WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BlackRock Institutional Trust Company, N.A. v. Investors FastTrack

Case No. D2010-1038

1. The Parties

The Complainant is BlackRock Institutional Trust Company, N.A. of San Francisco, California, United States of America, represented by Greenberg Traurig, LLP, United States of America.

The Respondent is Investors FastTrack of Baton Rouge, Louisiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <best-of-ishares.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2010. On June 23, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the registrant address, the Complainant filed an amended Complaint on June 28, 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 July 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2010. The Response was filed with the Center on July 21, 2010. The Amended Response was filed with the Center on July 24, 2010.

The Center appointed William R. Towns as the sole panelist in this matter on July 30, 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.

4. Factual Background

The Complainant is a large investment management company, which manages client assets in excess of USD3 trillion, for more than 1,000 clients in over 100 countries. The Complainant is a sponsor of a large family of exchange traded funds (“ETFs”), which the Complainant has marketed under the ISHARES mark for at least ten years. The Complainant owns several United States registrations for the ISHARES mark, the first of which was issued by the United States Patent and Trademark Office on January 16, 2001. In addition, the Complainant also owns registrations for the ISHARES mark in a number of more than twenty (20 other countries, including the European Union), as well as more than 200 “iShares” or “iShares” formative domain names.

The Complainant offers investment advisory services, educational information, and other resources regarding the ISHARES funds, including fund selection and other general investment strategy and analysis, provided, inter alia, through the Complainant’s “www.ishares.com” website. The Complainant also licenses its ISHARES mark to a number of other companies in the banking, finance and investment industries for use in connection with various investment related products and services.

The Respondent has provided investment advisory services and products since 1989, primarily through a paid subscription service for dividend-adjusted, historical mutual fund, ETF, and stock data (“FastTrack database”). In addition to offering this database, the Respondent also has developed its FT4Web software as an analytical tool and to provide investment strategies and recommendations. The Respondent offers its FT4Web software and FastTrack database online at its website. According to the Respondent, users who download and install the FT4Web software and FastTrack database receive historical data for all funds, including all ETFs, as well as specific ETF trading strategies.

The Respondent registered the disputed domain name <best-of-ishares.com> on January 19, 2007. The disputed domain name currently resolves to a web page at “www.best-of-ishares.com” (“best-of-ishares web page”), and bears a very strong resemblance to the Respondent’s home page at “www.fasttrack.net” (“Investors FastTrack home page”). The Respondent promotes its FT4Web software and FastTrack database on both of these web pages, but on the best-of-ishares web page the Respondent specifically touts its FT4Web software and FastTrack database as a means by which investors can “compare and contrast the whole class of iShares ETFs to other ETFs.”

The best-of-ishares web page also contains links to other web pages maintained by the Respondent that similarly tout the use of the Respondent’s software and database with other branded ETF funds and mutual funds. Like the best-of-ishares web page, these web pages also bear a very strong resemblance to the Respondent’s Investors FastTrack home page. The Respondent has registered and uses similarly formatted “best-of” domain names with these web pages – e.g., <best-of-vipers.com>, <best-of-powershares.com>, <best-of-spdrs.com>, <best-of fidelity.com> and <best-of-vanguard.com> – and promotes its FT4Web software and FastTrack database on each as a means of finding the “best of ” the various ETFs or other investment products.

These “best of ” web pages, which are linked to the best-of-ishares web page, also contain paid advertising links to third-party websites featuring banking, financial or investment products or services that compete with those of the Complainant. As recently as May 19, 2010, the best-of-ishares web page also contained such sponsored links, which the Respondent apparently removed after receiving the Complainant’s cease and desist letter dated May 26, 2010.

Also absent from the best-of-ishares web page prior to the Respondent’s receipt of the Complainant’s cease and desist letter was any disclaimer regarding the Complainant. The Respondent apparently revised the best-of-ishares web page at some time after receiving the Complainant’s cease and desist letter, as the web page now includes the following statement: “This is an independent service with no affiliation to BlackRock Investments.”

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name is confusingly similar to its ISHARES mark, which the Complainant asserts is distinctive and famous. The Complainant avers that the Respondent is not licensed or otherwise authorized to use the Complainant’s mark, and argues that the Respondent lacks rights or legitimate interests in the disputed domain name because the Respondent is not commonly known by the disputed domain name, and is not using the disputed domain in connection with a bona fide offering of goods or services, or otherwise making a legitimate noncommercial or fair use of the disputed domain name. The Complainant asserts that the Respondent’s use of the disputed domain name does not constitute a nominative fair use under United States law or under relevant panel decisions under the Policy. To the contrary, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, in an attempt to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks as to source, sponsorship or affiliation.

B. Respondent

The Respondent maintains that the disputed domain name is not confusingly similar to the Complainant’s mark on the grounds that the disputed domain name is purely nominative and descriptive of the Respondent’s investment products. The Respondent argues that it uses the disputed domain name in order to convey to customers the capabilities of the Respondent’s investment software and database to assist them in choosing the best ISHARES funds for their investment situation. The Respondent asserts there simply is no other readily available means of identifying the Complainant’s ETF family of funds. The Respondent contends on this basis that it is making a nominative fair use of the disputed domain name, and that as such the Respondent has established rights or legitimate interests in using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent denies any bad faith, asserting that it did not register the disputed domain name to create confusion as to any affiliation with the Complainant, and that the Respondent’s use of the disputed domain name does not create a likelihood of confusion.

6. Preliminary Procedural Issues

A. Respondent’s Submissions in Excess of Supplemental Rule 11(b) Word Limits

As noted earlier, the Response was submitted to the Center on July 21, 2010. On July 22, 2010, the Center notified the Respondent that the Response exceeded the 5,000 word limit under Supplemental Rule 11(b). The Center determined that the Response was some 8,300 words long. The Center invited the Respondent to submit on or before July 24, 2010 a revised Response meeting the word limit requirement.

The Respondent submitted an Amended Complaint, which according to the Respondent was 5,225 words (still in excess of the Rule 11(b) limit), but which the Center determined to be 11,490 words. The Complainant by email objected to the Panel’s consideration of the Amended Response, but also took that occasion to respond to the merits of the Amended Response, to which the Respondent submitted a reply.

B. The Parties’ Supplemental Submissions

The Policy and Rules envision the submission of a single complaint and a single response. No express provision is made for the submission of supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either party.

The Panel has determined that all party submissions addressing the merits of the dispute other than the original Complainant and original Response will be considered as supplemental submissions. This includes the Amended Response, since the Center granted leave to the Respondent only to revise the Response consistent with the requirements of Supplemental Rule 11(b), which the Respondent failed to do. The Panel has reviewed all of the Parties’ supplemental submissions and has considered them to the extent that they provide relevant and helpful information and are not merely cumulative of the Parties’ original submissions.

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <best-of-ishares.com> is confusingly similar to the Complainant’s ISHARES mark, in which the Complainant clearly has established rights. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. See also RUGGEDCOM, Inc. v. James Krachenfels, WIPO Case No. D2009-0130 (at the heart of paragraph 4(a)(i) is whether the mark and the disputed domain name look, sound, and “feel” sufficiently similar that Internet users looking for websites associated with the complainant would be likely to arrive at a website at the disputed domain name) (majority opinion).

The disputed domain name incorporates the Complainant’s mark in its entirety, and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under the foregoing standard. The confusing similarity resulting from the use of the Complainant’s mark in the Panel’s opinion is not diminished by the addition of the descriptive words “best of”. See Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870. See also National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524 (hereinafter “National Association for Stock Car Auto Racing”).

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name incorporates the Complainant’s distinctive and well-known mark in its entirety. The Respondent is using the disputed domain name to attract Internet users to commercial websites on which the Respondent promotes and offers its. There is no indication that the Respondent has been commonly known by the disputed domain name, and the Complainant denies authorizing the Respondent to use the Complainant’s mark in connection with domain names or in any other manner.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed 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) 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.

The Respondent maintains that it has established rights or legitimate interests in the disputed domain name based on the contention that, before any notice of this dispute, the Respondent was using the domain name in connection with a bona fide offering of goods are services – namely, the Respondent’s FT4Web software and FastTrack database. The Respondent asserts that it is entitled to and is making a nominative fair use of the disputed domain name because it provides investment information regarding the Complainant’s ISHARES ETFs, and otherwise has no readily available means of differentiating the investment information it provides regarding the Complainant’s ISHARE products from those of other ETF sponsors.

The Respondent relies on the UDRP panel decision in The Vanguard Group Inc. v. Investors FastTrack, NAF Case No.FA863257, in which the panel concluded that the Respondent had rights or legitimate interests in the disputed domain name <best-of-vanguard.com>. The Vanguard Group panel concluded that the “best of” term in the domain name in and of itself showed the domain name to be purely nominative and descriptive of the Respondent’s business, and that the Respondent had legitimate rights and interests in using the domain name in offering investment products and services to people wishing to consider investment in the complainant’s financial products and services, at least where the Respondent’s website expressly disclaimed any affiliation with the complainant.

The Panel finds nothing in the record indicating that the Complainant at any time granted or conveyed to the Respondent the right to register and use a domain name that incorporates the Complainant’s ISHARE mark, or indicating that the Complainant has acquiesced to such registration and use. See BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, WIPO Case No. D2009-0958 (respondent had no rights or legitimate interests where domain names were not explicitly the subject of any agreement between the parties and complainant did not acquiesce to registration of domain names).

The Panel therefore considers the question whether the Respondent may be found to have a legitimate interest in using the Complainant’s mark in a domain name one to be determined by reference the criteria articulated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “Oki Data”). See also Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447; Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857. In Oki Data, the respondent was an authorized dealer (reseller) of the complainant, and registered the domain name <okidataparts.com>, which incorporated the complainant manufacturer’s OKIDATA trademark. The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by even an authorized dealer or reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The views articulated in Oki Data are identified as the “majority view” for evaluating domain names of resellers and distributors in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at paragraph 2.3. While the Respondent here is not a reseller or distributor of the Complainant’s ISHARE-branded ETFs, several panel decisions have concluded that the application of the Oki Data criteria may be appropriate under the Policy where the respondent is not purely a reseller or distributor of a trademark owner’s goods or services, so long as the respondent operates a business genuinely revolving around the trademark owner’s goods or services. See National Association for Stock Car Auto Racing, supra; Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211 (hereinafter “Starwood Hotels & Resorts”).

As this Panel has previously noted, such an approach is not only consistent with the Policy, but also is consistent with the nominative fair use principles that apply under the trademark law of the United States, which is relevant here given that both parties are from the United States. Starwood Hotels & Resorts, supra. Further, the Oki Data approach considers and applies nominative fair use principles not in the broader context of traditional trademark disputes, but with reference to the limited scope of the Policy, and specifically with respect to the a respondent’s use of the complainant’s mark in a domain name.

In National Association for Stock Car Auto Racing, supra, the complainant, owner of the NASCAR mark, challenged the respondent’s registration and use of the domain name <nascartours.com>. The respondent, “The Racin’ Connection”, which had no affiliation with the complainant, organized tours to NASCAR events. On the website to which the disputed domain name resolved, the respondent advertised tour packages for both individuals and groups including travel arrangements, event tickets, hotel accommodations, catering, a “VIP Hospitality tent”, and related services for 20 or more NASCAR racing events annually. There was a prominent disclaimer in the middle of the home page of the respondent’s website clearly stating that the respondent was an independent tour operator in no way affiliated with or owned by the complainant.

Applying the Oki Data criteria, the panel in National Association for Stock Car Auto Racing concluded that the respondent had demonstrated legitimate interests through use of disputed domain name <nascartours.com> in connection with a bona fide offering of goods and services before notice of the dispute. In concluding that the respondent was operating “a business genuinely revolving around the trademark owner’s goods or services” the panel observed:

“Applying the Oki Data criteria to the record in the current proceeding, the Panel finds that the Respondent is actually offering tours of NASCAR events, and only tours of NASCAR events, on the website associated with the Domain Name. While these packages include some services, such as hotel accommodations (and perhaps even race tickets), that are not offered directly by the Complainant itself, they all relate to attendance at NASCAR racing events and not, for example, other travel opportunities. The Respondent’s business is NASCAR tours, just as the Domain Name implies; this is not merely a “bait and switch” use of the Domain Name. The Respondent’s website accurately and prominently explains that the Respondent is a reseller and is not affiliated with the Complainant.”

The record in the instant case, however, does not reflect the Respondent’s observance of all of the Oki Data criteria. Significantly, there is no evidence in the record that the Respondent, prior to receiving notice of this dispute, ever disclosed on the best-of-ishares web page the relationship between the Respondent and the Complainant. Insofar as the record reflects, the disclaimer now found on the Respondent’s web page was added only after the Respondent received the Complainant’s cease and desist letter of May 26, 2010. The record also indicates that the Complainant previously had objected to the Respondent’s use of the ISHARES mark and log on the Respondent’s website.

In addition, the disputed domain name is only one of a number of domain names registered by the Respondent that incorporate third-party marks owned by investment fund sponsors or managers, including competitors of the Complainant. Each of these “best of” domain names resolves to a separate web page maintained by the Respondent, ostensibly focused on the respective fund sponsor’s products.

While it appears to be correct that the Respondent does not offer ISHARES funds or any competing investment funds for sale, the Respondent’s use of a domain name incorporating the Complainant’s distinctive ISHARES mark to attract Internet visitors to a site from which those visitors also can obtain information and recommendations about competing investment funds nonetheless has an unmistakable “bait and switch” feel to it. This is at odds with the fair use principles underlying the Oki Data criteria. See National Association for Stock Car Auto Racing, supra (respondent using <nascartours.com> only with tours for NASCAR events and not other travel opportunities). Nor does it appear that the Respondent’s FT4Web software and FastTrack database promoted on the web page are intended exclusively for use with ISHARES products.

In addition, before receiving the Complainant’s cease and desist letter, the Respondent had monetized the best-of-ishares web page with paid advertising links to third-party websites advertising or offering other investment products, including ETFs, competing with the Complainant’s ISHARES product. The presence of such paid advertising links is inconsistent with a claim that the Respondent’s website “genuinely revolves around” the Complainant’s trademarked goods or services. Id. See also Levantur, S.A. v. Media Insight, WIPO Case No. D2009-0608.

The Panel finds from the record that the confusing similarity of the disputed domain name to the Complainant’s mark is highly likely to result in initial interest confusion, particularly given that the Complainant’s mark is distinctive and well known in the relevant industry. The Respondent’s failure to accurately disclose the nature of its relationship with the Complainant, the monetization of the disputed domain name through the placement of paid advertising links on the web page, and the use of links to other web pages on which the Respondent promotes the use of its software and database with other investment funds that compete with the Complainant, is not consistent with applicable fair use principles underlying the Oki Data criteria, and is fatal to the Respondent’s claim of rights or legitimate interests.

The Panel accordingly concludes from the circumstances reflected in the record of this case that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy, and that the Respondent otherwise has not established rights or legitimate interests in the disputed domain name. The Panel respectfully disagrees with the decision in The Vanguard Group Inc. v. Investors FastTrack, supra. The Respondent’s inclusion of a disclaimer on its website only after receipt of the Complainant’s demand letter is not consistent with fair use principles.

Moreover, the Panel does not consider that the disputed domain name <best-of-ishares.com> on its face establishes that the disputed domain name is purely nominative and descriptive of the Respondent’s business. To the contrary, the Panel considers that the disputed domain name is more likely to be understood as a reference to the Complainant’s products. See Pfizer Inc. v. The Magic Islands, supra. The disputed domain name potentially is misdescriptive in reference to the Respondent’s business, since the Respondent is not offering investment information and advice for only the Complainant’s ISHARES products. See National Association for Stock Car Auto Racing, supra.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. The Policy provides a remedy only in cases where a complainant proves that the domain name “has been registered and is being used in bad faith”.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is quite clear from the relevant circumstances, including the nature of the Respondent’s business, that the Respondent had the Complainant’s ISHARES mark in mind when registering the disputed domain name. The record convincingly demonstrates that the Complainant’s mark is well known in the relevant industry. The Panel finds it more likely than not that the Respondent’s primary motive in relation to the registration and use of the disputed domain names was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, though the creation of initial interest confusion. The Panel further is of the view that the Respondent registered and has used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

For all 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 <best-of-ishares.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Dated: August 24, 2010