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ADMINISTRATIVE PANEL DECISION
T. Rowe Price Associates, Inc. v. J A Rich
Case No. D2001-1044
The Complainant is T. Rowe Price Associates, Inc., a corporation located in Owings Mills, Maryland, USA.
The Respondent is J A Rich, an individual located in Eugene, Oregon, USA.
2. The Domain Names and Registrar
The domain name at issue is: <investwithconfidence.com> (the "Domain Name").
The registrar is eNom, Inc.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, approved on October 24, 1999 ("the Policy") and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, approved on October 24, 1999 ("the Rules").
The Complaint was submitted on August 17, 2001, by e-mail. On August 24, 2001, eNom, Inc. confirmed registration of the Domain Name at issue to the Respondent. On September 4, 2001, an amended Complaint was submitted, and the Response was submitted on October 22, 2001.
On November 5, 2001, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as Sole Panelist.
4. Factual Background
On November 27, 1984, Complainant was granted registration in the mark, T. ROWE PRICE INVEST WITH CONFIDENCE, by the United States Patent and Trademark Office (USPTO), based on a first use of December 4, 1983. Then on October 11, 1994, Complainant was granted federal registration for the mark, INVEST WITH CONFIDENCE, by the USPTO for mutual funds.
On August 2, 2000, the Domain Name <investwithconfidence.com> was registered with eNom, Inc., by a third party not involved in this dispute. Respondent claims to have acquired the Domain Name on May 15, 2001, but Complainant contends that Respondent did not acquire the Domain Name until August 17, 2001, after the original Complaint in this matter was filed.
Complainant became aware of the Domain Name in March of 2001, and sent a letter at that time to the owner of the registration, FCNE of Portland, Oregon, informing it of Complainant’s rights in the mark INVEST WITH CONFIDENCE and requesting that it transfer the Domain Name to Complainant. Shortly thereafter, registration of the Domain Name was transferred to Lemonde of Everett, Washington. On May 29, 2001, Complainant sent a similar letter to Lemonde. The Domain Name was then transferred to Bahaman Trading, D. Lemonde of Amsterdam. On July 13, 2001, Complainant sent two letters requesting that Bahaman Trading transfer the Domain Name to Complainant. One letter was sent to Bahaman Trading, the other was sent to Lemonde of Everett, Washington.
At this point registration of the Domain Name was transferred to T. Jones of Neutral Bay, Australia. In response, Complainant filed the Complaint, and on the same day, August 17, 2001, the Domain Name was transferred to Respondent, J A Rich of Eugene, Oregon. Complainant then amended the Complaint to name Respondent as owner of the Domain Name registration.
5. Parties' Contentions
Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s trademark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent registered and used the Domain Name in bad faith.
Respondent contends that Complainant’s trademark, INVEST WITH CONFIDENCE, consists of descriptive or generic terms that are used by many other businesses and Complainant, therefore, lacks a protectable interest in the mark. Respondent further contends that it has rights and legitimate interest in the Domain Name because it does business under the name <investwithconfidence.com>, has filed a state registration for the mark, INVEST WITH CONFIDENCE, and offers items for sale on the website portal linked by the Domain Name. Finally, Respondent contends that it did not register the Domain Name in bad faith and its "business is a legitimate and fair use of the [Domain Name]."
Our inquiry focuses on three issues: (1) is the Domain Name confusingly similar to a trademark or service mark in which Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Name; and (3) has the Domain Name been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.
A. Confusing Similarity
The record shows that Complainant holds a federal registration in the mark INVEST WITH CONFIDENCE. The registration is incontestable and serves as conclusive evidence of Complainant's exclusive rights in the mark for the goods and services listed in the registrations. 15 USC 1115(b). As a result, the validity of Complainant's rights may not be challenged on the grounds that the mark is merely descriptive. Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 105 S.Ct. 658 (1985). Further, there is no indication that INVEST WITH CONFIDENCE is a common generic term for the class of financial goods or services.
Save the absence of the spacing between the words in the mark and the ".com" extension, Respondent’s Domain Name, <investwithconfidence.com>, is identical to Complainant’s registered mark . Accordingly, Complainant succeeds on this element.
B. Legitimate Interest
Complainant bears the burden of showing that Respondent has no legitimate interest in the Domain Name. In order to meet this burden, Paragraph 4(c) of the Policy requires Complainant to demonstrate that Respondent: (i) has failed to use the Domain Name in connection with a bona fide offering of goods and services; (ii) has not been commonly known by the Domain Name; and (iii) is not making a legitimate noncommercial use of the Domain Name.
Under the Policy, the relevant point in time to determine whether the registrant of a domain name has legitimate rights or interests is before the registrant has any notice of the dispute. See Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938. Supporting this position, several Panels have held that a Respondent does not have legitimate rights or interests if he only began using a domain name after having received a cease and desist letter. See Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150.
In this instance, Respondent only started offering this single book for sale through the Domain Name portal after the Complaint was filed. Furthermore, the record does not indicate that Respondent had a demonstrable plan to use the Domain Name to offer books, or even a book, for sale through a web site before the Complaint was filed. For these reasons, I find that Respondent’s offering of goods and services only after the Complaint was filed does not rise to the level of use in connection with a bona fide offering of goods and services under the Policy.
Respondent nevertheless contends that it has a legitimate interest in the Domain Name because it is "known" by the name. On May 18, 2001, Perception Business Strategies, Inc., registered <investwithconfidence.com> as a business name with the Oregon Secretary of State. On the same day, the name was given as the registrant name for the Domain Name registration. There is no evidence that Respondent was "known" by the name prior to that date. I do not believe legitimate rights can be established by the mere fact that the registrant has registered the domain name as a business name or the registrant has used the domain name as the registrant name in a domain name registration. Otherwise, such tactics would easily be adopted by cybersquatters as a sham to circumvent the Policy. To find a legitimate interest in the name, it should appear that the name has been selected and used for a bona fide purpose and not merely for the purpose of avoiding liability under the Policy.
Respondent’s reliance on an Oregon State trademark application for <investwithconfidence.com> as evidence that he does business under, and is commonly known by this name, is misplaced. Respondent filed for registration of this trademark in September of 2001, nearly a month after the Complaint in this matter was filed.
Respondent does not claim that he is making a legitimate noncommercial use of the Domain Name, so the question before the Panel is whether the Respondent’s offering limited book titles for sale through his website and providing a link to another site that allows online purchasing of books is a bona fide offering of goods and services for the purposes of the Policy.
Accordingly, I find that Complainant has met its burden as to the second element.
C. Bad Faith
Although the Policy lists circumstances that may be considered to determine bad faith registration and use, the listed factors are not exclusive.
Here, the evidence suggesting bad faith registration and use includes the following:
First, although Respondent claims that he had no knowledge of Complainant’s registered trademark for INVEST WITH CONFIDENCE when he registered the Domain Name, the presence of a federal registration offers constructive notice of the Complainant’s rights.
Second, the repeated transfers of the Domain Name immediately following letters sent by Complainant may be indicative of bad faith registration. There is no evidence provided to show an arm's length acquisition of the Domain Name from the prior owner and the timing of the transfers seems suspicious.
Third, bad faith may also be suggested by Respondent’s failure either to use the Domain Name in connection with a bona fide offering of goods and services before the Complaint was filed, or to prove that he had a demonstrable plan to do so, and by Respondent’s actions after the Complaint was filed -- specifically, altering the content of the Domain Name portal and filing for a state registration of the Complainant’s mark.
To reach a conclusion on this issue we need to view the evidence as a whole and decide if it is more likely than not that Respondent has acted in bad faith. Despite the highly suspicious nature of the transfers and the lack of credible explanation for the Respondent's acquisition and use of the Domain Name, I believe Complainant has not met its burden on this issue.
There is no evidence that Respondent has tried to sell the Domain Name for profit or has engaged in a pattern of conduct to prevent others from using trademarks as domain names. Further, it does not appear that Respondent is seeking to disrupt the business of a competitor. And while it is apparent that Respondent uses the Domain Name to direct traffic to a book site for commercial gain, it is not clear that Respondent has done this in a deliberate or reckless attempt to trade on confusion with Complainant's mark.
Based on the evidence presented, it seems more likely than not that Respondent has registered and used the Domain Name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, as suggested by the evidence of third party use of "Invest With Confidence." Although the mark is registered, it does not appear to be famous or highly distinctive. When used by Complainant, it usually appears in connection with Complainant's well-known name "T. Rowe Price." Respondent has done nothing to suggest any connection with T. Rowe Price or competing investment services, beyond use of a Domain Name that happens to correspond to Complainant's mark, as well as to the names, marks or slogans of others. The suspicious transfers of the Domain Name are inconclusive evidence of bad faith and in themselves do not seem to be an act of cybersquatting. There is no indication that Respondent is engaged in domain name trafficking. Setting aside conjecture, the undisputed evidence presented shows that Respondent has adopted and used the Domain Name as a tool to direct Internet users to books about investments. The ordinary descriptive meaning of the Domain Name is apt for that purpose, and use in that manner is not bad faith.
The Domain Name is confusingly similar to the Complainant’s mark, and Respondent lacked any legitimate interest in the Domain Name prior to this dispute. Complainant, however, has failed to prove that Respondent registered and used the Domain Name in bad faith. Therefore, Complainant's request for transfer of the Domain Name <investwithconfidence> is denied.
Mark V. B. Partridge
Dated: November 24, 2001