The Complainants are Investor’s Business Daily and Data Analysis, Inc. of Los Angeles, California, United States of America (“US”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, US.
The Respondents are Registration Private, Domains By Proxy of Scottsdale, Arizona, US and Billy Campbell of Auckland, New Zealand. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2014. On May 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 4, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on June 4, 2014.
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 Respondents of the Complaint, and the proceedings commenced on June 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 3, 2014.
The Center appointed Joan Clark as the sole panelist in this matter on July 8, 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 the Rules, paragraph 7. 4. Factual Background
The Complainant Investor’s Business Daily, Inc. is the owner by assignment on June 21, 2010 from the Complainant Data Analysis, Inc. of the trade mark IBD which was registered in the United States Patent and Trademark Office on December 13, 2005, based on a first use in commerce in 1997.
The Respondent Billy Campbell is the registrant of the disputed domain name as the Registrar informed the Center on May 30, 2014. The Registrar’s WhoIs database had earlier reported on May 28, 2014 that the registrant was Registration Private/Domains By Proxy, LLC. The disputed domain name was created on December 2, 2011 and is scheduled to expire on December 2, 2015.
The Complainant Investor’s Business Daily and the Complainant Data Analysis, Inc. are hereinafter together referred to in the singular as the Complainant, except where otherwise indicated.
The Respondent Billy Campbell and the Respondent Registration Private/Domains By Proxy, LLC are hereinafter together referred to in the singular as the Respondent, except where otherwise indicated. 5. Parties’ Contentions A. Complainant
The Complaint states that the Complainant Investor’s Business Daily (IBD) was founded in 1984 and is a leading financial news and research organization recognized for proprietary stock screens, comparative performance ratings and for its unique commentary on the key economic, social and political issues of our time. The Complaint further states that the Complainant Data Analysis, Inc. (DAI) is a holding company for IBD that, among other things, owns certain trademarks used by IBD in connection with its goods and services. The Complaint maintains that IBD and DAI are “related corporate entities”, and that it is appropriate that the Complaint be filed on behalf of both entities.
The Complaint states that the disputed domain name is being used by the Respondent in connection with a website that advertises for sale illegal copies of products owned by the Complainant (such as, for example, “IBD Home Study Level II- Intermediate Strategies for Successful Investing 4 DVDs 2009”), that these illegal products were either stolen from the Complainant or purchased once from the Complainant, and that the products were then copied and replicated to look like the originals.
The Complaint contends that the disputed domain name is confusingly similar to the Complainant’s IBD trademark, and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it has never assigned or transferred or in any way authorized the Respondent to register or use the IBD trademark in any manner, and concludes that the Respondent was not commonly known by the disputed domain name. The Complainant maintains that it has not authorized any person or entity to resell its products, and that the products the Respondent is offering for sale are illegal/counterfeit copies of the Complainant’s products. The Complainant asserts that the disputed domain name was registered and is being used in bad faith and notes that it is inconceivable that the Respondent chose the disputed domain name without knowledge of the Complainant’s mark that had been widely used for more than 17 years.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, for the Complaint to be successful, the Complainant must prove (i) that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The first and prominent part, “ibd”, of the disputed domain name is identical to the Complainant’s trademark except that the letters in the disputed domain name are in lower case, as is usual in the case of domain names, whereas they are in upper case in the Complainant’s trademark. The following part of the disputed domain name, “stores”, is a generic word describing a location where goods are offered for sale. In this case numerous articles are offered for sale on the Respondent’s website under , some of them under the Complainant’s trademark IBD, such as, for example, “IBD Home Study”. The appearance of the word “stores” adds to the confusing similarity between the Complainant’s trademark and the disputed domain name, as it indicates a location where one might buy goods sold under the Complainant’s trademark.
The addition of the gTLD suffix, in this case “.com”, has been recognized in numerous UDRP decisions as not affecting the issue of identity or confusing similarity.
According to the copy of the trademark registration certificate produced with the Complaint, the Complainant Investor’s Business Daily, Inc. is the owner by assignment on June 21, 2010 from the Complainant Data Analysis, Inc. of the trade mark IBD, including all right, title and interest therein. The Panel finds that the disputed domain name is confusingly similar to the trademark IBD in which the Complainant Investor’s Business Daily has rights, and the first condition for the Complaint to succeed has been satisfied. B. Rights or Legitimate Interests
The assertions in the Complaint that the Respondent has no rights or legitimate interests in the disputed domain name have cast the burden of proving otherwise on the Respondents, who have not filed a Response or contested the contentions in the Complaint. The Complainant has asserted that the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to use the IBD trademark, and further that the Respondent is not an authorized reseller of the Complainant’s products. The Complainant also states that to its knowledge the Respondent ha never been commonly known by the disputed domain name and has never used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and the second condition for the Complaint to succeed has been satisfied. C. Registered and Used in Bad Faith
In the absence of a Response from the Respondent, there is no explanation for the Respondents’ choice and registration of the disputed domain name using the letters IBD, other than to create confusion with the Complainant’s trademark and business. According to the Complaint, the Respondent is using the disputed domain name in connection with a website that advertises for sale illegal copies of the Complainants’ products using the IBD trademark, and further some of the illegal products are offered for sale on the Respondent’s website under another trademark of the Complainant, “Investor’s business Daily”, which only increases the likelihood of confusion between the Respondent’s website and the Complainant.
The creation of a confusingly similar domain name subsequent in time to the registration and use of the Complainant’s trademark and the use of that domain name to offer similar products (which the Complainant asserts to be illegal copies) to those produced by the Complainant, lead to a presumption that the disputed domain name was copied from the Complainant’s trademark. The Panel further notes that products from companies other than the Complainant are offered on the Respondent’s website. The Panel finds that the Respondent chose, registered and has used the disputed domain name with full knowledge of the Complainant’s trademark in an effort to cause Internet users to believe the disputed domain name and related website are associated with the Complainant and or its products, or at the very least in an effort to benefit from a confusingly similar domain name, with the intention that confusion would be created between the Complainant’s trademark and the disputed domain name.
The Panel finds that the disputed domain name was registered and is being used in bad faith, and the third condition for the Complaint to succeed has been satisfied. 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 Investor’s Business Daily, Inc. as requested in the Complaint.
Joan Clark O.C., Q.C.
Sole Panelist
Date: July 21, 2014
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