WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rockefeller & Co., Inc. v. All Value Network a/k/a AVN
Case No. D2011-1957
1. The Parties
Complainant is Rockefeller & Co., Inc. of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is All Value Network a/k/a AVN, Network of Phoenix, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <rockyfellerfinancialsolutions.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2011. On November 9, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On November 9, 2011 GoDaddy.com, Inc. 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” 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 Respondent of the Complaint, and the proceedings commenced on November 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 5, 2011.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 8, 2011. 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
Since 1979 Complainant has offered financial services to the general public thus establishing rights in the ROCKEFELLER mark. Additionally, Complainant owns numerous trademarks registrations worldwide evidencing exclusive rights to the ROCKEFELLER trademark in connection with financial services, including United States Trademark Registration No. 3809398 (ROCKEFELLER), registered June 29, 2010 and United States Trademark Registration No. 3414179 (ROCKEFELLER & CO) registered April 22, 2008.
Also, since 1995, Complainant has offered a wide-range of wealth management advice and other financial-related services worldwide through its website, located at the domain name <rockerfellerfinancial.com>.
Respondent registered <rockyfellerfinancialsolutions.com> on May 16, 2011.
5. Parties’ Contentions
Complainant contends that the Domain Name is confusingly similar to its registered ROCKEFELLER trademark, which it has continuously and exclusively used in connection with wealth management and other financial-related services since 1979. The Domain Name is confusingly similar because it incorporates the ROCKEFELLER and ROCKEFELLER FINANCIAL marks in their entirety, replacing only the first “E” in ROCKEFELLER with the letter “Y”. The addition of the generic term “solutions” to the ROCKEFELLER FINANCIAL mark does not distinguish the Domain Name from the ROCKEFELLER trademarks.
Complainant argues that Respondent has no rights or legitimate interests in the Domain Name nor does Respondent have any relationship with Complainant that would give rise to a license, permission or other right by which Respondent could own or use any wording confusingly similar to the ROCKEFELLER trademarks, which is also evidence of bad faith. Respondent is not commonly known by the Domain Name, and the Domain Name is not in any way identified with or related to a right or legitimate interest of Respondent.
The Domain Name was registered on May 16, 2011, long after Complainant’s ROCKEFELLER and ROCKEFELLER & CO. trademarks were first used by Complainant, and long after the marks were first registered in the United States of America. Complainant contends that the ROCKEFELLER trademarks enjoy widespread recognition. Given the fame of the ROCKEFELLER trademarks and the fact that the Domain Name is so similar to Complainant’s well-known trademarks, Respondent’s bad faith may be presumed. Moreover, Complainant contends that the Domain Name is an example of typo-squatting and that it is well settled that the practice of typo-squatting, in and of itself, constitutes bad faith registration.
Respondent did not respond to the Complaint. Because of Respondent’s default, the Panel may accept as true the factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; See paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Given Complainant’s long and extensive use of the ROCKEFELLER trademark and its ownership of numerous worldwide registrations for the ROCKEFELLER trademark, the Panel finds that Complainant has trademark rights in ROCKEFELLER.
The Panel also finds that the Domain Name is confusingly similar to Complainant’s ROCKEFELLER trademark. The Domain Name utilizes a phonetic equivalent of Complainant’s mark by merely replacing the first “E” in the mark with a “Y” and adding the descriptive words “financial” and “solutions” along with the “.com” generic top level domain (gTLD). Panelists have consistently held that the mere addition of descriptive wording to well-known marks, or confusingly similar derivatives thereof, does not avert a finding that the disputed domain name is confusingly similar. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is [ . . . ] without legal significance since use of a gTLD is required of domain name registrants”). The descriptive or generic wording (in this case the addition of “financial solutions”) to a trademark owned by a complainant to create a domain name consisting of multiple words that implies a relationship between the words can and in this case actually does increase rather than decrease the confusing similarity. See Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431 (“[G]iven that the added words describe the business services for which the Complainant’s trademark is registered and used by the Complainant, the additions merely compound the confusion created by the incorporation of the Complainant’s trademark”); and Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 (“if the addition is a term associated with the business of the Complainant [ . . . ] it can even add to the similarity between the domain name and the trademark in question”).
Therefore, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4 of the Policy, the following circumstances if found by the Panel demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or 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 acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial 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.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that Respondent has ever been commonly known by the Domain Name. Further, Complainant has never licensed nor otherwise permitted Respondent to use its ROCKEFELLER trademark or to apply for any domain name incorporating the mark. There is no relationship between Complainant and Respondent.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the Domain Name and has used the Domain Name, or a name corresponding to the Domain Name, in connection with a bona fide offering of goods or services.
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141. The Panel finds that the above facts establish a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Moreover, Respondent has not rebutted such a prima facie showing.
The Panel accordingly finds for Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Complainant’s allegations of bad faith are not contested. Complainant’s allegation of bad faith registration is well founded. It is improbable that Respondent was unaware of Complainant’s trademark rights when it registered the Domain Name on May 16, 2011, since the ROCKEFELLER and ROCKEFELLER & CO trademarks are so well-known worldwide and have been in use in connection with financial services offered to the public since 1979.
Complainant’s uncontested allegations of bad faith use are also well founded. Under paragraph 4(b)(iv) of the Policy, it is evidence of bad faith use that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”.
Respondent used the Domain Name, which is confusingly similar to Complainant’s well-known ROCKEFELLER trademark, to attract users to the website hosted at the Domain Name where Respondent offers competing financial services. The website hosted at the Domain Name lists one of its services as providing “information on the latest and greatest investment opportunities”. This is evidence of Respondent’s intention to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a service on Respondent’s website.
Such an offering of identical competing services constitutes bad faith use of the Domain Name. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“[T]he Panel is persuaded that respondent’s registration and use of the Disputed Domain Name for redirecting Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO decisions also support this conclusion.”) See Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“[R]egistration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Accordingly, the Panel finds that the Domain Name is registered and is being used in bad faith.
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, <rockyfellerfinancialsolutions.com>, be transferred to Complainant
Lawrence K. Nodine
Dated: December 22, 2011