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and Mediation Center
Teachers Insurance and Annuity Association of America v. NOLDC, Inc. and Patrick Weir
Case No. D2005-1226
1. The Parties
The Complainant is Teachers Insurance and Annuity Association of America, New York, New York, United States of America, represented by Sutherland Asbill & Brennan, LLP, United States of America.
The Respondents are NOLDC, Inc. and Patrick Weir, New Orleans, Louisiana, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <tiaacref.biz> is registered with Intercosmos Media
Group, Inc d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2005. On November 29, 2005, the Center transmitted by email to Intercosmos Media Group, Inc d/b/a directNIC.com a request for registrar verification in connection with the Domain Name at issue. On November 29, 2005, Intercosmos Media Group, Inc d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 8, 2005. 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”), 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 December 13, 2005.
On December 13, 2005, Respondent communicated with the Center regarding a nearly identical domain name <tiaa-cref.biz>, advising the Center that: “Quite some time ago I responded to the request that I remove myself from the domain <tiaa-cref.biz>, which I did. I contacted Directnic and informed them of your request and asked to be cleared of any right to that domain. I have not been associated with that domain in anyway for several months yet I still keep getting e-mails demanding that I give up that domain, will someone please take a look and see so I don’t keep getting these emails.” Although this communication did not relate to the instant action, it does serve to confirm effective service of and actual notice of the Complainant’s petition.
In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2006. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on January 5, 2006.
The Center appointed Lawrence K. Nodine as the Sole
Panelist in this matter on January 19, 2006. 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
Because the Respondents have not answered the Complaint, the following facts are undisputed:
Complainant provides financial services to individuals and institutions in the fields of education, research and healthcare under the name and mark TIAA-CREF and has done so since 1952. It owns numerous U.S. trademark registrations, including Registration Nos. 2,731,742, 2,617,632 and others, for various TIAA-CREF marks in connection with its various financial services.
Complainant operates two financial services websites, one at “www.tiaa-cref.org”
and the other at “www.tiaa-cref.org”.
Respondents registered the Domain Name <tiaacref.biz> on March 7, 2005.
Respondents operate a website at “www.tiaacref.biz” that includes
links to financial services offered by third parties including Complainant’s
5. Parties’ Contentions
With respect to Paragraph 4(a)(i) of the Policy, Complainant contends that:
Complainant owns numerous United States Federal registrations for a family of TIAA-CREF marks. Complainant has used TIAA-CREF in the United States of America and in international commerce since 1952.
Complainant uses its TIAA-CREF mark to promote its services on the Internet at several websites.
Complainant’s TIAA- CREF mark is highly distinctive. The mark has become well-known to the public in the financial services field through extensive advertising, a substantial Internet presence and use since 1952. Nearly $100 million was spent in advertising the TIAA-CREF mark in the years 2004 and 2005.
The <tiaacref.biz> Domain Name registered and used by Respondents is confusingly similar to Complainant’s TIAA-CREF mark since only an omitted hyphen prevents <tiaacref.biz> from being completely identical to Complainant’s TIAA-CREF mark.
The omission of the hyphen in <tiaacref.biz>, as well as the addition
of the generic top-level domain, do not diminish the confusingly similar nature
of <tiaacref.biz>. See Columbia Sportswear Company v. Mahlon Keeler,
WIPO Case No. D2000-0206) (noting that
the use of hyphens in <columbia-sports-wear-company.com> “is insufficient
to render it different [from] the trademark COLUMBIA SPORTSWEAR COMPANY. The
two are in all material respects identical.”)
With respect to Paragraph 4(a)(ii) of the Policy, Complainant contends that:
There is no evidence to suggest that Respondents have used, or undertaken any demonstrable preparations to use, <tiaacref.biz> in connection with a bona fide offering of goods or services. To the contrary, <tiaacref.biz> provides a directory of links directing Internet users to entities that compete with Complainant in the fields of mutual funds and investment advice, the same fields for which Complainant has registered its mark.
Respondents are not commonly known by <tiaacref.biz>. Respondents’ names do not appear in <tiaacref.biz>, nor do Respondents’ names appear anywhere on the “www.tiaacref.biz” website.
Respondents are not making legitimate non-commercial or fair use of <tiaacref.biz>, “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” (Policy Paragraph 4(c)(iii)).
Respondents are using a domain name that incorporates Complainant’s mark to divert Internet users to Respondents’ website, which, in turn, provides links to the websites of Complainant’s competitors. The purpose of Respondents’ website is to trade upon the goodwill associated with Complainant’s TIAA-CREF mark and thereby to divert and redirect Internet users from Complainant’s website to Respondents’ directory site.
With respect to Paragraph 4(a)(iii) of the Policy, Complainant contends that:
Respondents have registered and used <tiaacref.biz> in bad faith under Paragraph 4(b) of the Policy.
Respondents seek to take advantage of the owner of a famous mark and to attract traffic to their own site by the improper registration and use of a domain name that is confusingly similar to Complainant’s famous mark.
Respondents registered and use <tiaacref.biz> to drive visitors to their
directory site, which presents a directory of “sponsored links”
in the fields of mutual funds and investment services, the same goods and services
covered by Complainant’s mark. Respondents thus attempt to benefit commercially
by taking advantage of the confusing similarity between <tiaacref.biz>
and Complainant’s mark to “free-ride” on the goodwill of Complainant’s
TlAA-CREF mark. As such, Respondents’ activities correspond to those activities
listed in paragraph 4(b)(iv) of the Policy as evidence of bad faith registration
and use of a domain name. See Reuters Ltd. v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441 (finding the
respondent had used <ruters.com> to attract Internet users to its website
for commercial gain by creating confusion with complainant’s REUTRS mark).
Respondents’ registration of a domain name that is nearly identical, or at the least confusingly similar, to Complainant’s mark, which is widely known and has been used in commerce since 1952, is further evidence of bad faith.
Because of the distinctive nature of Complainant’s mark, Respondents
would not have registered the <tiaacref.biz> Domain Name unless they intended
to trade on the valuable goodwill and the prior and exclusive rights held by
Complainant in the TIAA-CREF mark. See Volvo Trademark Holding AB v. Unasi,
Inc., WIPO Case No. D2005-0556 (finding bad
faith when, inter alia, respondent was aware, at the time of registration
of the disputed domain names, of the prior and exclusive rights held by the
complainant on the VOLVO trademark).
The Respondents did not reply to the Complainant’s
contentions. The Respondents’ default does not automatically result in
a decision in favor of the Complainant. The Complainant must establish each
of the three elements required by paragraph 4(a) of the Policy. While a panel
may draw negative inferences from the Respondents’ default, paragraph 4
of the Policy requires the Complainant to support its assertions with actual
evidence in order to succeed in a proceeding under the Policy. The Vanguard
Group, Inc. v. Lorna Kang WIPO Case No. D2002-1064
(<vanguar.com>, Transfer); Berlitz Investment Corp. v. Stefan Tinculescu
WIPO Case No. D2003-0465 (<berlitzsucks.com>,
Transfer); Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan WIPO
Case No. D2004-0383 (<brookehogan.com>, Denied).
6. Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).
A. Identical or Confusingly Similar
Given the United States Federal trademark registration for TIAA-CREF, Registration No. 2,731,742 and numerous additional United States Federal registrations for Complainant’s family of TIAA-CREFF marks, and the Complainant’s continued use of the marks for over 53 years in the financial services field, the Panel finds that the Complainant has trademark rights in both TIAA-CREF and TIAA CREF (without the hyphen).
The Panel also finds that that the Domain Name <tiaacref.biz> is confusingly similar to the registered trademarks in which the Complainant has rights. “Tiaa-cref” is the dominant portion of Complainant’s registered word mark and of the disputed Domain Name.
The disputed Domain Name differs from Complainant’s registered word mark
only in that it contains no hyphen and it contains the non descriptive gTLD
domain name suffix “.biz”. Busy Body, Inc. v. Fitness Outlet
Inc., WIPO Case No. D2000-0127 (“the addition
of the generic top-level domain (gTLD) name ‘.com’ is … without
legal significance since use of a gTLD is required of domain name registrants”).
B. Rights or Legitimate Interests
In order for the Respondents to demonstrate rights or legitimate interests in the Domain Name, they must show:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly
known by the domain name, even if you have acquired no trademark or service
mark rights; or
(iii) you are 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.”
A complainant is required to make out an initial prima
facie case that the respondent lacks rights or legitimate interests. Once
such prima facie case is made, the respondent carries the burden of demonstrating
rights or legitimate interests in the domain name. If the respondent fails to
do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO
Case No. D2003-0455 <croatiaairlines.com>; transfer); Belupo d.d.
v. WACHEM d.o.o., WIPO Case No. D2004-0110
Respondents did not refute Complainant’s allegations that (1) there is no evidence to suggest that Respondents have used, or undertaken any demonstrable preparations to use, <tiaacref.biz> in connection with a bona fide offering of goods or services; (2) the Respondents’ website at “www.tiaacref.biz” is a “directory of links directing Internet users to entities that compete with Complainant in the fields of mutual funds and investment advice, the same fields for which Complainant has registered its mark”, (3) Respondents are not commonly known by <tiaacref.biz>; and (4) Respondents are not making legitimate non-commercial or fair use of <tiaacref.biz> without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Further, Respondents’ website at the Domain
Name presents a series of links to sites that directly compete with the Complainant’s
website and serves to mislead and divert users seeking to find Complainant’s
website. See FleetBoston Financial Corporation v. Albert Jackson, WIPO
Case No. D2003-0915 (Respondents’ website that provides hyperlinks
to websites of Complainant’s competitors or websites which provide advertisements
for or links to Complainant’s competitors is neither a bona fide
offering of goods or services nor a legitimate non-commercial or fair use of
the domain names). This is sufficient evidence to make out a prima facie
case that Respondent lacks rights or legitimate interests in the disputed Domain
Since Respondents have not demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondents do not have any rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s 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 site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that the Domain Name was registered in bad faith. Complainant’s allegations of bad faith are not contested. The trademark registrations of record confirm Complainant’s allegations that it had long been using its family of TIAA-CREF trademarks when the Domain Name that is the subject of this Complaint was registered. The Panel finds persuasive Complainant’s allegation that the Respondents must have been aware of the Complainant’s rights in the mark and, further that they were knowingly infringing the Complainant’s trademark when they registered the subject Domain Name. Given that Complainant’s mark is arbitrary and well known, it is highly unlikely that Respondents registered the Domain Name in ignorance of Complainant’s mark. It is much more probable that Respondents were, as Complainant has alleged without contradiction, fully aware of Complainant’s rights when they registered the Domain Name.
Regarding “use in bad faith” the Panel
notes that paragraph 4(b)(iv) of the Policy includes use of the domain name
intentionally to attract users for commercial gain, as evidence of bad faith.
Respondents used the Complainant’s well known trademark in the financial
services industry to attract users to Respondents’ website where they
are offered links to competing financial services websites. The Panel finds
this to be clear evidence of the intention by the Respondents to attract Internet
users for commercial gain, by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’
website or of a product or service on the Respondents’ website. Therefore,
the Panel finds that the Domain Name is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <tiaacref.biz> be transferred to the Complainant.
Lawrence K. Nodine
Dated: February 2, 2006