WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Investor's Business Daily, Inc. and Data Analysis, Inc. v. Whoisguard Protected, Whoisguard Inc. / Arnoldas Miejauskas
Case No. D2017-0797
1. The Parties
The Complainant is Investor's Business Daily, Inc. and Data Analysis, Inc. of Los Angeles, California, United States of America ("US"), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, US.
The Respondent is Whoisguard Protected, Whoisguard Inc. of Panama, Panama / Arnoldas Miejauskas of Palanga, Lithuania.
2. The Domain Name and Registrar
The disputed domain name <ibdhomestudyprograms.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2017. On April 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 April 25, 2017 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 amendment to the Complaint on April 26, 2017.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2017.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on June 2, 2017. 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 Investor's Business Daily, Inc. and Data Analysis, Inc. of Los Angeles, California, US.
Investor's Business Daily (IBD), founded in 1984, is a leading financial news and research organization recognized for proprietary stock screens, comparative performance ratings and a record of identifying stock leaders as they emerge, as well as for its commentary on the economic, political and social issues. Data Analysis, Inc. (DAI) is a holding company for IBD and owns certain trademarks used by IBD. Therefore, they are related corporate entities.
The Complainant's goods and services include its publication "Investor's Business Daily"; premium online investing products; live investing workshops; home study programs and a library of investing books, all of them offered via the website known as "IBD store", at "www.investors.com/ibd-store", which is online since at least 2007.
The Complainant owns several trademark registrations around the world for marks comprising IBD, including the US trademark registration for IBD dated from 2005 (registration number 3028338, granted on December 13, 2005).
The disputed domain name was registered on November 26, 2016. The disputed domain name resolved to a website offering unauthorized copies of IBD programs. The website is currently inactive.
5. Parties' Contentions
The Complainant states that it owns trademark registrations in several jurisdictions for IBD, and that the disputed domain name incorporates its trademark.
According to the Complainant, the disputed domain name is confusingly similar to its trademark and the inclusion of the generic words "home", "study" and "programs" increases the possibility of confusion by the consumers, since the Complainant offers "home study programs" in connection with the services associated with its IBD mark.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, is not commonly known by the disputed domain name and it has not acquired any trademark rights related to the disputed domain name.
The Complainant argues that the Respondent was using the disputed domain name in connection with a website that falsely appears to be a website for the Complainant that offered for sale unauthorized copies of IBD "home study programs".
In addition, the Complainant alleges that the Respondent's website used Complainant's other marks such as INVESTOR BUSINESS DAILY and CAM SLIM, both protected in the US, increasing the likelihood of confusion between its website and the Complainant.
The Complainant also mentions that a further indication of bad faith is the fact that the Complainant's registration for the trademark IBD predates the registration of the disputed domain name by almost 20 years, which means that the Respondent knew or should have known the IBD mark.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of the trademark IBD in several classes of services and products in various jurisdictions. Also, the Complainant has been using its website known as "IBD Store" for many years at "www.investors.com/ibd-store". The Panel finds that the Complainant has trademark rights for purposes of the Policy.
The disputed domain name comprises the Complainant's trademark IBD. The addition of the descriptive terms "home", "study" and "programs" does not avoid confusing similarity between the disputed domain name and the Complainant's trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), paragraph 1.8.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant's trademark or to register domain names containing the trademark IBD.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, there is evidence that the Respondent has used the disputed domain name in connection with a website offering unauthorized and, therefore, illegal copies of the Complainant's IBD programs.
Based on the evidence in the Complaint, the Panel finds that the use of the disputed domain name, which incorporates the Complainant's trademark, does not correspond to a bona fide use of domain names under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The trademark IBD is registered by the Complainant in numerous jurisdictions around the world and has been used for over 30 years.
The disputed domain name is comprised of the IBD trademark in addition to other descriptive words and the Respondent has no rights or legitimate interests in the disputed domain name. Moreover, the addition of such terms enhances confusion, since the Complainant offers "home study program" in connection with its services.
There is evidence in the Complaint that the disputed domain name was used with the intent to deceive Internet users to believe they were negotiating with the Complainant.
Therefore, this Panel finds that the Respondent obviously knew of the Complainant's mark when it registered the disputed domain name and has intentionally attempted to attract Internet users to its website for its own or for third parties' commercial gain by creating a likelihood of confusion with the Complainant's trademark and misleading Internet users to believe that its website belongs to or is associated with the Complainant.
This Panel finds that the Respondent's intention of taking undue advantage of the trademark IBD as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.
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 <ibdhomestudyprograms.com> be transferred to the Complainant.
Mario Soerensen Garcia
Date: June 16, 2017