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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Teachers Insurance and Annuity Association of America v. Domain Deluxe

Case No. D2005-1228

 

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 Respondent is Domain Deluxe, Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <wwwtiaa-cref.org> is registered with eNom.

 

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 eNom a request for registrar verification in connection with the domain name at issue. On November 30, 2005, eNom 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.

The Center verified that 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 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2005.

The Center appointed Teruo Doi as the sole panelist in this matter on January 11, 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

The facts stated in the Complaint are as follows:

(1) The Complainant provides financial services to individuals and institutions in the fields of education, research and healthcare under the name and mark TIAA-CREF. The Complainant uses and has registered various TIAA-CREF marks in the United States of America and international commerce in connection with its financial services since at least 1952, including the word mark TIAA-CREF (referred to as “the Complainant’s mark” or “the Complainant’s TIAA-CREF mark”), subject of U.S. Registration No. 2,731,742, registered for “underwriting and administering insurance, namely, life, health and annuities; providing financial services, namely, investment, administration, distribution and overseeing of investment vehicles, namely, mutual funds and annuities, to sponsors and participants of retirement and deferred compensation plans and to the general public; administering trusts and tuition finance programs for others; broker/dealer and other services for a variety of investment vehicles, namely, mutual funds, and fixed and variable annuities”, and first used in commerce in September 1952. A copy of the registration certificates for this mark is attached to the Complaint. [Annex 4].

The Complainant uses its TIAA-CREF mark to promote its services on the Internet, through its web site available at “www.tiaa-cref.org,” a copy of which is attached to the Complaint [Annex 5], and also through its web site available at “www.tiaa-crefinstitute.org,” a copy of which is attached to the Complaint [Annex 6]. The Complainant has owned the registration for “www.tiaa-cref.org” since at least February 14, 1995, as indicated by the Whois information attached to the Complaint [Annex 7].

(2) In addition to the TIAA-CREF word mark, the Complainant owns trademark registrations for at least eight other marks that incorporate TIAA-CREF (the “TIAA-CREF family of marks”), including the following:

- TIAA-CREF (and block design), subject of U.S. Registration No. 2,617,632, registered for the same goods and services as the TIAA-CREF word mark and first used in commerce in August 2001;

- TIAA-CREF (and box design), subject of U.S. Registration No. 1,617,937, registered for “administering and funding insurance and retirement plans for others” and first used in commerce in August 1982;

- TIAA-CREF MUTUAL FUNDS, subject of U.S. Registration No. 2,351,983, registered for “mutual funds investment services” and first used in commerce in September 1997;

- TIAA-CREF INDIVIDUAL & INSTITUTIONAL SERVICES, subject of U.S. Registration No. 1,855,349, registered for “administering annuities and pension fund plans for others” and first used in commerce in January 1992;

- TIAA-CREF INVESTMENT MANAGEMENT, subject of U.S. Registration No.1,855,348, registered for “administering annuities and pension fund plans for others” and first used in commerce in January 1992;

- TIAA-CREF INVESTMENT SOLUTIONS, subject of U.S. Registration No. 2,911,410, registered for “financial services, namely, providing investment consultation, management and administration of mutual funds for others” and “marketing of mutual funds” and first used in commerce in March 2003; and

- TIAA-CREF INSTITUTE, subject of U.S. Registration No. 2,864,144, and TIAA_CREF INSTITUTE (and design), subject of U.S. Registration No. 2,862,004, both registered for “providing educational workshops on financial insurance, investment and retirement products and services and related issues to groups who influence institutional and individual decisions on financial products and their providers” and “conducting business research in order to foster better understanding, decision-making and innovation by policy makers, researchers, financial advisors and leaders of higher educational institutions” and first used in commerce in January 2000.

[Copies of the U.S. registration certificates for these marks are attached to the Complaint as Annexes 8 through 15.]

(3) Through long-standing and continuous use in commerce in connection with financial services offered by the Complainant, the TIAA-CREF family of marks has become famous in the financial services industry and has acquired substantial goodwill. As discussed above, the Complainant maintains a substantial Internet presence, having spent almost $100 million in 2004 and 2005 to promote its mark.

 

5. Parties’ Contentions

A. Complainant

On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name, <wwwtiaa-cref.org>, be transferred to the Complainant in accordance with paragraph 4(i) of the Policy, on the following grounds:

(1) The Domain Name at issue is confusingly similar to the Complainant’s TIAA-CREF mark. Only the addition of the prefix “www” differentiates the Domain Name, <wwwtiaa-creff.org>, from the Complainant’s TIAA-CREF mark.

Confusing similarity turns on the inherent distinctiveness of the trademark, the extent of use of the trademark, the extent of time the trademark has been in use, the name of the wares, services and business, and the similarity in sound, appearance and idea suggested by the trademark and the domain name, among other factors (See, AltaVista Company v. Geoffrey Fairbairn, WIPO Case No. D2000-0849). The Complainant’s TIAA-CREF mark is not descriptive of anything, and is thus highly distinctive of the Complainant’s business. Moreover, the Complainant’s mark has become well known to the public in the financial services field, including, but not limited to, the areas of mutual funds, pensions, annuities and other investment services through (a) the Complainant’s extensive advertising, including a substantial Internet presence, and (b) the Complainant’s use in commerce since at least 1952.

Given the Respondent’s Domain Name, <wwwtiaa-cref.org>, differs from the Complainant’s TIAA-CREF mark only by the addition of the “www” prefix, the visual and aural similarities between the Domain Name and the Complainant’s TIAA-CREF mark are overwhelmingly obvious. The addition of the “www” prefix to the Respondent’s Domain Name, <wwwtiaa-cref.org>, does not sufficiently distinguish the Domain Name from the Complainant’s mark (See, Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No.D2000-0256). Moreover, as previous UDRP decisions have repeatedly stated the addition of the generic top-level domain to the end of the domain name does not diminish the confusingly similar nature of the Domain Name at issue (See, Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728).

(2) The Respondent has no rights or legitimate interests in respect of the Domain Name: There is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use the Domain Name, <wwwtiaa-cref.org>, in connection with a bona fide offering of goods or services. To the contrary, it provides a directory of links directing Internet users to entities that compete with the Complainant in the fields of mutual funds and investment advice, the same fields for which the Complainant has registered its mark. A copy of the “www.wwwtiaa-cref.org” web page is attached to the Complaint. [Annex 16].

Moreover, the Respondent is not commonly known by <wwwtiaa-cref.org>. The Respondent’s name does not appear in <wwwtiaa-cref.org>, nor does the Respondent’s name appear anywhere on the “www.wwwtiaa-cref.org” web site. There is absolutely no connection between the Respondent’s Domain Name and the Complainant’s name or marks.

Finally, the Respondent is not making “legitimate non-commercial or fair use” of the Domain Name at issue, <wwwtiaa-cref.org>, “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” (Policy Paragraph 4(c) (iii)). In stark contrast, the Respondent is using the Domain Name that incorporates the Complainant’s mark to divert Internet users to the Respondent’s web site, which, in turn, provides links to the web sites of the Complainant’s competitors and causes pop-up advertisements to appear. The only conceivable purpose of the Respondent’s web site is to trade upon the goodwill associated with the Complainant’s TIAA-CREF mark and thereby to divert and redirect Internet users from the Complainant’s web site to the Respondent’s “directory site” (See, CBS Broadcasting, Inc. v. Toeppen, WIPO Case No. D2000-0400 and Netcentives, Inc. v. B.W. Brody Co., WIPO Case No. D2000-0672). The Complainant believes that the Respondent financially benefits from these activities, both through the pop-up advertising and, with respect to the “directory” site, on a “per click” basis.

(3) The Domain Name at issue was registered and is being used in bad faith: The Respondent has registered and used the Domain Name at issue, <wwwtiaa-cref.org>, in bad faith under Paragraph 4 (b) of the Policy. The Respondent seeks to take advantage of the owner of a famous mark to attract traffic to its own site by the improper registration and use of a domain name that is confusingly similar to that famous mark. The Respondent registered and uses the Domain Name to drive visitors to its directory site, which provides “sponsored links” in the fields of mutual funds and investment services, the same goods and services covered by the Complainant’s mark. In addition the Domain Name also triggers pop-up advertisements. The Respondent thus attempts to benefit commercially by taking advantage of the confusingly similarity between the Domain Name and the Complainant’s mark to “free-ride” on the goodwill of the Complainant’s TIAA- CREF mark. As such, the Respondent’s activities correspond to those activities listed in paragraph 4(b)(iv) of the Policy as evidence of bad faith and use of a domain name (See, Reuters Ltd. v. Global Net2000, Inc., WIPO Case No., D2000-0441; and Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728).

Moreover, the Respondent’s registration of the Domain Name that is confusingly similar to the Complainant’s mark, which is widely known and has been used in commerce for more than 53 years, is further evidence of bad faith. Because of the distinctive nature of the Complainant’s mark, the Respondent would not have registered the Domain Name unless it intended to trade on the valuable goodwill and the prior and exclusive rights held by the Complainant in the TIAA-CREF mark (See, Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556). In fact, a simple trademark search on the web site of the U.S. Patent & Trademark Office would have found the TIAA-CREF family mark (See, Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the complainant to prove that each of the following elements is present:

(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 in respect of the domain name, and

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

The Panel notes that the Respondent has failed to respond to the Complainant within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint.

A. Identical or Confusingly Similar

The Domain Name at issue, <wwwtiaa-cref.org>, is identical or confusingly similar to the Complainant's “TIAA-CREF” marks registered in the United States and used in international commerce in connection with the Complainant’s financial services of various kinds for many years. The word “TIAA-CREF” is an arbitrary combination of letters of alphabet having no meaning other than representing the Complainant’s business. In the comparison of the Domain Name at issue with the Complainant’s TIAA-CREF mark, the prefix “www” to the Domain Name must be disregarded, because it is an abbreviation of “World Wide Web” and does not add any distinctive quality to the Domain Name. The generic top-level domain, “.org”, added to the Domain Name should likewise be disregarded in the finding of confusing similarity to the Complainant’s TIAA-CREF mark. Thus, eliminating these non-distinctive elements, the Panel finds that the Domain Name at issue is confusingly similar to the Complainant’s TIAA-CREF mark. This finding is well supported by the UDRP panel decisions cited by the Complainant including Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (with respect to the addition of the prefix “www”) and Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728 (with respect to the addition of “.org” suffix).  

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph (c) of the Policy because there is no evidence to show that the Respondent, whose trade name is Domain Deluxe, has been or is commonly known by the Domain Name, or that the Respondent acquired any trademark rights in the Domain Name. Further, the Complainant has not authorized or permitted the Respondent to use the word “TIAA-CREF” for its Domain Name.

Based on the case file, the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

The Domain Name at issue has been registered and is being used in bad faith by the

Respondent on the following grounds:

It is clearly established that the Complainant’s TIAA-CREF mark possesses distinctive quality and is well-known or famous for representing the Complainant’s financial services and the Domain Name at issue, <wwwtiaa-cref.org>, is confusingly similar to the Complainant’s mark. Having concluded that the Respondent has no rights or legitimate interests in the Domain Name, the Panel finds that the Respondent’s sole intention of registering and using the Domain Name is to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s site or its products or services offered on the Respondent’s site (paragraph 4(b)(iv) of the Policy). The Panel notes that the web site associated with the domain name is used for providing links in the fields of mutual funds and investment services, the same goods and services covered by the Complainant’s mark.

The Panel further finds that the Respondent intends to misappropriate the goodwill established by the Complainant’s use of the TIAA-CREF mark for many years.

Therefore, the Panel finds that the Respondent has registered and is suing the Domain Name in bad faith.

 

7. Decision

For all the foregoing reasons, the Panel hereby orders, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, that the Domain Name <wwwtiaa-cref.org> be transferred to the Complainant.


Teruo Doi
Sole Panelist

Dated: January 25, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1228.html

 

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