WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
T. Rowe Price Group, Inc. v. Skyler Hulslander
Case No. D2018-1582
1. The Parties
The Complainant is T. Rowe Price Group, Inc. of Baltimore, Maryland, United States of America ("USA" or "US"), represented by Winterfeldt IP Group PLLC, USA.
The Respondent is Skyler Hulslander of Edmond, Oklahoma, USA.
2. The Domain Name and Registrar
The disputed domain name <troweprice.app> (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 July 12, 2018. On July 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 13, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2018. On July 24, 2018, the Center received an email communication from the Respondent indicating willingness to transfer the Domain Name. On the same day, the Center sent the Parties an email communication regarding possible settlement. The Complainant did not request suspension of the proceeding. On August 14, 2018, the Center informed the Parties that it would proceed to panel appointment. On the same day, the Center received another email communication from the Respondent expressing willingness to transfer the Domain Name, but no settlement has been realized.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 21, 2018. 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 corporation organized under the laws of the US State of Maryland and headquartered in Baltimore, Maryland, USA. Since 1937, the Complainant and its affiliates have offered investment management services including mutual funds, advisory services, and retirement plans. The record shows that as of June 2018, the Complainant was ranked as the 15th largest asset management firm in the world, with just over USD one trillion in total assets under management. Since 1995, the Complainant has operated a website at "www.troweprice.com" (the "Complainant's website"), and the Complainant currently holds at least five other domain names based on variations of its corporate name and trademark. The Complainant also provides certain services to customers via trademarked smartphone applications ("apps") such as the T. Rowe Price Personal app, the T. Rowe Price Marketscene app, and the T. Rowe Price Events app.
The Complainant claims use of T. ROWE PRICE as a service mark in the US since 1937. The Complainant also holds relevant trademark registrations in the US and other countries, including a US registration for T. ROWE PRICE as a standard-character trademark, US Registration Number 1493517, registered on June 21, 1988. The record shows that the Complainant promotes the T. ROWE PRICE mark in the US and globally and that it is well known and frequently mentioned in publications and media. The Complaint highlights, for example, a 2018 Fortunearticle ranking the Complainant third in its industry among the "World's Most Admired Companies".
According to the Registrar, the Domain Name was created on May 6, 2018 and is registered in the name of the Respondent, an individual residing in the State of Oklahoma, USA. At the time of this Decision, the Domain Name does not resolve to an active website, but the Complaint attaches a screenshot of the website to which it formerly resolved, which advertised the Domain Name for sale.
The Complaint includes evidence identifying the Respondent as associated with an investment advisory firm in the Oklahoma City area called "Legacy Financial Investment Group". The Respondent's LinkedIn social media page names him as the group's president. The Complainant observes that as an investment advisor, the Respondent is a competitor of the Complainant.
5. Parties' Contentions
The Complainant argues that the Domain Name is confusingly similar to its registered T. ROWE PRICE trademark, which it has not authorized the Respondent to use and in which the Respondent has no evident rights or legitimate interests.
The Complainant contends that the Respondent, a competitor, has registered and used the Domain Name in bad faith (a) in an attempt to sell it to the Complainant for an extortionate price, (b) to disrupt the Complainant's business, (c) to misdirect Internet users for commercial gain, and (d) as an instance of "passive holding" of a domain name valuable only for its trademark significance.
The Respondent did not respond to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The Complainant indisputably holds registered T. ROWE PRICE trademarks. The Domain Name incorporates this mark in its entirety, omitting the period and spaces that cannot be included in the DNS system for technical reasons. As in most cases, the generic Top-Level Domain ("gTLD") ".app" is disregarded under the first element of the confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.
The first element of a UDRP complaint "functions primarily as a standing requirement" and entails "a straightforward comparison between the complainant's trademark and the disputed domain name". See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case (as the Complainant has here by demonstrating non-permissive, commercial use of a domain name confusingly similar to a well-established and distinctive mark), the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Respondent has failed to do so, and the Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following cited by the Complainant (in which "you" refers to the registrant of the domain name):
"(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;
(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 online 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".
It is not clear on this record precisely what the Respondent intended. The record reflects no overt attempt to sell the Domain Name to the Complainant, and it is difficult to imagine that the Respondent's small business was meant to disrupt a global financial industry behemoth. Thus, paragraphs 4(b)(i) and (iii) are not a good fit with the circumstances. It is likely, however, that the Respondent contemplated using the Complainant's brand name to help promote the Respondent's advisory services to investors familiar with the Complainant's well-known mutual funds and other investment products. This would fall within the parameters of paragraph 4(b)(iv), creating a likelihood of confusion to mislead Internet users for commercial gain. Simply put, the Respondent cannot in good faith use the trademark of another, without permission, to promote his own business – especially when he is actually a competitor. Moreover, the gTLD in this case may further contribute to confusion among the Complainant's customers and potential customers, as the Complainant itself offers "apps" branded with trademarks that include the string "T. Rowe Price", as described above. See WIPO Overview 3.0, section 3.2.1.
The Respondent has not yet developed a website exploiting the Domain Name in this fashion, however. Thus, the Complainant also cites the "passive holding" doctrine described in WIPO Overview 3.0, section 3.3. The Complainant argues that, despite the lack of any active use of the Domain Name to date, the T. ROWE PRICE mark is well known and highly distinctive and there is simply no plausible, legitimate use for the Domain Name in the Respondent's hands. The doctrine is apposite on these facts. The Respondent briefly offered the Domain Name for sale online and otherwise has held the Domain Name passively. But it is difficult to imagine why the Respondent registered the Domain Name other than eventually to use it or sell it for its trademark value, with reference to the Complainant, because it has no apparent generic value. Although the Respondent has not hidden his identity, as in typical passive holding cases, in communicating with the Center the Respondent has neither denied prior awareness of the Complainant's trademark nor offered a legitimate reason for registering a domain name virtually identical to the Complainant's distinctive and well-known trademark. The fact that the Respondent has done nothing so far but offer the Domain Name publicly for sale does not prevent a finding of bad faith.
The Panel concludes that the Complainant has established the third element of the Complaint.
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, <troweprice.app>, be transferred to the Complainant.
W. Scott Blackmer
Date: September 6, 2018