The Complainant is Edward D. Jones & Co. LP of St. Louis, Missouri, United States of America, represented by Senniger Powers LLP, United States.
The Respondent is Edward Jones Financial, of Wauwatosa, Wisconsin, United States.
The disputed domain name, <edwardjonesfinancialgroup.com>, is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2009. On December 7, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On December 8, 2009, Melbourne IT Ltd 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” or “UDRP”), 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 December 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2010.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 14, 2009. 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 is one of the largest financial services organizations in the United States with more than 10,000 branch offices and an additional 590 offices in Canada. Complainant has used its EDWARD JONES mark in the United States continuously since 1941. Complainant is the owner of numerous registered trademarks in the United States and Canada, including EDWARD JONES, EDWARDJONES, EDWARDJONES INVESTMENTS, EDWARD JONES ADVISORY SOLUTIONS, and EDWARD JONES MANAGED ACCOUNT PROGRAM among others. The earliest of the registrations issued on March 7, 1995. The trademarks are used in connection with the investment and financial services offered by Complainant. Complaint, Annex D.
In four of the last five years, a Full Service Investor Satisfaction Study conducted by J.D. Power & Associates ranked Complainant No.1 in investor satisfaction in the United States. Complaint, Annex C.
Respondent is a resident of the United States, and Respondent registered the domain name at issue on May 30, 2003. Complaint, Annex B. While the domain name at issue does not currently resolve to a web site, in the past it has resolved to a web site using the heading Edward Jones Financial Group, and giving a telephone number and email address. Complaint, Annex F. Respondent is not registered with the Wisconsin Department of Financial Institutions under the Edward Jones Financial Group name. Rather, Respondent operates a business under the name “Sterling Financial Associates,” and when the telephone number on the prior web site is called the caller is greeted by “Sterling Financial Associates.” Complainant has submitted evidence that Sterling Financial Associates conducts business at the address listed by Respondent in the Whois. Complaint, Annex I.
Complainant contends that the domain name at issue is confusingly similar to Complainant's EDWARD JONES family of marks in that it includes the EDWARD JONES mark in its entirety and merely appends the common phrase “financial group” which is descriptive of Complainant's business. Complainant further alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue in that Respondent does not conduct business under the EDWARD JONES mark or name and has not been authorized to do so by Complainant. Finally, Complainant contends that Respondent has been using the domain name at issue to resolve to a web site with instructions to call or email “Edward Jones Financial Group,” and that when an Internet user follows those instructions, he arrives at the business of Sterling Financial Associates, who conduct business at the address that Respondent listed in the Whois as Respondent's address.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
The domain name at issue consists of the Complainant's EDWARD JONES and EDWARDJONES marks to which the common English phrase “financial group” has been appended. The appended phrase is merely descriptive of Complainant's business. See, EFG Bank European Financial Group, SA v. Jacob Foundation, WIPO Case No. D2000-0036 (<efgprivate.com> held confusingly similar to EFG PRIVATE BANK mark. Accordingly, the Panel finds that the domain name at issue is confusingly similar to Complainant's mark.
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Respondent has been using the domain name to resolve to a web site at which contact information, if followed, leads to a financial group offering services apparently directly competitive to those offered by Complainant. Moreover the address out of which this competing financial services company operates is the same address as that given to Whois by Respondent as Respondent's address. This constitutes bad faith registration and use. YAHOO!INC. v. David Murray, WIPO Case No. D2000-1013. Accordingly the panel finds that Respondent has registered and is using the domain name at issue 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, <edwardjonesfinancialgroup.com>, be transferred to the Complainant.
M. Scott Donahey
Dated: February 2, 2010