WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IFS Financial Services, Inc. v. Flint O. Agyeman
Case No. D2008-0629
1. The Parties
Complainant is IFS Financial Services, Inc, Cincinnati, Ohio, United States of America, represented by Frost Brown Todd LLC, United States of America.
Respondent is Flint O. Agyeman, Highstown, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <touchstonefinancialinc.com> is registered with Abacus America Inc. dba Names4Ever.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2008. On April 23, 2008, the Center transmitted by email to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the domain name at issue. On April 24, 2008, Abacus America Inc. dba Names4Ever transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 Respondent of the Complaint, and the proceedings commenced on May 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 23, 2008.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on June 5, 2008. 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 subsidiary of Western & Southern Financial Group, Inc., a Fortune 500 company with a heritage that dates back to 1888. Complainant was established in 1991 and includes, as an affiliate, Touchstone securities, Inc., and as a subsidiary, Touchstone Advisors, Inc. (collectively “Touchstone”). Touchstone Securities, Inc. is a registered broker-dealer and a member of FINRA and SIPC. Touchstone Advisors, Inc. is an investment adviser registered with the Securities and Exchange Commission.
Touchstone offers a variety of mutual funds under the Touchstone name. These funds are sold nationally through a network of broker-dealers, financial planners, financial institutions, registered investment advisers, consultants, private banks and 401(k) alliances. The Touchstone equity funds were ranked No. 6 by Barron’s for 2007, and Touchstone was named the No. 36 overall fund family by Barron’s for the same year.
Touchstone operates a website at “www.touchstoneinvestments.com” where potential investors can learn more about the Touchstone funds. Investors in the funds can also access their personal account information on a secure section of the website.
Complainant has used “Touchstone” as a trademark and service mark continuously in connection with its financial products and services sine 1994. Complainant owns several federal trademark registrations for Touchstone for use in connection with financial services and products, including mutual funds, variable annuities and fixed annuities:
TOUCHSTONE Registration No. 1,977, 192, registered May 28, 1996 for financial services, namely investment, management and distribution regarding mutual funds, variable annuities and fixed annuities; and brokerage trade clearing services;
TOUCHSTONE INVESTMENTS Registration No. 2,792,701, registered December 9, 2003 for financial services, namely, investment management and distribution regarding mutual funds, variable annuities and fixed annuities; and brokerage and brokerage trade clearing services;
TOUCHSTONE FUNDS Registration No. 3,229,602 registered April 17, 2007 for financial investment in the field of mutual funds; mutual funds advisory services; mutual fund distribution services; financial portfolio management.
THE TOUCHSTONE FAMILY OF FUNDS Registration No. 1,974,147 registered May 14, 1996 for financial services, namely mutual fund investment, brokerage and distribution.
TOUCHSTONE SELECT Registration No. 2,200,384, registered October 27, 1998 for financial services, variable annuity investments, brokerage and distribution.
In addition, Complainant claims common law trademark rights in other trademarks containing the word “Touchstone.”
Since 2002, Complainant has owned the domain name <touchstoneinvestments.com> where a potential investor can go to learn more about Complainant’s Touchstone funds and access their personal account information on a secure section of the website.
Complainant recently became aware that Respondent had registered the domain name <touchstonefinancialinc.com>. The website located at that domain name is simply a place holder page that states that it is the “future home of Touchstone Financial Inc.” Complainant sent Respondent a cease and desist letter in January 2008, to which Respondent did not respond.
5. Parties’ Contentions
Complainant contends that the domain name is confusingly similar to Complainant’s TOUCHSTONE trademarks, that Respondent lacks any rights or legitimate interests in the domain name, and that Respondent has registered and used the domain name in bad faith.
Respondent did not file a Response to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
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”.
A. Identical or Confusingly Similar
The disputed domain name <touchstonefinancialinc.com> incorporates Complainant’s registered TOUCHSTONE trademark in its entirety. The domain name adds only the non-distinctive terms “financial” and “inc”. “Financial” is generic terms used in the financial services industry and “inc” is a commonly used abbreviation for “incorporated.” The most dominant feature of the domain name is Complainant’s registered TOUCHSTONE mark.
Accordingly, the Panel finds that the domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Respondent is not affiliated or related to Complainant or its subsidiaries in any way, nor is Respondent licensed by Complainant or otherwise authorized to use the TOUCHSTONE mark.
There is no evidence in the record indicating that Respondent is generally known by the domain name. Respondent registered the domain name under his own personal name and that of Heritage Financial Group, LLC.
Respondent’s website located at the disputed domain name is only a placeholder page hosted by the registrar and states that it is the “future home of touchstonefinancialinc.com.”
Respondent is not using the domain name in a bona fide manner. Instead, Respondent is using the domain name to attract Internet users to a website purporting to be the future home of a non-existent company. Respondent appears to be holding the passive website to prevent Complainant from acquiring it. Respondent’s use of the domain name for such purposes is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. Respondent has not put forward any evidence that would rebut Complainant’s case or support a finding that it has rights or legitimate interests in the domain name.
In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests with regard to the domain name at issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
Given Complainant’s prominence in the financial services sector, any domain names incorporating both “Touchstone” and “Financial” is likely to mislead consumers into believing it is affiliated with Complainant. It appears on the current record that the choice of this domain name was clearly made with the intention to trade off Complainant’s TOUCHSTONE marks and/or primarily for the purpose of disrupting the business of Complainant.
Accordingly, the Panel finds the disputed domain name to be registered and used in bad faith.
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, <touchstonefinancialinc.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Date: June 19, 2008