WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Spear Holdings, Inc. v. Private Registrations Aktien Gesellschaft

Case No. D2011-0528

1. The Parties

Complainant is Spear Holdings, Inc. of Hartford, Connecticut, United States of America, internally represented.

Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.

2. The Domain Name and Registrar

The disputed domain name <spearreport.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2011. On March 23, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On March 23, 2011, Network Solutions, LLC 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 April 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2011.

The Center appointed Nasser A. Khasawneh as sole panelist in this matter on May 12, 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

Complainant was formerly holder of the United States registration for the trademark THE SPEAR REPORT CONSENSUS OF LEADING ANALYSTS, originally issued on July 25, 2000, as United States trademark registration number 2370523, in International Class 16. Complainant’s United States registration was cancelled on April 28, 2007.

The disputed domain name at the time of the decision routed to a web page displaying links to websites in the investment advising and analysis field.¹ The disputed domain name was originally registered on February 6, 1999.

5. Parties’ Contentions

A. Complainant

Complainant avers that it has commercially provided financial reports and other financial services products since 1995, and that Complainant applied for the United States trademark registration described above on March 17, 1999. Complainant explains that the trademark registration expired through Complainant’s administrative oversight on April 28, 2007, and that Complainant has now re-filed to restore its registration for the trademark THE SPEAR REPORT CONSENSUS OF LEADING ANAYLYSTS.

Complainant further avers that the registration for the disputed domain name <spearreport.com> was permitted to lapse – again through administrative error which Complainant blames on its technical personnel – on February 6, 2011, and that following the 35-day grace period provided by the registrar, Respondent acquired registration of the disputed domain name.²

Complainant contends that it has used the brand “The Spear Report” since 1999 and “that the disputed domain name is not only identical to [Complainant’s] principal product and brand but also confusingly similar to its other domain names <spearreport.org, spearreport.net, spearreport.biz, spearreport.info, and spearsetfanalyst>.” Complainant also contends that “The Spear Report” and “spearreport.com” are well-known.

Complainant further alleges that Respondent “does not trade under the name ‘The Spear Report’, and there is no evidence to suggest that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. To the contrary, the Respondent is merely using the disputed domain name to attract people interested in the Complainant’s products. Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use its established mark or to apply for any domain name incorporating the mark.”

With respect to bad faith under the Policy, Complainant alleges that the disputed domain name is used for a “click-through” website directing users to financial websites and that “Respondent has a history of illegally using domain names in this manner, as has been established in 14 decisions rendered by UDRP panels against the Respondent.. . . Respondent registered the disputed domain name in order to attract Internet users to the Respondent’s website by creating confusion with the Complainant’s product(s) and that such activities are a continuation of the documented history of the Respondent’s activities demonstrating that the Respondent is acting in bad faith, both in the registration of the disputed domain name and in the use of the said domain name as has been found in all 14 decisions submitted with this complaint . . . .”

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Rules require the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish with respect to the disputed domain name the elements of paragraph 4(a) of the Policy, namely:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

The Panel finds that the disputed domain is confusingly similar to a trademark in which Complainant has rights, as elaborated below.

Panels disregard the domain name suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; and Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.

The Complaint provides insufficient evidence to support its allegations that “The Spear Report” and “spearreport.com” are well-known or, indeed, have even achieved trademark status. However, although Complainant’s United States trademark registration expired in 2007, Complainant’s use in United States commerce of THE SPEAR REPORT CONSENSUS OF LEADING ANALYSTS mark, combined with its prior registration of the mark, persuades the Panel that Complainant has common law rights in the mark in the United States that are sufficient under the Policy.

While the disputed domain name is not identical to Complainant’s trademark, the Panel agrees with Complainant that the disputed domain name, which includes the first two words of Complainant’s trademark, is confusingly similar.

The requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

Complainant avers that Respondent is not commonly known by the disputed domain name, that Complainant has not licensed or authorized Respondent, and that Respondent’s use of the domain name is not bona fide, but instead limited to display of a commercial website containing links to financial websites. In the absence of a response, the Panel accepts as true these undisputed factual averments by Complainant.

As shown in exhibits to the Complaint, Respondent’s website at the disputed domain name displayed links to third-party websites. The diversion of traffic to third parties and their products demonstrates that Respondent is using the disputed domain name for commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd., WIPO Case No. D2006-1079.

In short, the Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant’s mark for Respondent’s own commercial purposes. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that the Complaint makes out a prima facie case.

Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in the disputed domain name.

Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.

Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith registration and use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Based on the July 2000 date of Complainant’s initial United States registration of the trademark, and without prejudice to whether Complainant may hold earlier common law rights in the mark, the Panel notes that Complainant’s common law rights in the trademark arose prior to Respondent’s registration, on February 6, 2011, of the disputed domain name <spearreport.com>. Under the circumstances, the Panel infers that Respondent must have been aware of Complainant’s prior use of the disputed domain name and its trademark before registering.

In the words of another panel, “It seems [highly] unlikely . . . that Respondent would have chosen this name randomly.” Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236. The Panel finds therefore that the domain name registration was made with the intention of trading on the value of Complainant’s trademarks. This constitutes registration in bad faith for purposes of the Policy.

As noted above, screen shots of Respondent’s website provided as an annex to the Complaint show that the disputed domain name has been used to promote the products of competitors of Complainant. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; and Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088). Respondent’s failure to submit any response to the Complaint is further evidence of bad faith.³

The Panel concludes that the requirements of the Policy paragraph 4(a)(iii) are fulfilled.

7. Decision

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

Nasser A. Khasawneh
Sole Panelist
Dated: May 28, 2011

¹ The Panel has undertaken limited research by visiting the website to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5. The content displayed on the website on line is similar to its content in annexes to the Complaint.

² Although not stated by Complainant, the Panel infers that Complainant owned the registration for the disputed domain name <spearreport.com> until its expiration in February 2011.

³ Complainant also alleges, as described above, that the existence of several other transfer decisions under the UDRP against the named respondent shows a history of bad faith conduct similar to that which appears in the present circumstances. The respondent named in this proceeding, however, appears to be a privacy registration service provider, not an individual registrant. The Panel has established the existence of Respondent’s bad faith on other grounds; the Panel refrains, therefore, from expressing a view on whether a history of panel decisions finding bad faith in cases naming a privacy registration service has relevance to finding bad faith under the Policy against an individual registrant or real party in interest.