The Complainant is Edison Investment Research Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Jeffrey Green Russell, United Kingdom of Great Britain and Northern Ireland.
The Respondent is N/A:y84tjytj of New Jersey, United States of America.
The Disputed Domain Name <edisoninvestmentresearch.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2010. On April 20, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On April 20, and April 24, 2010, GoDaddy.com, Inc. 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 April 26, 2010 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 26, 2010. The Center verified that the Complaint together with 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 April 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on May 26, 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.
The Complainant is an independent investment research company based in the United Kingdom which since commencing operations in 2003 has gained industry recognition with awards in the United Kingdom and internationally and provides its services worldwide. It has made a Community Trade Mark application for its combined device and word mark which features the mark Edison Investment Research under application number 8975377.
The Disputed Domain Name was registered on March 22, 2004.
The Complainant submits that it has developed common law rights in its “Edison Investment Research” name and mark as a result of its business activities since 2003.
In particular the Complainant says that it is Europe's leading investment research company and has won industry recognition through the numerous awards gained since commencing in business including for example the AIM UK Best Research rewards in 2007 and 2009. It operates its business on-line through its website at “www.edisoninvestmentresearch.co.uk” and has around 2,500 reader customers spread across numerous countries, including 598 in the United States and 180 in Canada. The Complainant has been referred to in the press and in industry publication on numerous occasions. It has an annual turnover in excess of 3,000,000 Sterling and annual advertising revenues of around 100,000 Sterling. The Complainant submits that the Disputed Domain Name is identical to the Complainant's EDISON INVESTMENT RESEARCH mark.
The Complainant says that the Respondent has no rights or legitimate interests in the Disputed Domain Name because it has not authorised the Respondent to use the Disputed Domain name, there is no evidence that the Respondent is in fact using it in connection with a bona fide offering of goods and services. In addition, according to the Complainant, the Respondent is not making any legitimate noncommercial use and the Disputed Domain Name has been suspended since March 2010 because it contains invalid WhoIs information.
As far as the third element under the Policy is concerned, the Complainant says that the Respondent must have known of its business and existence at the time of registration and that this inference is only supported by the failure of the Respondent to respond to the Complainant's complaint letter and attempts to obtain transfer of the Disputed Domain Name on a negotiated basis. The Complainant says that the Respondent however did offer to sell the Disputed Domain Name for a fee of 10,000 - 15,000 Sterling by e-mail through the Complainant's Domain Name Recovery Manager. The Complainant submits that this is evidence of the Respondent having registered or acquired the Disputed Domain Name primarily for the purpose of selling it or of having had the intention of using the Disputed Domain Name to attract and confuse consumers by effectively trading off the goodwill and reputation attached to the Complainant's name and mark.
The Respondent did not reply to the Complainant's contentions.
The Complainant has in the Panel's view made out its case that it has developed a protectable goodwill and reputation which attaches to its EDISON INVESTMENT RESEARCH name and mark since 2003. The Complainant has provided considerable evidence of the use and renown of this name and mark within the funds or financial services industries and of the scope of its business. Although its Community Trade Mark Application for this word mark is still pending, it is significant that it runs its on-line business through a website at the domain name <edisoninvestment research.co.uk> which wholly incorporates its word mark and the key element of the Disputed Domain Name. The Panel notes that the Complainant generates considerable revenues from its activities and spends proportionately on advertising its business under its mark and name. Overall the evidence is in the Panel's view sufficient to support its claim to protectable goodwill for the purposes of successfully asserting unregistered trademark rights under the Policy consistent with previous cases such as Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 (<idealeague.com>)
The key elements of the Disputed Domain Name are identical to the Complainant's EDISON INVESTMENT RESEARCH mark and as a consequence the Complainant succeeds under the first element of the Policy.
There is no evidence that the Respondent has used the Disputed Domain Name in relation to any bona fide offering of goods or services since registration in 2004. It appears as noted below that the Respondent has not provided up to date contact information to the Registrar, although the Panel notes that it is satisfied that the Respondent received the Complaint by courier based on the acknowledgement slip and the subsequent negotiations concerning a possible sale of the Disputed Domain Name. None of this is consistent with the Respondent having a right or legitimate interest in the Disputed Domain Name.
For completeness the Panel notes that the Complainant has not authorised the Respondent's use and there is no evidence that it is being used for non-commercial purposes. In these circumstances and supported by the discussion set out below the Panel finds that the Complainant has made out its case under the second element of the Policy.
As noted above there is no evidence that the Respondent has ever used the Disputed Domain Name in relation to an offering of bona fide goods or services. Coupled with the Respondent's failure to provide correct electronic and telephone contact details and its attempt to sell the Disputed Domain Name for GBP 10,000 to 15,000 being a sum considerably more than the out-of-pocket costs associated with its registration, these circumstances are all in the Panel's view indicative of bad faith.
Under paragraph 4(b)(i) of the Policy, the registration and use of a domain name in bad faith may be inferred where the domain name was registered or acquired primarily for the purpose of selling the domain name for more than the out-of- pocket costs associated with its acquisition. In this case there is no indication of any bona fide reason for the Respondent's registration of the Disputed Domain Name. Its attempt to sell the Disputed Domain Name at a very significant profit to its registration and holding costs together with its failure to provide up to date contact information are indicative both of an intention to simply hold the Disputed Domain Name for resale and of bad faith. In these circumstances it is just not credible to believe that the Respondent might have chosen as distinctive a name as the Disputed Domain Name arbitrarily and co-incidentally in 2004. Accordingly, the Panel finds that the criteria in paragraph 4(b)(i) are made out and the Complainant succeeds in relation to the third element of the Complaint.
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 <edisoninvestmentresearch.com> be transferred to the Complainant.
Dated: June 1, 2010