The Complainant is Investor’s Business Daily Inc., Data Analysis Inc. both of Los Angeles California, United States of America, represented by Dentons US, United States of America.
The Respondent is Billy Campbell, Auckland, New Zealand/ Registration Private, Domains by Proxy, LLC; Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “domain name in dispute”) is registered with GoD, LLC (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on November 20, 2014. On November 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name in dispute. On November 24, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the domain name in dispute which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 28, 2014 providing the registrant and contact information by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 3, 2014.
The Center verified that 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 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 December 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2014.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on January 13, 2015. 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
According to the Complainant its Investor’s Business Daily (IBD) was founded in 1984 and is a leading financial news and research organisation recognised for proprietary stock screens, comparative performance ratings and a record of identifying stock leaders as they emerge. IBD is also recognised for its unique commentary on the key economic social and political issues of the day. IBD offers individual and professional investors a comprehensive line up print and online products, all based on an independently tested investment discipline that has dramatically outperformed the S&P500. The Complainant Data Analysis Inc. (DAI) is a holding company for IBD that inter alia owns trademarks used by IBD in connection with its goods and services.
IBD and DAI are related corporate entities so that the rights and roles of each are relevant to these proceedings and the Amended Complaint is filed in both entities.
The Complainant’s goods and services include its namesake publication “Investor’s Business Daily” (commonly identified as IBD) in print and digital editions, premium and online investing products; live investing workshops; fame study programs; and a library of investing books. The Complainant offers all of these goods and services via its website known as the “IBD Store” at ”/store” which has been online since at least 2007. A printout of the homepage of the Complainant’s IBD Store website is annexed as Annex 4 to the Amended Complaint. The Complainant’s publications and services are directed to investors or “traders” in financial products. Also annexed as Annex 5 to the Amended Complaint is a printout of the homepage from the Complainant’s website and at Annex 6 a printout of the Wikipedia entry for IBD. The Complainant is the owner of numerous trademark registrations around the world for marks consists of “IBD” (the “IBD Trademark”) the first of which was used in commerce in January 1997.
The IBD trademarks include US registration no. 3028338 for use in connection with “newspapers, pamphlets and newsletters in the field of financial information, online ordering services in the field of books, publications and audio CDs; providing an online computer database in the field of financial information; financial information provided by electronic means; and educational services, namely conducting workshops, online workshops, seminars and certification programs in the field of financial investments; providing online newsletters and newspapers in the field of financial information”. A copy of the relevant certificate of registration at USPTO is annexed at Annex 9 to the Amended Complaint. Annexed at Annex 10 are copies of trademark certificates of registration for the mark IBD in the following jurisdictions: European Community, Australia, Canada, Japan, China and India.
According to the Complainant the Respondent is identified in the WhoIs database (see Annex 1 of the Complaint) as Registration Private/Domains by Proxy LLC. The actual Respondent is Billy Campbell. The domain name in dispute was created on December 2, 2011.
Evidence is set out at Annex 7 to the Amended Complaint which is a declaration from the Complainant’s in-house Counsel and Director of Legal Affairs, Dayna Grund to show that the Respondent is using the domain name in dispute in connection with a website that advertises for sale illegal copies of products owned by the Complainant as of November 18, 2014, the Respondent's sale of illegal copies of products owned by the Complainant included the following:
- IBD Level 1 Home Study Program 4 DVDs with PDF Manual
- IBD Home Study II Intermediate Strategies for Successful Investing 4 DVDs 2009
- IBD Level III Chart School 3 DVDs 2010 with 500 pages Manual on CD
- Short Selling IBD Course 2011 Manual on CD
- IBD Home Study: Advance Strategies for a Successful Investing 3 DVD manual
- Advanced Buying Strategy Program IBD 2014
- Model Stock Home Study Program 2014 RRP PDF Manual and 2 DVDs
The Complainant has determined that these illegal products were either stolen from the Complainant or once purchased from the Complainant. The products were then copied most likely in China and replicated to look exactly like the originals. The original software usually has activation codes to log on or register to use the products and employs encryption technology. The operators of the illegal online store using the disputed domain name have the ability to disable the codes and/or circumvention the encryption technology and then easily replicate the software. The manuals on the DVDs are then repackaged and sold to look exactly like the original IBD products.
Also annexed to the Amended Complaint at Annex 8 is a printout of webpages from the Respondent’s website using the disputed domain name, as of October 30, 2014, and a printout of webpages from the Respondent’s website using the disputed domain name as of November 18, 2014 a date after which the Respondent redesigned its website and in which the Respondent is offering for sale the illegal copies of the Complainant's products.
In the absence of a Response and evidence from the Respondent the Panel accepts the foregoing evidence adduced by the Complainant and finds it to be true. The Panel proceeds to determine this Complaint on the basis of the evidence adduced by the Complainant. 5. Parties Contentions A. Complainant
The Complainant submits:
1. The domain name in dispute is confusingly similar to Complainant’s IBD trademark.
2. The Respondent has no rights or legitimate interests in the domain in dispute. There is no evidence that the Complainant has assigned or granted a licence, sold, transferred or in any way authorised the Respondent to register or use the IBD trademark in any manner.
3. The domain name in dispute was registered and is being used in bad faith. The Complainant relies upon the evidence of the Respondent’s website using the domain name in dispute for the purposes of advertising for sale illegal products. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Having considered the evidence of the Complainant’s trademark rights in the mark IBD referred to above the Panel is satisfied that the Complainant is the owner of the trademark IBD throughout the world. This is demonstrated by Annexes 9 and 10 to the Complaint.
The Complainant submits that the domain name in dispute is confusingly similar to the mark IBD. The relevant comparison to be made is with the second level portion of the domain name in dispute i.e. “ibdtrader”. The Top-Level Domain suffix “.com” should be disregarded for this purpose.
The domain name in dispute consists solely of the IBD trademark plus the generic word “trader”. The Complainant submits that in the financial industry it is well known that “trader” refers to an individual that buys and sells financial instruments. The Complainant’s products are primarily marketed and sold to traders and other investment professionals. Accordingly the second portion of the domain name in dispute is a generic word that describes the target audience to which the Complainant’s goods are sold using the mark IBD.
The Complainant also submits that the inclusion of the word “trader” after the IBD trademark does nothing to reduce the confusing similarity of the domain name in dispute with the IBD trademark. In fact it enhances the confusion by further associating the disputed domain name with the Complainant and its products leading users to believe that the products offered on the website at the disputed domain name are actually offered by the Complainant.
The Panel has considered these arguments and finds that the domain name in dispute is confusingly similar to the Complainant's trademark IBD. B. Rights or Legitimate Interests
The Complainant points out that the Respondent has no rights or legitimate interests in the domain name in dispute. There is no evidence that the Complainant has assigned, granted licensed, sold, transferred or in any way dealt with the mark so as to authorise the Respondent to use it in any manner.
Similarly there is no evidence that the Respondent has ever been commonly known by the domain name in dispute or has acquired any trademark or service mark rights in the domain name in dispute. It follows that the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy. Moreover given the Complainant’s registration of the mark IBD” for more than 17 years it is unlikely that the Respondent is commonly known by this mark.
Given that the Complainant has not authorised any person or entity to resell its products and given the evidence that the products advertised for sale on the Respondent's website are illegal or counterfeit, it is apparent that the Respondent has no rights to register or use the domain name in dispute.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in dispute. C. Registered and Used in Bad Faith
The Complainant relies upon the fact as shown in Annex 7 and Annex 8 to the Amended Complaint that the Respondent is using the domain name in dispute in connection with the website that advertises for sale illegal or counterfeit copies of the Complainant's products.
The Complainant also points out as is shown in Annex 11 to the Amended Complaint [which is a print of the Respondent’s website] some of the illegal products advertised for sale on the Respondent’s website use the Complainant's “Investor's Business Daily” trademark. This increases the likelihood of confusion between the Respondent’s website and the Complainant.
The Complainant points out that the Complainant’s IBD trademark predates registration of the disputed domain name by almost 15 years and as a result the Respondent knew or should have known of the trademark IBD.
The Panel finds in the light of the fact that the Respondent is using the domain name in dispute to sell illegal or counterfeit copies of the Complainant’s products and which feature the IBD trademark and taking into account the widespread use and protection of the trademark IBD for almost 15 years prior to registration of the domain name in dispute, as alleged by Complainant “it is inconceivable that the Respondent chose the contested domain name without knowledge of the Complainant's activities and the name and trademark under which the Complainant is doing business”.
The Panel therefore finds that the domain name in dispute was registered and is being used in bad faith by the Respondent. 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 domain name in dispute be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Date: January 23, 2015
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