WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nuveen Investments, Inc. v. Robert Tamaqua a/k/a Bobby T.
Case No. D2004-0325
1. The Parties
The Complainant is Nuveen Investments, Inc., Chicago, Illinois, United States of America, represented by Gardner, Carton & Douglas, United States of America.
The Respondent is Robert Tamaqua a/k/a Bobby T, of Toronto, Ontario, Canada, unrepresented.
2. The Domain Name and Registrar
The disputed domain name <nuveen.net> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2004. On May 4, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed domain name. On May 5, 2004, at 4.55pm, Tucows transmitted by email to the Center a response to the effect that it had not received a copy of the Complaint and that “none” was the registrant of the disputed domain name rather than “Bobby T” (the latter being the Administrative Contact). A supplementary response emailed some three hours later confirmed receipt of a copy of the Complaint. The Center asked the Complainant’s attorneys to amend the complaint to show the Respondent as “none”. The Complainant then complied, but erroneously indicated in its revised section 6 of the Complaint that there was “no registrant” of the disputed domain name. The Center then verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Rules 2(a) and 4(a) the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2004. Under Rule 5(a), the due date for Response was May 31, 2004. The Response was duly filed with the Center on May 28, 2004.
The Center appointed Philip N. Argy as the sole panelist on June 8, 2004. 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 Rule 7.
On June 8, 2004, the Center also notified the parties of the Panel’s appointment, and a projected decision date of June 22, 2004.
The Panel received the case file in Sydney Australia late on June 11, 2004.
All other procedural and administrative requirements appear to have been met.
4. Factual Background
The Panel has proceeded on the basis, as is clear from the Response, that the licensee of the disputed domain name, and therefore the true respondent, is Robert Tamaqua, Esq. of Toronto in the province of Ontario, Canada.
The Complainant is a publicly traded corporation organised under the laws of the state of Delaware in the United States of America.
Respondent did not contest Complainant’s assertion that it owned all rights title and interest in and to the NUVEEN trademark throughout the world. Exhibit 4 to the Complaint does not prove that ownership in the Complainant in respect of USA or Canada because there is no explanation of the relationship between John Nuveen & Co Incorporated and the Complainant in the case of the USA registration, and the Canadian registration certificate does not bear the name of the Complainant.
Nor did Respondent contest Complainant’s assertions about the extent of its use of the NUVEEN mark and the extent of the Complainant’s reputation in connection with financial services provided under that brand for over 40 years.
And finally, Respondent did not contest that Complainant is the registrant of the <nuveen.com> domain name.
5. Parties’ Contentions
The Complainant, in addition to the above uncontested matters in support of its own rights to the disputed domain name, put the entirety of its case under paragraphs 4(a)(ii) and (iii) of the Policy in the following way (omitting exhibits):
“12.1 The domain name at issue is not the name of Respondent, nor can it be considered his business name or his common trade name. Moreover, Respondent is not using the domain name at issue in connection with a bona fide offering of goods and services, nor is Respondent making a legitimate non-commercial or fair use of the domain name. There is no legitimate basis for Respondent’s registration of the NUVEEN.NET domain name.
12.2 On information and belief, Respondent obtained the domain name registration for NUVEEN.NET with full knowledge of Complainant’s long prior use and ownership of the NUVEEN mark. Respondent registered the domain name to obtain financial gain from the valuable goodwill of Complainant’s NUVEEN trademark.
12.3 On information and belief, Respondent provided false contact information on the whois query for NUVEEN.NET. When Complainant sent Respondent a cease and desist letter via U.S. mail on March 16, 2004, the letter was “returned to sender”. See Exhibit 7.
12.4 Respondent did respond by e-mail, stating that he would be willing to sell the domain name to Complainant. See Exhibit 8.
12.5 Respondent intentionally attempted to attract, for commercial gain, Internet users, to its site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or on his website.
12.6 Before Complainant sent the March 16, 2004, letter to Respondent’s false address, users who accessed the NUVEEN.NET domain name were immediately transferred to EBONYJOY.COM, an adult entertainment website. See Exhibit 9. Complainant contacted the listed registrant of EBONYJOY.COM and requested that the NUVEEN.NET domain name be blocked from the EBONYJOY.COM site or that the users of the NUVEEN.NET name be redirected to Complainant’s site. The listed registrant advised that it was unable to block the NUVEEN.NET domain name and was unable to redirect users to Complainant’s website. See Exhibit 10. Not surprisingly, both the listed registrant and Respondent claim that there is no relationship between them.
13. Respondent’s acts clearly constitute bad faith under Section 4(b)(iv) of the Policy. Specifically, Respondent registered the domain name NUVEEN.NET to intentionally attract Internet users to the NUVEEN.NET website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the NUVEEN.NET website.”
The Respondent, in summary, replies that ‘Nuveen’ was his school nickname.
Respondent then notes that, until June 2003, Complainant was actually the registrant of the disputed domain name and either relinquished it or failed to renew it. Complainant fails to disclose this in the Complaint.
Respondent asserts that the disputed domain name is used for email and for maintaining a personal web log. The blog contains more material responsive to the Complaint than actually appears in the Response. The Respondent’s blog also contains derisive references to the Complainant and its attorneys, and impudent content such the following gratuitous reference to Complainant’s attorney: “I checked out that law firm's website and found a picture of the lawyer. She's pretty cute (for a hardass lawyer chick).”.
6. Discussion and Findings
The Complainant bears the onus of proving each of the elements of paragraph 4(a) of the Policy before the Panel can make an order in the Complainant’s favour. These elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (par 4(a)(i) of the Policy); and
(ii) that the Respondent has no rights or legitimate interest in respect of the disputed domain name (par 4(a)(ii) of the Policy); and
(iii) that the disputed domain name was registered and is being used in bad faith.
Unhelpfully, the Complaint did not address these matters in any methodical fashion, but simply comprised the assertions recorded above with little attempt to correlate the assertions with the grounds in the Policy. This is not an approach that finds favour with the Panel, particularly when portions of the Policy are incompletely quoted and erroneously invoked.
Taking the requisite elements in turn, and seeking as best the Panel can to identify the parts of the Complainant’s submissions which are intended to address that element, the Panel finds as follows:
A. Identical or confusingly similar to a mark in which Complainant has rights
The disputed domain name simply comprises the word “nuveen” and the gTLD “.net”. In accordance with this and other Panel’s consistent views, the gTLD name rarely has any significance and should ordinarily be ignored for the purposes of testing identicality or confusing similarity. The disputed domain name on that basis is identical to the NUVEEN mark. On any view it is confusingly similar. This element of the Policy is easily made out but the Complaint contains no submission to that effect.
As noted above, the Respondent does not contest the Complainant’s assertion that it has rights in the mark NUVEEN, despite the failure of the exhibited evidence to make good that assertion.
Fortunately for the Complainant, Exhibit 5 to the Complaint, being extracts from the Complainant’s website using the <nuveen.com> domain name, is sufficient to support a finding that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights, and the Panel so finds.
B. Respondent’s lack of rights or legitimate interest in respect of domain name
Spartan evidence indeed is provided in support of the Complainant’s assertion that “[t]here is no legitimate basis for Respondent’s registration of the NUVEEN.NET domain name”. Presumably the Panel is being asked to infer that from the surrounding circumstances. In light of the Response, with its implausible and uncorroborated nickname contention, the Panel (with some hesitation) concludes on the balance of probabilities that the Respondent has no rights or legitimate interest in respect of the disputed domain name. No substantiated explanation has been given in response to a Complaint that squarely puts in issue the Respondent’s interest in the name ‘Nuveen’.
Accordingly, this element of the Policy is also satisfied.
C. Registered and Used in Bad Faith
Taking in turn the Complainant’s allegations set out in full above, and testing them against what is required to satisfy paragraph 4(a)(iii) of the Policy:
The disputed domain name is not the name of the Respondent
The Complainant supplies no evidence to support this assertion, which is strictly made in support of paragraph 4(a)(ii) of the Policy rather than paragraph 4(a)(iii). The Respondent similarly provides no evidence in support of his positive assertion to the contrary (beyond a self serving email dated May 4, 2004, to Complainant’s attorneys asserting that he holds school yearbook corroborative evidence, which was not included with the Response). The Respondent’s blog site, in his entry for May 4, 2004, puts the existence of corroborative high school yearbook evidence rather more tentatively (and prophetically) than in his May 4 email:
“In one of the yearbooks I swear there's a picture that just may prove this. I'm trying to get in touch with someone to obtain a copy. I have a feeling I may need it if I want to keep my domain.”.
In this kind of administrative proceeding, where ‘evidence’ cannot be tested, it is hard for a panel to make a finding as to the legitimacy of a person’s nickname. But a complete lack of evidence can at least support a finding of no rights or legitimate interest in respect of the disputed domain name. In this case the Panel doubts the veracity of the Respondent’s nickname assertions given his conspicuous failure to include any relevant yearbook evidence in his Response. This doubt is sufficient to maintain the above finding that paragraph 4(a)(ii) of the Policy is satisfied.
the Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods and services
This contention, presumably intended to anticipate and negate Respondent’s reliance on paragraph 4(c)(i) of the Policy, is either inconsistent with the Complainant’s assertion that the Respondent has attempted to attract users to his site for commercial gain, or is an assertion that whatever goods and services the Respondent offers from his site are not offered bona fide. The evidence does not enable the Panel to make any findings on this issue. If the “www.ebony.com” adult entertainment site were the commercial site in question, the Panel cannot form a view about the bona fides of the Respondent in the face of the denial of any connection contained in Exhibit 10 to the Complaint. If the assertion is that the non-blog content now on the Respondent’s site has that character, the Panel disagrees.
the Respondent’s failure to make a legitimate non-commercial or fair use of the disputed domain name
This unsubstantiated assertion, presumably intended to anticipate and negate Respondent’s reliance on paragraph 4(c)(iii) of the Policy, cannot prevail over Exhibit 10 of the Complaint. To the extent to which the Complainant could have argued (but does not) that the comments on the Respondent’s site that deride the Complainant and its attorneys are not “fair”, the Panel cannot agree. Whilst the Panel takes the view that the tone and content of the Respondent’s site demonstrates his lack of bona fides generally, and perhaps even a use in bad faith of the disputed domain name, the absence of the ground is not evidence of bad faith; it is simply not evidence of good faith that the Respondent could have relied upon.
the obtaining of the disputed domain name “with full knowledge of Complainant’s long prior use and ownership of the NUVEEN mark”
This allegation is apparently made in an attempt to invoke all or part of paragraph 4(b) of the Policy. The Respondent admits to knowing that the Complainant was the registrant of the disputed domain name prior to his successful registration. The Complainant failed to disclose this. Although the Panel is reluctant to infer bad faith registration on the respondent’s part by reason only of that factual background, it is prepared to do so given the other bad faith conduct of the Respondent referred to below. That bad faith is not sufficient, however, to satisfy the elements of paragraph 4(b) of the Policy. First, because there is no evidence of a demand for excess consideration for the disputed domain name that is needed to satisfy subparagraph 4(b)(i) of the Policy; secondly, there is no evidence of a pattern of conduct that would be needed to satisfy subparagraph 4(b)(ii), thirdly, because there is no evidence of business disruption by a competitor of the Complainant, and there is no contention that the Complainant is a competitor of the Respondent for the purposes of subparagraph 4(b)(iii); and fourthly, because there is no evidence of the requisite confusion that would satisfy subparagraph 4(b)(iv) of the Policy.
the Respondent’s provision of false contact information “on the whois query for <nuveen.net>”
The Panel has seen no evidence to support this allegation. On the contrary, and despite the ‘return to sender’ evidence in exhibit 7, it is clear that the owner of the disputed domain name (by whatever or even no name) was in fact contacted at his address in Toronto, Canada.
However, the Panel does regard the Respondent’s refusal to receive Complainant’s attorney’s letter of March 15, 2004, as evidence of bad faith. Indeed the Respondent prospectively boasts about that conduct in his blog in these terms:
“They sent a hard copy by registered mail. I can probably refuse to sign it if it arrives.”
This bad faith, however, is not the kind of bad faith that satisfies paragraph 4(a)(iii) of the Policy, because it is not a bad faith use of the disputed domain name - it is simply bad faith conduct of the Respondent. This bad faith conduct is nevertheless sufficient to support the drawing of adverse inferences against the Respondent wherever this is properly available on the Complainant’s otherwise weak evidence. The Panel declines to accord Respondent any benefit of the doubt in the light of his conduct.
the Respondent’s indication of his willingness to sell the disputed domain name to the Complainant
The Respondent contends, and the Panel agrees, that his mere indication of willingness to sell the disputed domain name after receipt of a communication on behalf of the Complainant cannot be evidence of bad faith absent any mention of a price in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. Exhibit 8 to the Complaint manifests no such demand. Nor is the allegation complete enough or supported by evidence which would satisfy the balance of paragraph 4(b)(i) of the Policy.
the pre March 16, 2004, redirection of the disputed domain name to an adult entertainment website
As noted above, the Complaint baldly asserts that the Respondent
“intentionally attempted to attract, for commercial gain, Internet users, to its site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or on his website.”.
Although obviously intended to attract the operation of paragraph 4(b)(iv) of the Policy, that paragraph is met only if the facts described are “found by the Panel to be present”. The Complaint neither contains nor exhibits any evidence that would enable the Panel to so find, other than the twice repeated assertion that it is so.
Exhibit 9 (which the Panel notes appears to have been generated on March 22, 2004, by direct browsing of the “ebony.com” site) does not show the entry page to the “ebony.com” site, which under a prominent WARNING banner includes the words
“This Website contains sexually-oriented adult content which may include visual images and verbal descriptions of nude adults, adults engaging in sexual acts, and other audio and visual materials of a sexually-explicit nature”
The Panel agrees with the Respondent that consumers would be unlikely to think that such a site emanated from, was affiliated with or endorsed by the Complainant and, in the Panel’s view, it follows that the site, even if entered, would be unlikely to tarnish the Complainant’s mark. In any event, paragraph 4(c) of the Policy is there to be availed of by a respondent, and the Respondent here has not sought to do so. Whilst the Complainant also sought to rely on paragraph 4(b)(iv) to establish the Respondent’s bad faith, the likelihood of confusion that must be shown to satisfy that element is not here present.
The Complainant also sought to dismiss the Exhibit 10 email from the operator of the “www.ebony.com” site as disingenuous. The Panel takes a contrary view. Some framing is conduct which is hard for a framed site’s owner to circumvent. Having said that, it is also fair to observe that the Respondent’s attempt to blame an incorrectly configured Apache server for the ‘redirection’ must be rejected because framing of the “www.ebony.com” site by the Respondent’s site cannot have occurred through any operation of the Apache server, no matter how incorrectly it was configured. Framing is effected by the coding of the page created by the Respondent. The IP address of the server at which that page was located was specified by the Respondent. There is no evidence that the Respondent’s content host erroneously allocated the “www.ebony.com” site’s server to the IP address specified by the Respondent in his <nuveen.net> registration.
In relation to paragraph 4(a)(iii) of the Policy, the Panel has formed the view on balance that the Complainant registered the disputed domain name in bad faith and is now using it in bad faith. This conclusion is reached despite the weak evidence put forward by the Complainant. The Respondent invited the Panel to consider his site through the introduction of Exhibit 11 to the Response. Exhibit 11 is a small excerpt from the site, the full contents of which are sufficient when combined with the Complaint and the Response to persuade the Panel of the lack of the Respondent’s bona fides in his registration and use of the site. The Complainant has the benefit of the totality of the evidence, with the result that the Respondent is “hoist with his own petard”.
For all the foregoing reasons, and despite the very poorly constructed and supported Complaint, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of <nuveen.net> be transferred to the Complainant.
Philip N. Argy
Date: June 18, 2004