WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Money Tree Software, Ltd. v. Javier Martinez, Money Tree Software, LLC
Case No. D2014-1078
1. The Parties
Complainant is Money Tree Software, Ltd. of Corvallis, Oregon, United States of America (“US”), represented by Mansfield Law Office, Portland, Oregon, US.
Respondent is Javier Martinez, Money Tree Software, LLC, of Altamonte Springs, Florida, US.
2. The Domain Name and Registrar
The disputed domain name <moneytreesoftware.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2014. On June 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing 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 proceeding commenced on July 1, 2014. Under paragraph 5(a) of the Rules, the due date for Response was July 21, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2014.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 1, 2014. 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 is an Oregon corporation that has provided professional financial planning software since 1981. It owns the unregistered or common law trademark MONEY TREE SOFTWARE (the “Mark”) for financial planning software. Complainant registered the business name “Money Tree Software, Ltd” with the State of Oregon Business Name Registry in 1981. Since then, Complainant has continuously used the Mark in sales and advertising, publications and conferences and other marketing efforts throughout the nation.
Respondent registered the Domain Name on September 24, 2013.
5. Parties’ Contentions
In 1997, Complainant began using its website at “www.moneytree.com.” As noted in the January 1998 screen shot from the Internet Archive, Complainant’s website said: “Since 1981 Money Tree Software has been offering quality financial planning and retirement planning software for financial professionals.” The Internet Archive contains 251 similar screen shots dating from December 21, 1997 to February 14, 2014. Complainant has over four thousand customers for its Money Tree Software distributed throughout the United States, including over 150 in Florida. Virtually all of these customers used Complainant’s software well before Respondent’s registration of the Domain Name.
Complainant’s continuous use of the Mark throughout the United States including nationwide sales since 1981 and Internet advertising since 1997 has made it a distinctive identifier associated with Complainant and its goods and services. On February 13, 2014, Complainant filed an application to register the Mark on the principal register with the United States Patent and Trademark Office. The goods and services listed are “Computer software for financial planning or financial advice and instructional user guides sold as a unit” and “Providing temporary use of online non-downloadable cloud computing software for financial planning or financial advice.” The claimed date of first use in commerce is June 1, 1981.
The Domain Name is identical to the Mark differing only in capitalization and spacing required by the hyperlink protocol, and the “.com” top-level domain. Respondents’ services are, when used with the Mark, confusingly similar to those offered by Complainant. Complainant offers financial software: “TOTAL Online improves financial planning for advisors with its easy to understand data input, backed with industry-proven calculations and professional reports.” Respondent also provides financial software, describing its product as “financial software that works on browsers like FireFox, Safari, or Internet Explorer. MyFi Pro© takes all the mystery out of finding better ways to understand, spend, save and manage your money.” The close similarity or identity is also shown by the fact that in a Google search for “money tree software,” the first hit and many of the following hits are to Complainant’s website, “www.moneytree.com.” Further there have been instances of actual confusion (summarized in the record) in which Respondent’s customers mistakenly contacted Complainant with complaints about Respondent’s product or requests for refunds.
There is no evidence available that, before notice of this dispute, Respondent used or prepared to use the Mark in connection with any bona fide offering of goods or services. Internet searches for “money tree software” consistently result in hits for Complainant’s website. A search in the Internet Archive Wayback Machine for “moneytreesoftware.com” shows only two hits. The earliest hit from February 2011 links to a generic placeholder page such as is often seen on abandoned domains, and contains no indication that it is related to the sale of any sort of financial software. The latest hit is from December 2013, and is a page that is similar to Respondent’s current website. A search of the US Copyright Office and US Patent and Trademark Office databases shows that the only registrant or applicant for “money tree software” or “moneytree software” is Complainant, which registered its copyright in its software in July 15, 1981, and applied to register its trademark on February 13, 2014. Complainant has been in the financial planning software industry since 1981. Until this year, it had never heard of Respondent as an individual, business, or other organization. There is no evidence that Respondent has ever been commonly known by the Domain Name.
Respondent is intentionally using the Domain Name for commercial gain and to confuse consumers. The instances of consumer confusion provided in the record show that Respondent’s unsatisfied customers have been unable to reach Respondent by phone or otherwise. Respondent’s bad faith is further shown by its failure to respond to a certified cease and desist letter sent by Complainant’s president to Respondent’s address listed with the Florida State corporate registry on January 28, 2014. Complainant’s counsel also sent a second demand letter to Respondent’s registered agent on or about May 22, 2014. This letter was returned by the post office as “Return to Sender Attempted –Not Known-Unable to Forward.”
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, Complainant must prove each of the following, namely 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
Under paragraph 4(a)(i) of the Policy, a complainant must demonstrate rights in the mark to which it asserts the disputed domain name is identical or confusingly similar. Here Complainant is not relying on a registered mark, rather it asserts unregistered or common law trademark rights in MONEY TREE SOFTWARE. It is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered and unregistered marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.7 (hereinafter, “WIPO Overview 2.0”).
To establish unregistered or common law rights as a trademark in MONEY TREE SOFTWARE, Complainant must show it acquired secondary meaning, i.e., that the public associates the asserted Mark with Complainant’s goods and services. See CPP, Inc. v. Nokta Internet Technologies, WIPO Case No. D2008-0591 (holding that when relying on unregistered or common law rights in UDRP proceedings, “the Complainant must adduce sufficient evidence to demonstrate that the claimed mark has in fact been used as a mark labeling goods or services and, through its use, attracted significant goodwill and reputation associated with the Complainant’s goods or services in a definable market”); WIPO Overview 2.0, paragraph 1.7 (“Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition”).
By virtue of the evidence Complainant has made of record here, the Panel finds Complainant has demonstrated acquired distinctiveness sufficient to establish unregistered or common law trademark rights in the Mark.
As prior panels have recognized, incorporating a trademark in its entirety in a domain name is generally sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark for purposes of the Policy. Insofar as the Domain Name <moneytreesoftware.com> incorporates verbatim the Mark (MONEY TREE SOFTWARE) in which Complainant has established rights, the Panel finds the Domain Name is identical to the Mark. When comparing a disputed domain name and a trademark, the addition of the “.com” suffix may be disregarded for the purpose of determining whether the domain name is identical or confusingly similar to a trademark. Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499. And, in fact, there have been instances of actual confusion.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant asserts that Respondent does not have any rights or legitimate interests in the Domain Name because: (1) Respondent has not been commonly known by the Domain Name nor does it have a trademark or trade name corresponding to the Domain Name; (2) Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain because the Domain Name is being used on a website selling competitive software; and (3) there is no evidence that before notice of this dispute Respondent used the Domain Name in connection with a bona fide offering of goods or services.
Complainant’s assertions and evidence establish a prima facie case, and without contrary evidence from Respondent to rebut such prima facie case, they are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Respondent has failed to invoke any of the circumstances that could demonstrate it did not register and use the Domain Name in bad faith.
Respondent registered the Domain Name in September 2013 well over thirty-two years after Complainant began using the Mark. Given the long-term use of the MONEYTREE Mark to sell financial planning software, including in Florida where Respondent is allegedly doing business, Respondent’s incorporation of the Mark in its entirety in the Domain Name, and Respondent’s use of the Mark to sell financial planning software, the Panel finds it is highly likely Respondent was aware of the Mark when it registered the Domain Name.
With regard to bad faith use of the Mark, Respondent is using a domain name identical to Complainant’s Mark to host a site that advertises and sells financial planning software products that are similar to and compete with those of Complainant. The Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by not only creating a likelihood of confusion but through actual confusion with the Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy.
Additional evidence of Respondent’s bad faith in this case is that Complainant contacted Respondent twice in writing without obtaining any response.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <moneytreesoftware.com> be transferred to Complainant.
Harrie R. Samaras
Date: August 3, 2014