WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Bear Stearns Companies Inc. v. Darryl Pope
Case No. D2007-0593
1. The Parties
Complainant is The Bear Stearn Companies Inc., New York, New York, United States of America.
Respondent is Darryl Pope, West Hartford, Connecticut, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bearstearns.org> (the “Disputed Domain Name”) is registered with Schlund+Partner AG (R73-LROR).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2007. On April 20, 2007, the Center transmitted by e-mail to Schlund +Partner AG a request for registrar verification in connection with the Disputed Domain Name. On April 23, 2007, Schlund +Partner AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. On May 1, 2007, 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 Respondent of the Complaint, and the proceedings commenced on May 1, 2007. In accordance with the Rules, Paragraph 5(a), the due date for the Response was set for May 21, 2007. Respondent did not submit a response. Accordingly, the Center notified the Respondent of its default on May 22, 2007.
The Center appointed Steven M. Auvil as the sole panelist in this matter on June 7, 2007. 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
Complainant is a well-known global investment banking, securities trading and brokerage firm. Complainant is the owner of the BEAR STEARNS mark, which was used for the first time in connection with financial services in 1923. Complainant owns numerous worldwide registrations for its BEAR STEARNS mark including, but not limited to, in Argentina, Australia, Benelux, Brazil, Canada, Cayman Islands, Chile, China, Czech Republic, European Union, Russian Federation, France, Hungary, Iceland, India, Israel, Japan, Republic of Korea, Kuwait, Malaysia, Mexico, New Zealand, Norway, Peru, Poland, Romania, Singapore, Slovak Republic, Slovenia, South Africa, Switzerland, Thailand, and Turkey. In the United States of America, Complainant owns six registrations for BEAR STEARNS-related marks, including, but not limited to: Reg. No. 1,868,600 for the mark BEAR STEARNS for various financial services (Registered December 20, 1994, reciting a first use in commerce date of May 1, 1923); Reg. No. 2,064,704 for the mark BEAR STEARNS for certain computer software and computer systems (Registered May 27, 1997, reciting a first use in commerce date of December 1, 1978); and Reg. No. 2,119,742 for various financial services (Registered December 9, 1997, reciting a first use in commerce date of February 20, 1996).
Complainant also submitted documentation evidencing that Complainant has continuously owned and used Internet domain names incorporating the BEAR STEARNS mark (e.g., <bearstearns.com> and <bearstearns.co.jp>) for active web sites through which Complainant markets financial services over the Internet to its customers. Complainant began using the <bearstearns.com> domain name in October 1995.
The Disputed Domain Name was first registered with Schlund +Partner AG on March 4, 2000. Complainant submitted evidence that, as of December 28, 2006, and April 16, 2007, the Disputed Domain Name linked to a web site for a company known as “1+1 Internet Inc.,” a web hosting and domain name registration service. Complainant also submitted evidence that, on July 5, 2006, Complainant sent a letter to Respondent (to the address listed in the Whois record for the Disputed Domain Name) requesting that Respondent cease use of the Disputed Domain Name. Complainant contends that Respondent never responded to the letter and so Complainant filed the Complaint with the Center approximately nine months later.
5. Parties’ Contentions
In its Complaint, Complainant contends that the Disputed Domain Name is confusingly similar to its famous BEAR STEARNS mark.
In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, that Respondent was not authorized by Complainant to use the BEAR STEARNS mark, and that Respondent is using the BEAR STEARNS mark in bad faith and for commercial gain. Complainant further contends that Respondent was not using the Disputed Domain Name in connection with a bona fide offering of goods or services.
Complainant is seeking transfer of the Disputed Domain Name to Complainant.
Respondent did not respond to Complainant’s contentions.
6. Discussion and Findings
The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, Paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, Paragraph 4(a) of the Policy requires Complainant to prove each of the following:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interest in the domain name registered by Respondent; and
(3) that the domain name registered by Respondent has been registered and used in bad faith.
In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed allegations for which there is support, pursuant to Paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences it considers appropriate, pursuant to Paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
Respondent does not dispute, and the Panel finds, that the Disputed Domain Name registered by Respondent is confusingly similar to Complainant’s widely-known BEAR STEARNS mark, which has been registered in the United States of America, the European Union, Japan, and other jurisdictions. All three of Complainant’s United States BEAR STEARNS word marks (Reg. Nos. 1,868,600, 2,064,704, and 2,119,742) were registered on the principal register prior to March 4, 2000, the date of Respondent’s registration of the Disputed Domain Name. However, Complainant’s rights in the BEAR STEARNS mark date back to as early as May 1, 1923, when the BEAR STEARNS word mark was first used for various financial services. The BEAR STEARNS word mark is therefore over 84 years old and gives Complainant priority over those with competing claims to the BEAR STEARNS mark based upon later use. 15 U.S.C. § 1057(c).
This Panel finds that the Disputed Domain Name is substantially identical and, in all cases, confusingly similar to Complainant’s BEAR STEARNS word mark because it fully incorporates that mark without modification. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (October 28, 2003) (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). Moreover, this Panel finds, as several WIPO panels adjudicating previous decisions have already found, that the addition of the .com suffix does not obviate the confusing similarity between the Disputed Domain Name and Complainant’s BEAR STEARNS mark. See, e.g., The Bear Stearns Companies Inc. v. Yi Yanlin, WIPO Case No. D2006-1660 (April 4, 2007) (the .com suffix is for registration purposes only and does not provide any distinguishing feature to avoid any confusion for trademark purposes); Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165 (April 27, 2000) (the addition of the .com suffix is not a distinguishing difference).
For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to the BEAR STEARNS mark, a registered trademark in which Complainant has rights in the United States of America and in numerous countries throughout the world.
B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, Paragraph 4(c).
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent has not submitted any arguments or evidence in rebuttal. Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Finally, there is no evidence that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the BEAR STEARNS mark.
Indeed, Respondent registered the Disputed Domain Name several years after Complainant established rights in its BEAR STEARNS mark through extensive use in many countries worldwide. In short, there is no evidence from which the Panel could conclude that Respondent has rights in or a legitimate interest in the Disputed Domain Name. Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm” / “JCR co.”, WIPO Case No. D2000-1308 (December 11, 2000) (finding that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it was not one which another trader would legitimately choose unless the trader sought to create an impression of association with that complainant, create an impression of association with JUSTERINI & BROOKS products, attract business from that complainant, misleadingly divert members of the public, and/or damage the reputation and business of that complainant).
For these reasons, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Complainant also argues that Respondent registered and used the Disputed Domain Name in bad faith. Specifically, Complainant argues that Respondent’s bad faith is reflected in the fact that: (1) Complainant’s BEAR STEARNS mark is well-known throughout the world; and (2) Respondent has not shown actual or prospective use of the Disputed Domain Name in connection with a bona fide offering of goods or services, but instead uses it to link to and effectively advertise a company known as “1+1 Internet Inc.,” a web hosting and domain name registration service.
The unrebutted evidence in this case supports Complainant’s argument. According to Paragraph 4(b)(iv) of the Policy, evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s trademark by attracting Internet users to a web site for commercial gain. It is reasonable to infer and, in view of Respondent’s failure to file a Response, the Panel is free to infer that Respondent is likely receiving some pecuniary benefit from “1&1 Internet, Inc.” in consideration of directing traffic to that site. See, e.g., COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082 (February 18, 2005) (finding bad faith where the respondent linked the disputed domain name to another web site respecting which the respondent presumably received a portion of the advertising revenue in consideration of directing traffic to that web site).
Further, the notoriety of the BEAR STEARNS mark leads the Panel to conclude that Respondent registered and used the Disputed Domain Name in bad faith. Compare Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562 (July 30, 2002) (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”). See also Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000) (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). The Panel finds it highly unlikely that there could be any legitimate reason for Respondent’s choice of the Disputed Domain Name incorporating Complainant’s widely-known BEAR STEARNS mark, and no explanation is provided by Respondent. See, e.g., eBay, Inc. v. SGR Enterprises, WIPO Case No. D2001-0259 (April 11, 2001) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”); Telstra Co. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (the fact that the complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate”).
For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name <bearstearns.org> be transferred to Complainant.
Steven Auvil Dated: June 22, 2007
Dated: June 22, 2007