WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AllianceBernstein L.P. v. Alliance Investment Management Ltd.
Case No. D2007-0589
1. The Parties
The Complainant is AllianceBernstein L.P., of New York, United States of America, represented by Kenyon & Kenyon, United States of America.
The Respondent is Alliance Investment Management Ltd. of Nassau, Bahamas, represented by Julian R. Brown, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <allianceinvest.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2007. On April 19, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 19, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the domain name is registered in the name “Alliance Investment Management” and providing the Respondent’s contact details. The Center verified that the 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2007. The Response was filed with the Center on May 11, 2007.
On May 22, 2007, the Complainant filed an unsolicited reply.
The Center appointed Alan L. Limbury, Diane Cabell and David Lametti as panelists in this matter on June 14, 2007. The Panel finds that it was properly constituted. Each member of 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
With its headquarters in New York, United States of America, the Complainant is a global investment management firm providing a wide range of services to clients worldwide. It claims to be the registered proprietor of numerous trademarks in many countries for the words ALLIANCE, ALLIANCEBERNSTEIN and ALLIANCE CAPITAL.
In particular, the Complainant claims to be the registered proprietor of United States registered trademark No. 1,761,694 for the stylized word ALLIANCE for the services of providing investment management and investment consulting services for others. That mark was registered on March 30, 1993 in the name Alliance Capital Management L.P., of the same address as that of the Complainant, AllianceBernstein L.P. For the purposes of this administrative proceeding the Panel is prepared to proceed on the basis that the Complainant is the present registrant of that mark.
The disputed domain name was registered on August 28, 1998 in the name Alliance Investment Management. It resolves to a website headed “Alliance Investment Management” which describes the company as “a class one licensed broker dealer investment management advisory firm, providing access to the global market via the Bahamas. Our products include US and international execution of stocks, bonds, options, futures, foreign exchange, commodities, and mutual funds, as well as discretionary asset management services”.
5. Parties’ Contentions
The Complainant contends that the Respondent’s website makes it clear that the Respondent provides, in the United States of America, services which compete directly with those of the Complainant.
It says the disputed domain name is nearly identical and is therefore confusingly similar to its ALLIANCE, ALLIANCEBERNSTEIN and ALLIANCE CAPITAL marks since the word “invest” is simply a generic term for the Respondent’s services, insufficient to dispel confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, which it registered five years after the Complainant’s United States ALLIANCE trademark registration and eight years after the Complainant first used that mark, which the Complainant says is so well known that the Respondent must have intended to trade off the Complainant’s reputation in its ALLIANCE mark, thereby precluding any finding of legitimacy.
Alternatively, the Respondent had constructive or alternatively actual notice of the Complainant’s United States ALLIANCE mark prior to any use of, or demonstrable preparations to use, the disputed domain name in connection with any bona fide offering of goods or services the Respondent might be found to have made.
The Complainant says the Respondent’s website is clearly used for commercial activity, so the Respondent cannot be making a legitimate or fair use of the disputed domain name.
The Complainant contends that the domain name was registered and is being used in bad faith because (a) the word “Alliance” is completely arbitrary when used in connection with financial services; the domain name and the trademark are virtually identical and the Respondent competes with the Complainant; and (b) the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the ALLIANCE, ALLIANCEBERNSTEIN and ALLIANCE CAPITAL trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent, Alliance Investment Management Limited, is incorporated in The Bahamas and is licensed by the Securities Commission of The Bahamas as a Securities Investment Advisor.
The Respondent says it chose the disputed domain name because its company name is Alliance Investment Management Ltd. and the domain name <allianceinvest.com> makes it easier for clients to remember, as opposed to a domain name that does not identify the company.
The Respondent says the parties are not competitors. It denies prior knowledge of the Complainant’s trademark and says the principle of constructive knowledge under United States trademark law does not apply because the Respondent does not conduct business in the United States of America. The Respondent denies the Complainant’s contentions.
The Respondent notes that similar businesses appear to be conducted under the domain names < allianceinvestment.com> registered by a company in Jamaica, West Indies, called Alliance Investment Limited and <alliance-investment.com> registered by a person in Maryland, United States of America.
The Respondent submits that there should be a finding of Reverse Domain Name Hijacking in this case.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 12 of the Rules provides that the Panel in its sole discretion may request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence: SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
The Panel has ascertained that the issues sought to be addressed by the proposed reply are the date of use of the Complainant’s trademarks on the Internet and whether the Respondent conducts business in the United States of America. The proposed reply does not respond to the Respondent’s request for a finding of Reverse Domain Name Hijacking. The Panel is not prepared to receive the unsolicited reply.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No. D2001-1121, and the cases there cited. See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).
The top level domain “.com”, is to be disregarded when considering whether the domain name is identical or confusingly similar to the trademark: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Although the Complainant’s United States registered trademark ALLIANCE is a design mark, the dominant feature is the word “Alliance”, since the design comprises merely a figurative dot over the letter “i”.
The Panel finds that the domain name <allianceinvest.com> is confusingly similar to the Complainant’s registered trademark ALLIANCE, since the presence of the word “invest” does nothing to detract from the distinctiveness of the ALLIANCE mark. It is unnecessary to determine whether the domain name is also confusingly similar to the Complainant’s ALLIANCEBERNSTEIN and ALLIANCE CAPITAL marks.
The Complainant has established this element.
B. Rights or Legitimate Interests
The burden of proof of the absence of rights or legitimate interests in the disputed domain name on the part of the Respondent lies on the Complainant, as it does with the all three elements required to be established in order to entitle the Complainant to any relief. However, once a complainant establishes a prima facie case against a respondent, the burden shifts to the respondent to provide evidence of its right or legitimate interests under paragraph 4(c) of the Policy: see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
Here the Complainant has sought to negate any finding of legitimacy based on sub-paragraphs 4(c)(i) and (iii) of the Policy but has failed to address the circumstances set out in sub-paragraph (ii), namely that the Respondent “as an individual, business or other organization, [has] been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights”. It is apparent, based inter alia on the Whois data and on the Respondent’s website content furnished as exhibits to the Complaint, that the Complainant was well aware, at the time of filing the Complaint, that the Respondent’s corporate name incorporates the disputed domain name. There is no evidence before the Panel to cast doubt on the conclusion that, at the time when the Respondent registered the disputed domain name, its corporate name was the same as it is today, and indeed that the Respondent was and is doing business under that name.
The Panel concludes that the Respondent company has been commonly known by the disputed domain name since before it registered the domain name and that, accordingly, the Complainant has failed to establish this element.
C. Registered and Used in Bad Faith
Having regard to its findings on the previous element, it is unnecessary for the Panel to consider this element.
D. Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See also Rule 15(e). To prevail on such a claim, it has been held that a respondent must show either that the complainant knew of the respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000-0993; or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002-0754.
In finding reverse domain name hijacking in K2r Produkte AG v. Jeremie Trigano, WIPO Case D2000-0622 the Panel noted that, by the time the complaint was filed, the complainant had been informed of and had otherwise ascertained all the facts necessary to establish that the respondent had a legitimate interest in the disputed domain name.
Here the Complainant clearly knew, when it filed the Complaint, that the Respondent’s corporate name is the same as the domain name and that the Respondent, based in The Bahamas, carries on an investment advisory business under that corporate name. Under sub-paragraph 4(c)(ii) of the Policy, these facts, unless rebutted or explained, demonstrate the Respondent’s rights or legitimate interest in the disputed domain name.
The absence from the Complaint of a sufficient rebuttal or explanation of these facts, while the Complaint specifically seeks to negate the other circumstances specified in Paragraph 4(c) by which a respondent might establish rights or legitimate interests, leads the Panel to conclude that the Complainant appreciated that the Respondent’s apparent right or legitimate interest in the disputed domain name, as contemplated in the Policy, was unassailable and to declare, pursuant to paragraph 15(e) of the Rules, that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Date: July 3, 2007