WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Scudder Kemper Investments, Inc. v. Peter J. Schlumpf

Case No. D2000-1750

 

1. The Parties

The Complainant: Scudder Kemper Investments, Inc. 345 Park Avenue, New York, New York, 10154-0010, United States of America.

The Respondent: Peter J. Schlumpf, PJS Consulting, P.O. Box 333, Zug, ZG, Switzerland.

 

2. The Domain Names and Registrar

The domain names in issue are <zurichscudder.com> and <zurich-scudder.com> (hereafter "the domain names").

The domain names were registered with Register.com, 575 8th Avenue, 11th Floor, New York, New York 10018, United States of America.

Both domain names were registered on April 12, 2000.

 

3. Procedural History

(1) The Complaint in Case D2000-1750 was filed in email form on December 15, 2000 and in hardcopy on December 19, 2000.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2.a.;

- The Respondent was appropriately served with a Notice of Default; and that

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.

(5) The date scheduled for issuance of a decision is: February 8, 2001.

(6) No extensions have been granted or orders issued in advance of this decision.

(7) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant

The Complainant, Scudder Kemper Investments, Inc. ("Scudder"), is a large and well known investment management company that provides services to a wide range of consumers, including individuals, institutions, and intermediaries. An affiliated company, Zurich, provides customers with services in the area of financial protection and asset accumulation. Both Scudder and Zurich maintain operations in a number of countries around the world and markets their services globally. Zurich, including Scudder and its other affiliates and entities, has offices in more than 60 countries reaching over 35 million customers and employing 68,000 people.

The Complainant has registered a large number of trade and service marks. The Complainantís marks include numerous worldwide applications and registrations that incorporate the words ZURICH and SCUDDER. Among these marks are 68 registered or pending applications incorporating use of the word SCUDDER, and 12 pending or registered marks incorporating use of the word ZURICH (collectively the "ZURICH and SCUDDER Marks").

B. The Respondent

According to the database accessed at <www.betterwhois.com>, the Respondent in this administrative proceeding is Peter J. Schlumpf, with an address as listed above. This information was confirmed to the Center on December 27, 2000, by the Registrar. The Complainant asserts that the Respondent is an ex-employee of the Complainant, but there is no independent evidence of this, and no inference is drawn from this. No Response was filed and so no further information is known about the Respondent.

 

5. Partiesí Contentions

A. The Complainantís assertions

The Respondent's domain names are identical and/or confusingly similar to the Complainant's marks. The Complainant asserts specifically that the combination of "zurich" and "scudder" in the domain name creates a likelihood of confusion with the ZURICH and SCUDDER Marks.

The Respondent has no legitimate interest or rights in the domain names. The Complainant asserts:

(1) The Respondent is not a licensee of Scudder, nor has the company authorized the Respondent to use any of the ZURICH and SCUDDER Marks;

(2) The Respondent is not identified or otherwise engaged in business under either of the domain names, and he is not presently engaged in a legitimate non-commercial or fair use of the domain names;

(3) The domain names at issue are not, nor could they be contended to be, a nickname of the Respondent or other member of his family, the name of a household pet, or in any other way identified or related to a legitimate interest of the Respondent.

The Respondent registered the domain names and is using them in bad faith. The Complainant asserts:

(1) The Respondent has neither created an active web page nor specified with any degree of particularity how he plans to use the domain names. Inactivity or non-use of a domain name by a Respondent can amount to the domain name being used in bad faith;

(2) Bad faith may be presumed in the registration and use of a domain name consisting wholly or partly of the notorious trade mark of a third party; and

(3) The Respondent has also demonstrated bad faith by offering the domain names for sale at GreatDomains.com.

Accordingly the Panel should order that the domain names be transferred to the Complainant.

B. The Respondentís assertions

The Respondent has not filed a Response.

 

6. Discussion and Findings

Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondentís domain names are identical or confusingly similar (paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain names (paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain names in bad faith (paragraph 4.a.(iii)).

A. The Complainant has rights in a trade or service mark, with which Respondentís domain names are identical or confusingly similar.

There are two requirements that the Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar.

The Complainant has clearly established the first requirement of this paragraph. As detailed in section 4 above, the Complainantís marks include numerous worldwide applications and registrations that incorporate the words ZURICH and SCUDDER. The first requirement of the paragraph is made out.

The second requirement is that the domain name be identical or confusingly similar to the marks. Here the Complainant asserts that the domain names are confusingly similar to its SCUDDER and ZURICH marks. The Complainant asserts specifically that the combination of "zurich" and "scudder" in the domain names creates a likelihood of confusion with the ZURICH and SCUDDER Marks.

I agree with the Complainantís argument. I might have some hesitation about holding that there exists confusing similarity if the only marks in issue were for the word marks ZURICH or SCUDDER. Given the geographical description, it is likely that multiple usages of "Zurich" can co-exist in the namespace without confusion. Equally, the personal name "scudder" might have legitimate usages. However, given the relationship between the Zurich and Scudder companies, the combination of "Zurich" and "Scudder", reflected in a domain name, is clearly confusingly similar to the ZURICH and SCUDDER marks.

The Complainant has therefore shown that it has rights in trade marks, and that the domain name is confusingly similar to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes a number of specific arguments on this point:

(1) The Respondent is not a licensee of Scudder, nor has the company authorized the Respondent to use any of the ZURICH and SCUDDER Marks;

(2) The Respondent is not identified or otherwise engaged in business under either of the domain names, and he is not presently engaged in a legitimate non-commercial or fair use of the domain names;

(3) The domain names at issue are not, nor could they be contended to be, a nickname of the Respondent or other member of his family, the name of a household pet, or in any other way identified or related to a legitimate interest of the Respondent.

The assertions of the Complainant restate, in large part, the elements of Paragraph 4.c. of the UDRP. Paragraph 4.c of the UDRP provides a number of guidelines to a Respondent, in seeking to establish its legitimate interests or rights. Though it is not intended to be exhaustive it is useful to see whether any of the examples provided in that paragraph might apply here. Furthermore, absent any Response, one of the few practicable ways that a Panel can be assured that the Respondent is not unjustifiably deprived of its domain name is to check whether any of the examples in Paragraph 4.c might apply.

Paragraph 4.c. of the UDRP provides a range of circumstances which can be used by Respondents to establish their rights of legitimate interest in the domain name. These circumstances are as follows:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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."

Could the Respondent demonstrate its legitimate interest or rights by preparations to use the names in a bona fide offering of services, pursuant to Paragraph 4.c.(i)? Here, the Respondent has done nothing with the domain names. He is clearly not engaged in a "bona fide offering of services". He cannot, therefore, rely on Paragraph 4.c.(i). Paragraph 4.c.(ii) provides that legitimate interests or rights may be demonstrated by the Respondent if it has been commonly known by the domain name, even without trade or service mark rights. There is no evidence that this might be applicable here. The Respondentís name does not incorporate any element of the domain name, nor is there any evidence of that "zurich" or "scudder" are found in the nicknames or names of entities related to the Respondent. Finally, he cannot rely on Paragraph 4.c.(iii), since there is no evidence that he has undertaken any legitimate non-commercial or fair use of the domain name.

As a result I conclude that, even if I were to take the interpretation most favourable to the Respondent, he has failed to establish any right or legitimate interest in the domain names. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

Which leaves the final issue, that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

The Complainant asserts:

(1) Respondent has neither created an active web page nor specified with any degree of particularity how he plans to use the domain names. Inactivity or non-use of a domain name by a Respondent can amount to the domain name being used in bad faith;

(2) Bad faith may be presumed in the registration and use of a domain name consisting wholly or partly of the notorious trade mark of a third party; and

(3) Respondent has also demonstrated bad faith by offering the domain names for sale at GreatDomains.com.

On the initial question of whether there was bad faith registration, the domain names were registered on April 12, 2000. The Complainant is a large corporation which had been operating long before this time, and its marks are well-known in the financial services industry. It might be argued that the registration as a domain name of either of the two words at issue here ("zurich" or "scudder") could be in good faith. However it is not credible to argue that the two combined words could have been registered in good faith, unless there is some evidence presented to establish the unlikely proposition that the Respondent did not have any bad faith. I conclude that the registration was in bad faith.

For the same reason, I conclude that the actions of the Respondent amount to ongoing bad faith use. The combination of holding a domain name that could only be a reflection of the Complainantís business, and then offering the domain name for sale, is clear evidence of continuing bad faith use. I conclude that the Complainant has made out the requirement of ongoing bad faith use.

I conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain names <zurichscudder.com> and <zurich-scudder.com> be transferred forthwith to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: February 5, 2001