Respondent is Glenn Scharf, Scharf Group, LLC of Ardmore, Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2013. On December 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 30, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on January 30, 2014. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant provides life insurance, annuity underwriting, and financial advisory services, including retirement planning services, in the United States. The Complainant has developed a retirement planning program called “Retirementology”, in respect of which the Complainant has applied for and secured two United States trademark registrations for RETIREMENTOLOGY. The Complainant’s trademark applications were filed with the United States Patent and Trademark Office (USPTO) on October 26, 2006, and the registrations issued by the USPTO on February 23, 2010 and August 10, 2010. The Complainant maintains a presence online and has registered and uses the domain name .
The Respondent registered the disputed domain name on October 7, 2010, according to information maintained in the concerned Registrar’s WhoIs database. After becoming aware of this, the Complainant brought a lawsuit in United States federal court against the Respondent for trademark infringement and cybersquatting under the Lanham Act and the Anti-Cybersquatting Consumer Protection Act (ACPA). The Complainant thereafter obtained a default judgment in this lawsuit on January 7, 2013. After finding that the Respondent’s use of the disputed domain name created a likelihood of confusion and constituted cybersquatting, the Court ordered, inter alia, that the disputed domain name be transferred to the Complainant. The Respondent has yet to comply with the Court Order, according to the Complainant.
The disputed domain name, at the time the Complaint was filed and currently, resolves to a web page that is said to be “under construction.” The Complainant alleges that the disputed domain name previously has been used with a website on which products and services competing with those of the Complainant were offered. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to its federally registered RETIREMENTOLOGY mark. The Complainant explains that RETIREMENTOLOGY is a proactive look at the effects of psychology on how people spend, save, borrow, and invest, in order to develop the optimal retirement planning program for each individual. The Complainant contends that its RETIREMENTOLOGY mark is a well-known mark. The Complainant represents that it extensively advertises and promotes its retirement planning services under the RETIREMENTOLOGY marks through its websites, catalogs, product brochures, and customer presentations. Additionally, one of the Complainant’s executives published a book in April 10, 2010 called “Retirementology: Rethinking the American Dream in a New Economy”, which according to the Complainant is sold nationwide.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s RETIREMENTOLOGY mark. The Complainant submits that the Respondent’s prior use of the disputed domain name with a website offering competing products or services is indicative of bad faith. The Complainant asserts that neither such prior use nor the Respondent’s parking of the disputed domain name gives rise to rights or legitimate interests in the disputed domain name. The Complainant also submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that it is obvious that the Respondent registered the disputed domain name with the Complainant’s mark in mind. Further, the Complainant asserts that the Respondent has intentionally used the Complainant’s mark to attract, for commercial gain, Internet users to the Respondent’s website, where products or services competing with those of the Complainant have been offered. Anticipating a default by the Respondent, the Complainant argues that the Panel should accept as true all reasonable allegations and inferences set forth in the Complaint, and order the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See also Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s RETIREMENTOLOGY mark, in which the Complainant has established rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this instance, the Panel finds from such a comparison that the disputed domain name is confusingly similar and if not virtually identical to the Complainant’s mark in terms of sight, sound, and meaning. The Complainant’s RETIREMENTOLOGY mark is distinctive, and the disputed domain name is very likely to call to mind the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is confusingly similar and virtually identical to the Complainant’s RETIREMENTOLOGY mark, and seems calculated to call to mind the Complainant’ distinctive mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark.
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record before the Panel, the Respondent had the Complainant’s mark in mind when registering the disputed domain name. There is no evidence in the record of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent has been commonly known by the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is evident that the Respondent was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. As noted earlier, the Complainant has alleged that the Respondent used the disputed domain name with a website offering products or services competing with those of the Complainant. Conduct of this nature is consistent with the liability findings made by the federal district court when issuing its default judgment.
In light of the foregoing, the Panel considers that the Respondent most likely registered the disputed domain name in order to exploit and profit from the Complainant’s rights in the RETIREMENTOLOGY mark. Internet users could easily expect the disputed domain name to be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
That the Respondent appears to be passively holding the disputed domain does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Considerations that supported a finding of bad faith in Telstra are present in this case as well. The Complainant’s mark is distinctive, and is not susceptible to use in a generic sense. As in Telstra, there is no evidence of any actual good faith use of the disputed domain name by the Respondent, or of any demonstrable preparations to make a good faith use of the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
William R. Towns
Sole Panelist
Date: February 14, 2014
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.
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