Complainant is AllianceBernstein LP, New York, New York, United States of America (“Complainant”, or “AllianceBernstein”), represented by Kenyon & Kenyon LLP, United States of America.
Respondent is Texas International Property Associates, Dallas, Texas, United States of America (“Respondent”), represented by the Law Office of Gary Wayne Tucker, United States of America.
The disputed domain name <allaincebernstein.com> (the “Domain Name”) is registered with Compana LLC d/b/a Budgetnames.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2008. On August 13, 2008, the Center transmitted to the Registrar by email a request for registrar verification in connection with the domain name at issue. On August 14, 2008, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2008. The Response was filed with the Center on September 9, 2008.
The Center appointed Dana Haviland as the sole panelist in this matter on September 23, 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.
Complainant has rights in its ALLIANCEBERNSTEIN trademark which predate Respondent's registration of the <allaincebernstein.com> Domain Name. Complaint, Exhibits 3 and 4. Respondent is using the Domain Name for click-through revenue from links to third party vendors, including competitors of Complainant. Complaint, Exhibit 5.
Respondent is a known cybersquatter which engages in a pattern of registering domain names incorporating the trademarks of others, parking them on click-through sites for commercial gain, promising to transfer the domain names to the trademark owners when they complain, and then failing to do so for as long as possible, in order to maximize its illegitimate revenues. Complaint, Exhibit 7. The record shows that this case against Respondent reflects the same bad faith tactics. Complaint, Exhibit 8.
Complainant contends that Respondent's Domain Name is confusingly similar to a trademark in which the Complainant has rights.
According to the Complainant, AllianceBernstein L.P. is one of the largest publicly traded global asset management firms in the world, with offices in 47 cities in 25 different countries, providing diversified, global investment management services to institutional, high net worth and retail clients worldwide, and managing billions of dollars. Complainant states that its global reach and reputation have made it one of the world's leading investment management organizations. Complainant maintains its principal website under the domain name <alliancebernstein.com>.
Complainant is the exclusive owner of United States Trademark Registration No. 2,756,848 covering ALLIANCEBERNSTEIN for use in connection with “investment management and investment consulting services for others” (“the ‘848 registration”). Complaint, Exhibit 3. Complainant alleges that, as indicated by the particulars of the ‘848 registration, AllianceBernstein's exclusive rights in its ALLIANCEBERNSTEIN mark date back to at least as early as August 1, 2002, prior to Respondent's 2005 registration of the Domain Name. In addition, Complainant owns seven other federal trademark registrations incorporating the ALLIANCEBERNSTEIN mark for a variety of goods and services. Complaint, Exhibit 4.
Respondent has registered and uses the Domain Name <allaincebernstein.com>. The Complainant contends that the Domain Name is confusingly similar to its ALLIANCEBERNSTEIN mark, in that Respondent has merely transposed the “i” and “a” in “alliance”. Complainant argues that the Domain Name is thus a clear example of “typo-squatting,” the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. According to the Complaint, Respondent does not use the Domain Name website to offer its own goods or services, but rather uses the website to provide links to third party vendors of a variety of services, including services offered by competitors of Complainant. Complainant alleges, upon information and belief, that Respondent receives a commission from each third party vendor whenever users “click-through” from Respondent's Domain Name website to the third party vendor's website. Complainant asserts that such use does not constitute a noncommercial or fair use and gives rise to no rights or legitimate interest of Respondent in the Domain Name.
Complainant contends that Respondent has registered and used the Domain Name in bad faith. Given the distinctiveness of the ALLIANCEBERNSTEIN mark, coupled with Respondent's use of the Disputed Domain Name to redirect users to competitors' websites, Complainant asserts that the only plausible explanation for Respondent's registration is to trade upon the goodwill of the ALLIANCEBERNSTEIN mark for Respondent's commercial gain.
Furthermore, Complainant asserts, Respondent's mere transposition of two of the letters in the ALLIANCEBERNSTEIN mark in the Domain Name constitutes typo-squatting, which has been consistently held to evidence bad faith.
Complainant further contends that Respondent has shown a consistent pattern of conduct in which it has registered domain names that were confusingly similar to another's trademark. According to the Complaint, Respondent has been the responding party in over 125 separate UDRP complaints, many of which were for multiple domain names, before the Center and the National Arbitration Forum, and in greater than 95% of the cases, the domain names were transferred or canceled. Complaint, Exhibit 7.
In order to address this issue without the necessity of bringing a UDRP complaint against Respondent, Complainant sent a cease and desist letter on April 28, 2008 to Respondent. Complaint, Exhibit 8. Although Respondent replied by email on May 2, 2008, promising a response within “15-21 days of the date of [that] email,” Complainant received no further communication from Respondent until July 14, a month and a half after Complainant sent a second cease and desist letter. Id. Despite Respondent's offer to transfer the domain name, Complainant has received no further communication as to when this transfer would occur, despite attempting to contact Respondent on several occasions. Id.
Complainant alleges that Respondent's failure to respond substantively to Complainant's cease and desist letter or to transfer the Domain Name is further evidence of its bad faith acquisition of the Domain Name. Complainant states that Respondent's failure to comply with Complainant's demand, despite the purported offer to transfer the Domain Name, has resulted in significant expenditures of resources of time and money.
Complainant states that the facts set out above make it clear that (i) the Domain Name is confusingly similar to the ALLIANCEBERNSTEIN mark (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith.
Respondent has filed a Response in which Respondent states that it does not admit to the three elements of paragraph 4(a) of the Policy but agrees to the relief requested by the Complainant and consents to entry of an order transferring the Domain Name to the Complainant.
In the Response, Respondent does not present any evidence in opposition to Complainant's evidence with respect to the three elements of Complainant's claim under paragraph 4(a) of the Policy. Specifically, Respondent does not contest Complainant's allegations and evidence of its trademark rights, does not assert or provide evidence of any independent right or interest in the Domain Name, and does not dispute Complainant's allegations and evidence of Respondent's bad faith registration and use of the Domain Name.
Respondent argues, on the grounds of judicial economy, that because it has consented to transfer of the Domain Name, the Panel should order the immediate transfer of the Domain Name to the Complainant without consideration or findings with respect to the merits of Complainant's claim.
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent's domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a).
Complainant has shown, and Respondent has not denied, that Complainant has rights in its ALLLIANCEBERNSTEIN trademark. The Domain Name incorporates Complainant's mark in its entirety, merely transposing two letters, a classic example of typosquatting, “a practice by which ‘a registrant deliberately introduces slight deviations into famous marks' for commercial gain”. See FirstRand International Limited, FirstRand Bank Limited v. Virtual Sky, WIPO Case No. D2007-0701 (finding <ebuks.com> confusingly similar to eBUCKS trademark);. ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding <espnnews.com> confusingly similar to the ESPNEWS trademark); Marriott International, Inc. v. Seocho, NAF Case No. FA 0149187 (finding <marrriott.com> confusingly similar to Marriott).
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights, and that the Complainant has thus established the first element of its claim under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, respondent used, or made 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has not acquired trademark or service mark rights; or
(iii) respondent is 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.
Respondent is using the Domain Name for a website with links to third party vendors of services, including some in competition with Complainant, for the purpose of commercial gain from click-through revenues. It has been consistently held that such use does not give a registrant a right or legitimate interest in a domain name. See MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550 (“Use of the domain name in connection with such a commercial link service is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the domain name.”).
Respondent has neither denied this use of the Domain Name nor provided any evidence of any other possible right or legitimate interest in the Domain Name. The Panel finds that the Complainant has established the second element of its claim under paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Patrick Pawlicki v. The Plastiform Company, WIPO Case No. D2007-1206.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:
(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
It is well-established that use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy. See e.g., Cigna Intellectual Property, Inc. v. Yun Sung Lee, WIPO Case No. D2003-1042 (“By advertising products which might be generally associated with the Complainant's mark, it appears that the Respondent is attempting for commercial gain to attract Internet users by creating a likelihood of confusion with the Complainant's mark.”); Las Vegas Sands, LLC v. Michael Silver, WIPO Case No. D2006-0979; American Management Association International v. Mode L, WIPO Case No. D2007-0418. Complainant has established bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy.
As Complainant has shown, Respondent is a serial cybersquatter, the subject of many UDRP cases, the great majority of which have resulted in findings of Respondent's bad faith registration and use of domain names. In one case involving Respondent, Usborne Publishing Limited v. Texas International Property Associates, WIPO Case No. D2007-1913, the panel noted that “the numerous prior decisions against the Respondent [Texas International Property Associates] on the issue of bad faith do constitute a pattern of the kind referred to in paragraph 4(b)(ii) of the Policy.” The Usborne panel found that “Respondent [Texas International Property Associates] is engaged in classic typosquatting, and appears from the evidence before the Panel to have previously engaged in a pattern of such conduct.” Id.
The panel in the Usborne case further chose to make a finding on the issue of bad faith despite Respondent's agreement to transfer the domain name in dispute, noting that:
“If panels simply comply with respondents' surrender when a complaint is filed, and refrain from making factual findings that are open to them which would otherwise be evidence of a pattern, inappropriate “cybersquatting” conduct might be perpetuated.”
Id. See also Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190 (panel chose to decide case on merits despite respondent's consent to transfer). Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, involving this Respondent's usual spurious offer to transfer the domain name, the panel proceeded to decide the case on the merits, because:
“Respondent appears to be engaged in a pattern of registering domain names that are confusingly similar to a trademark in which the Respondent has no rights, and then attempting to avoid or delay a decision on the merits. The Panel believes that a discussion of this pattern of conduct may be helpful to other Complainants and WIPO Panels.
If Respondent had sincerely wished to transfer the Domain Name, it would have been a simple matter for it to do so. Respondent's failure to follow through on its offer to transfer suggests that Respondent is attempting to delay the inevitable transfer of its Domain Name so as to generate another month or two of revenues. This conduct is inconsistent with the Policy and is resulting in a waste of resources of the Center and of multiple Complainants.”
Accord, Messe Frankfurt GmbH v. Texas International Property Associates, WIPO Case No. D2008-0375. See also President and Fellows of Harvard College v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0597.
This Panel agrees with the foregoing cases and finds that the Respondent in this case has registered and used the Domain Name in bad faith, under paragraphs 4(b)(ii) and (iv) of the Policy, and has long engaged in a pattern of such conduct. The Panel finds it regrettable that the Policy and Rules do not include a provision for an award of costs and attorneys' fees in such cases.
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 <allaincebernstein.com> be transferred to the Complainant.
Dated: October 12, 2008