WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Value Line, Inc. v. Fundacion Private Whois / PPA Media Services, Ryan G Foo
Case No. D2013-1310
1. The Parties
The Complainant is Value Line, Inc. of New York, United States of America, represented by Herrick, Feinstein LLP, United States of America.
The Respondent is Fundacion Private Whois of Panama, Panama / PPA Media Services, Ryan G Foo of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <valuelinefunds.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2013. On July 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2013, the Registrar 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 August 6, 2013 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 August 12, 2013.
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 August 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2013.
The Center appointed Derek M. Minus as the sole panelist in this matter on September 12, 2013. 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 public company traded on the NASDAQ Stock Exchange and the highly respected publisher of a variety of unique investment research publications. It is a provider of various investment fund and related products and services, which have been offered under a VALUE LINE family of marks since at least 1941.
The Complainant’s signature weekly advisory publications are published directly or through controlled subsidiaries in both print and electronic media formats under the VALUE LINE mark. These publications are among the most highly regarded and widely used independent investment research resources in global investment and trading markets, tracking approximately 1,700 publicly traded stocks in over 90 industries.
The Complainant’s publication, The Value Line Fund Advisor, is one of the most widely circulated investment publications in the United States. Its other publications include:
- The Value Line Investment Survey, one of the world’s major periodical investment services,
- The Value Line Investment Survey - Small and Mid-Cap Edition,
- The Value Line 600,
- Value Line Select,
- Value Line Dividend Select,
- The Value Line Fund Advisor,
- The Value Line Fund Advisor Plus,
- The Value Line Special Situations Service,
- The Value Line Daily Options Survey and
- The Value Line Convertibles Survey.
The Complainant also markets investment analysis software under the names The Value Line Investment Analyzer and Value Line Mutual Fund Survey for Windows. The Complainant markets its print and electronic services to retail and institutional investors using its websites, “www.valueline.com” and “www.valuelinepro.com” as well as through media, direct mail and by email.
The Complainant provided evidence of trademark registrations for its service mark VALUE LINE and derivative variations of it, that were registered in some 47 countries worldwide. Of these the Complainant owns 84 registered trademarks worldwide for the mark VALUE LINE and 106 trademarks for trademarks that contain the VALUE LINE mark. The VALUE LINE mark was first registered in the USA in 1941 and in the European Community in 1996. These registrations cover various goods and services, including: stock charts and periodical publications in the fields of investment information and advice; investment advisory services; investment fund services; mutual funds management services; computer programs in the field of financial investment management and analysis; computerized database services in the field of financial investment management and analysis; newsletters, printed reports and magazines in the field of financial investment and analysis; and financial information provided via electronic means.
Since at least 1998, the Complainant has operated its primary website at the domain name <valueline.com>. In addition, the Complainant or its wholly-owned subsidiaries have registered some 17 generic top-level domain names that incorporate the VALUE LINE mark, including the following: <valueline.com>, <value-line.net>, <value-line.biz>, <valueline.net>, <valuelineinc.com>, <valuelineinc.net>, <valuelinemutualfunds.com>, <valuelinemutualfunds.net>, <valuelineonline.com>, <valuelineoptions.com>, <valuelineoptions.net>, <valuelinepicks.com>, <valuelinepublishing.com>, <valuelinepublishing.net>, <valuelineresearch.com> and <valuelineselect.com>.
5. Parties’ Contentions
Due to their extensive and long-standing use and registrations around the world, the Complainant’s VALUE LINE marks have become famous and acquired very substantial good will within the fields of investment information and advice, investment advisory services and mutual fund management services.
The Complainant has used and actively promoted its famous VALUE LINE marks for numerous years, and has invested considerable time and money establishing exclusive proprietary rights in its VALUE LINE trademarks for investment related goods and services.
According to the Complainant, the Respondent that has registered the disputed domain name, Fundacion Private Whois, is a private proxy service for an unknown individual or entity which acts as a shield for bad faith activity. The Respondent first registered the disputed domain name on November 11, 2009, at a time that nearly all of Complainant’s trademark registrations had been issued or renewed, and more than 68 years after Complainant first started using its VALUE LINE mark in the United States in 1941.
The Complainant has provided information regarding several recent WIPO UDRP proceedings against the same Respondent, including Kraft Food Group Brands LLC and Kraft Foods Global Brands, LLC v. Fundacion Private Whois / PPA Media Services, WIPO Case No. D2013-0634; Delta Dental Plans Association v. Fundacion Private Whois / PPA Media Services, WIPO Case No. D2012-1440 and Tracy Morgan v. Fundacion Private Whois / PPA Media Services, Ryan G Foo, WIPO Case No. D2013-0078. In all of these cases the domain name was registered by the Respondent via a domain name privacy service, Fundacion Private Whois. In each of these cases the Respondent defaulted and the domain names were transferred to the complainants.
The Respondent is not known by the disputed domain name nor affiliated with the Complainant in any way. The Respondent’s use of the VALUE LINE trademark in its entirety, combined with a generic term related to the Complainant’s activity, demonstrates that the Respondent was aware of the existence of the Complainant’s mark and deliberately set out to use it to trade on the fame, good will and many decades long use of the VALUE LINE trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Respondent was given notice of this proceeding in accordance with the Rules but failed to file a Response to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any way. The Respondent’s failure does not automatically result in a decision in favour of the Complainant. To succeed, the Complainant must still demonstrate that all of the elements identified in paragraph 4(a) of the Policy, have been satisfied.
However, as the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the Respondent’s failure to submit a Response as the Panel considers appropriate (Rules, paragraph 14(b)).
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s VALUE LINE mark, as it reproduces the Complainant’s trademark in its entirety. It has been consistently held in numerous UDRP decisions that a domain name is generally considered as identical or confusingly similar to a complainant’s trademark “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
The addition of the generic word “funds” does not diminish the confusing similarity between the disputed domain name and the Complainant’s VALUE LINE trademarks. Instead, it is indicative of the “fund management” and “investment systems” advice for which the Complainant is well-known through its research publications. The addition of “.com” at the end of the disputed domain name offers no substantive, meaningful or material change to the disputed domain name to differentiate it from the trademarks owned by the Complainant.
Therefore the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s registered VALUE LINE trademark.
B. Rights or Legitimate Interests
The second element that a complainant under the Policy must show is that, on the balance of probability, the respondent has no rights or legitimate interests in the disputed domain name. If a complainant shows that prima facie the respondent has no rights or legitimate interests, the onus then reverts to the respondent to displace that presumption.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate its rights or legitimate interests in the disputed domain name including the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.”
The Complainant owns the exclusive rights in its VALUE LINE mark and has never licensed, authorised nor permitted the Respondent to register or use its VALUE LINE trademark or the disputed domain name <valuelinefunds.com>.
The Respondent is not affiliated with the Complainant in any way nor has it any prior rights or legitimate interests in the disputed domain name, as the registration of the VALUE LINE trademark by the Complainant preceded the registration of the disputed domain name by many years.
The Respondent is not making any legitimate noncommercial or fair use of the VALUE LINE trademark. The Respondent has never been commonly known by the disputed domain name, nor is it offering any goods or services of its own, under the VALUE LINE mark or the domain name <valuelinefunds.com>. The website to which the disputed domain name resolves is a “pay-per-click” site that is commercial in nature and provides advertising links to third party products and services, some of which compete with the Complainant and/or its subsidiaries. Under paragraph 4(c)(i) of the Policy “it is the use of the domain name that must be bona fide, not the offering of goods or services”, see Swinburne University of Technology v. Swinner a/k/a Benjamin Robert Goodfellow, WIPO Case No. DAU2004-0003.
The Respondent cannot claim any actual or contemplated bona fide use or legitimate interest in the disputed domain name as it would appear that the Complainant’s use of its VALUE LINE trademark is so longstanding and geographically extensive, that the Respondent adopted the disputed domain name to create a confusion in the mind of consumers to believe that the Respondent was related to, affiliated to, sponsored by, or endorsed by the Complainant. The Panel notes that the Respondent’s actions are similar to those noted by the panel in a recent WIPO UDRP decision against the same Respondent. In Dyson Limited v. PPA Media Services, Ryan G Foo (also known as Fundacion Private Whois Domain Administrator), WIPO Case No. D2012-0897, the panel found that: “the Respondent kept its identity secret by using a private registration. Its website (‘www3.dysonball.com’) does not identify the Respondent. The website is a pay-per-click website and has no content other than to provide links to other websites that advertise products which are similar to the Complainant’s and/or compete with the Complainant. This, in the Panel’s view, does not constitute a bona fide offering of goods within the meaning of paragraph 4(c) of the Policy. It also constitutes illegitimate commercial use of the Disputed Domain Name to the Panel in the circumstances.”
As the Respondent has not submitted a response to the Complaint, there is no evidence to counter the Complainant’s contentions or demonstrate that the Respondent has any right or legitimate interest in the disputed domain name. If anything, the evidence provided by the Complainant shows that the Respondent is making use of the disputed domain name for a purpose that is antithetical to a bona fide offering of goods or services. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish both that the Respondent has registered and uses the disputed domain name in bad faith. The consensus view among UDRP panels is that these requirements are conjunctive. Thus, a complainant must prove both bad faith registration and bad faith use in order to satisfy the requirements of paragraph 4(a)(iii) (see e.g. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011). The Complainant bears the onus of proof in these matters.
It is clear on the evidence provided that the Complainant has made extensive and longstanding use of its VALUE LINE mark for a range of investment advisory and mutual fund related publications and services dating back, at least in the United States, to 1941. As the Complainant owns numerous registrations worldwide for its VALUE LINE trademark all of which pre-date the Respondent’s recent registration of the disputed domain name, it is implausible that the Respondent was unaware of the Complainant’s use of its mark for a wide variety of investment publications, investment research services and mutual fund offerings, when it registered the disputed domain name on November 11, 2009.
The Respondent’s use of a “pay-per-click” website supports a finding of bad faith in both the use and registration of the disputed domain name. The Panel finds that the Respondent’s use of the disputed domain name in directing consumers and potential consumers to products or services that compete directly with those of the Complainant, indicates that the Respondent has intentionally attempted to attract Internet users to the website to which the disputed domain name resolves, in order to obtain a commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of products offered for sale, see Volkswagen AG v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2013-0690 and Kraft Food Group Brands LLC and Kraft Foods Global Brands, LLC v. Fundacion Private Whois / PPA Media Services, WIPO Case No. D2013-0634. In both these cases the respective panels found that, the respondent’s website at the disputed domain name, with sponsored links leading to the websites of competing manufacturers was a clear sign that the respondent was acting in a way as to profit from the use of the disputed domain name by generating pay-per-click revenue and attract Internet users to the websites for its own commercial gain, in breach of the Policy.
The Panel therefore finds that paragraph 4(b)(iv) of the Policy is made out and that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.
For 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 <valuelinefunds.com> be transferred to the Complainant.
Derek M. Minus
Date: September 26, 2013