World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arnold Bernhard & Co., Inc. v. PrivacyProtect.Org / Kevin Dale Press

Case No. D2010-1511

1. The Parties

The Complainant is Arnold Bernhard & Co., Inc. of New York, New York, United States of America, represented by Tucker & Latifi, LLP, United States of America.

The Respondent is PrivacyProtect.Org / Kevin Dale Press of Moergestel, the Netherlands, and of Bangkok, Thailand respectively.

2. The Domain Name and Registrar

The disputed domain name <arnoldbernhard.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2010. On September 8, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On September 15, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 15, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on September 16, 2010.

The Center verified that the Amended 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 September 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2010.

The Center appointed Kaya Köklü as the sole panelist in this matter on October 19, 2010. 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

The Complainant is a United States company, established in 1946 with an individual predecessor, Mr. Arnold Bernhard, dating back to 1931. For many years, it provided various kinds of financial investment services and is now mainly holding a majority and controlling block of Value Line Inc. stock. Value Line Inc. provides investment advisory services to mutual funds, institutions and individuals.

In memorandum of the founder of the Complainant, two separate building at universities in the United States bear the name ARNOLD BERNHARD, namely the Arts and Humanities Center at the University of Bridgeport and the Library for the School of Law at the Quinnipiac University.

However, the Complainant has no registered trademark rights, but claims to have long standing common law trademark and trade name rights to the name ARNOLD BERNHARD.

As far as can be seen from the current record, the name ARNOLD BERNHARD is used by the Complainant as a trade and company name at least since 1946, the year of its foundation – and hence was used prior to the registration of the disputed domain name, which was created on April 28, 2010.

The original Respondent was PrivacyProtect.Org, but the relevant Registrar subsequently disclosed that the Registrant of the disputed domain name is Kevin Dale Press from Thailand.

According to the provided evidence in the Complaint, the Respondent has used the homepage linked to the disputed domain name by alleging to be a law firm and using the name and address of the Complainant.

When the Panel visited the disputed domain name on October 25, 2010, there was no content provided anymore.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant argues that it has long standing common law trademark and trade name rights to the name ARNOLD BERNHARD. It is alleged that the Complainant is still one of the leading companies providing financial guidance to the investing community.

The Complainant believes that the disputed domain name was registered and used by the Respondent to fraudulently deceive the public into believing that the Respondent is an actual law firm. It is alleged that the Respondent has used the disputed domain name in order to perpetrate fraudulent financial transactions by making unsuspecting business people think that Respondent is an existing law firm with fiduciary abilities. It is also alleged that the Complainant has received mysterious documents by mail from Switzerland that seem to reference fraudulent payments being made from a private Swiss bank from the escrow account of the Respondent’s mysterious law firm.

It is argued that the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark rights as it fully incorporates the Complainant’s corporate name ARNOLD BERNHARD.

Furthermore, the Complainant asserts that the Respondent has no rights or legitimate interest in respect of the disputed domain name and has registered and used the disputed domain name in bad faith only. In the regard, the Complainant states that it has never granted a license, consent or any other right by which the Respondent would have been entitled to register or use the disputed domain name.

In addition, the Complainant believes that the Respondent has never used and does not intend to use the disputed domain name with a bona fide offering of goods or service. The Complainant rather asserts that the sole reason for registering and using the disputed domain name is to create confusion by having unsuspecting business people believe that the Respondent’s website is that of a real existing law firm.

Finally, the Complainant has no doubts that the Respondent must have known the Complainant well before the registration of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant is obliged to prove that each of the three following elements are satisfied:

(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and been used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

In this regard it is noted that an independent research, by visiting the Internet site linked to the disputed domain name, has been performed by the Panel on October 25, 2010. The competence of the Panel to perform such independent research is in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in an unregistered trademark, to which the disputed domain name is identical.

(i) The preliminary question to answer is whether the Complainant has any trademark rights in the name ARNOLD BERNHARD. According to the case file, the Complainant has no registered trademark rights. However, the Complainant alleges to be the owner of long standing unregistered trademark rights based on common law.

It is an undisputed and well established practice that the Policy protects not only registered but also unregistered marks (Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131). It is further a widely held view among UDRP panelists that a complainant can establish unregistered or common law rights in a personal name, provided the name is actually being used as a trademark in trade or commerce; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.

In the present case, the Panel finds that having no registered trademark rights does not per se preclude the Complainant’s claim of unregistered trademark rights according to common law. The question is whether the Complainant has adduced sufficient evidence to support that claim.

The Panel is well-aware that common law trademark rights can only successfully be asserted, if the name has become a distinctive identifier associated with the Complainant or its goods and services. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the existence of unregistered trademark rights may be proved by length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.

Based on the statements and the provided evidence in the Complaint, the Panel is satisfied that the name ARNOLD BERNHARD has been used since more then 80 years in connection with financial investment guidance and thus has acquired a sufficient level of goodwill among the investing community, in particular in the United States. This conclusion is further supported by the fact that two separate university buildings in the United States are currently named after the founder of the Complainant, Mr. Arnold Bernhard.

The Panel is well-aware that the Complainant is a corporate entity bearing the name Arnold Bernhard & Co., Inc., and not Mr. Arnold Bernhard himself. The Panel accepts that in the present case, the rights in the name ARNOLD BERNHARD as it is used in the corporate name “Arnold Bernhard & Co., Inc.” have been effectively assigned to the Complainant. The Complainant’s name does not only consist of Mr. Bernhard’s name and surname, but also continues to provide financial consulting services as done by Mr. Bernhard since the early 30’s through its majority-owned subsidiary Value Line Inc., a company still providing investment advisory services.

In the light above, the Panel finds that the Complainant has provided adequate grounds showing that it holds unregistered trademark rights in ARNOLD BERNHARD.

(ii) Having accepted the above, the second question to answer is whether the disputed domain name is identical or confusingly similar to the Complainant’s mark. The Panel finds the disputed domain name is apparently identical to the unregistered trademark of the Complainant as it fully incorporates the mark ARNOLD BERNHARD without any further addition - excluding the gTLD identifier “.com”, which is not taken into account by the Panel when assessing identity or confusing similarity (cf. Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786).

(iii) Hence, the first requirement as stated in paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

The Panel further concludes that the Respondent has not demonstrated any right or legitimate interest in the disputed domain name.

While the burden of proof remains with the Complainant, the Panel has recognized that this would result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees in line with prior UDRP panels that the Complainant is required to make out a prima facie case before the responsibility shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to provide any evidence or arguments in order to demonstrate a right or legitimate interest in the disputed domain name, according to the Policy, paragraph 4(a)(ii) and 4(c).

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, license or any similar right to use the Complainant’s mark in the disputed domain name. In particular, the Respondent has failed to provide any evidence or other documents demonstrating rights in the mark ARNOLD BERNHARD, with regard to its mysterious law firm initially presented under the webpage linked to the disputed domain name.

In the absence of a Response by the Respondent, there is also no indication in the case file that the Respondent is commonly known by the disputed domain name.

The Respondent has failed to demonstrate any of the three nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. In particular, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services and there is no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert users or to tarnish the ARNOLD BERNHARD trademark.

Hence, the Panel finds that the Complainant has also satisfied the requirements of 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and used the disputed domain name in bad faith.

First, the Panel believes that the Respondent was well-aware of the Complainant’s trademark rights when registering the disputed domain name. This is apparently the case due to two facts: first, the disputed domain name has been registered well after the Complainant’s trademark ARNOLD BERNHARD has become recognized in the investing community. Second, on the homepage linked to the disputed domain name, the Respondent has used the address of the Complainant as its own address. In particular the second fact – as evidenced by the Complaint – strongly indicates that the Respondent registered and used the disputed domain name in bad faith in order to create the false impression of a well established law firm or at least of having a close link to the Complainant.

A further indication for the Respondent’s bad faith registration of the disputed domain name is the fact that the disputed domain name has been registered via PrivacyProtect.Org, a corporation which seems to register domain names on behalf of third parties without initially disclosing the real identity of the registrants.

The fact that the Respondent has stopped using the disputed domain name in the meantime is an additional indication of the Respondent’s bad faith.

Finally, the Panel finds that the Respondent’s failure to respond to the Complaint also reinforces the Panel’s conclusion that the Respondent has registered and used the disputed domain name in bad faith. This Panel is convinced that if the Respondent did in fact operate a well established law firm in the United States (which is apparently not the case), it would almost certainly filed a response to the Complaint and defended itself in these administrative proceedings.

For the foregoing reasons, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent.

The Panel therefore concludes that the disputed domain name was registered and used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <arnoldbernhard.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Dated: October 27, 2010

 

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