The Common Fund for Nonprofit Organizations v. Modern Limited-Cayman Web Development a/k/a Cayman Trademark Trust
Case No. D2005-1250
1. The Parties
The Complainant is The Common Fund for Nonprofit Organizations, of Wilton, Connecticut, United States of America.
The Respondent is Modern Limited-Cayman Web Development a/k/a Cayman Trademark
Trust, of Cayman Islands.
2. The Domain Name and Registrar
The disputed domain name <commonfund.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2005. On December 5, 2005, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On December 6, 2005, BulkRegister.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. 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 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2006.
The Center appointed Mr. Edward Chiasson, Q.C. as
the Sole Panelist in this matter on January 16, 2006. The panelist submitted
a Statement of Acceptance and Declaration of Impartiality and Independence,
as required by the Center to ensure compliance with the Rules, paragraph 7.
The Administrative Panel finds that it was constituted properly.
4. Factual Background
The following information derives from the Complaint.
The Complainant is a non-profit organization that offers investment opportunities to its non-profit clients. In 1971, The Common Fund for Nonprofit Organizations officially was founded. Since its founding in 1971, the Complainant has provided non-profit organizations with superior investment funds and innovative financial tools at relatively low cost, together with educational programs and publications for their investors and conscientious client service. Today, the Complainant manages $34 billion in assets and has over 1600 clients.
The Complainant has used the trade name “The Common Fund” since 1971 in connection with offering all of its financial goods and services. The Complainant operates a website at “commonfund.org”, and has held that domain name since September 2002.
“COMMONFUND” is a United States’ federally registered trademark of the Complainant.
The Complainant has used the mark “COMMONFUND” since at least 1998 in connection with goods and services offered to non-profit organizations in the field of finance and accounting.
The Respondent is not known by the name “COMMONFUND” and has no apparent interest in it.
The Respondent is a well-known “cyber squatter” that uses domain names to direct traffic to advertisers.
The Respondent has been involved in a number of other
ICANN proceedings. In many proceedings, the domain name in issue was transferred.
In addition, the Respondent has been involved in a number of ICANN proceedings
at WIPO. A representative list of these cases follows: CIT Group Inc. v.
Search Terms and Modern Limited – Cayman Web Development, WIPO
Case No. D2005-0921; Nick Cannon v. Modern Limited - Cayman Web Development,
WIPO Case No. D2005-0757; Wa1-Mart Stores,
Inc. v. Modern Limited - Cayman Web Development Domain Administrator, WIPO
Case No. D2005-0322; National Football League Players Association, Inc.
v. Cayman Trademark Trust d/b/a Trademark, WIPO
Case No. D2005-0234; Sociйtй Franзaise du Radiotй1йphone-SFR v. Modern
Limited - Cayman Web Development, WIPO
Case No. D2004-0385; Sociйtй des Hotels Mйridien v. Modern Limited -
Cayman Web Development, WIPO Case No. D2004-0321;
Caesars Entertainment, Inc. (“CEP”) v. Modem Limited - Cayman
Web Development, WIPO Case No. D2004-0267;
Infinity Broadcasting Corporation v. Cayman Trademark Trust, WIPO
Case No. D2004-0251; Microsoft Corporation v. Modern Limited - Cayman
Web Development, WIPO Case No. D2003-0919;
Les Laboratoires Servier v. Cayman Trademark Trust, WIPO
Case No. D2003-0667; Cine Colombia, S.A. v. Modern; Limited - Cayman
Web Development, WIPO Case No. D2003-0671;
Joe David Graedon v. Modem Limited-Cayman Web Development, WIPO
Case No. D2003-0640; The Sportsman’s Guide, Inc, v. Modern Limited,
Cayman Islands, WIPO Case No. D2003-0305.
In all of these cases, the subject domain names were transferred to the complainant.
These cases include the domain names: <citbank.com>; <wamart.com>;
<lemeridian.com>; <parishotelcasino.com>; <windowsmediaplayer.com>;
The Respondent is in the business of warehousing domain names. See Downey Communications, Inc. v. Modern Limited-Cayman Web Development, NAF Claim No. FA0404000260657 (The Respondent submitted evidence that it owned over 2,000 domain names).
In a previous case, it was noted that the Respondent maintained a basic portal websites that contain numerous hyperlinks to other unrelated websites.
The Respondent has been documented to have registered over 2,200 domain names. A good portion of the names registered by the Respondent were either identical to, misspellings of, or otherwise confusingly similar to many well-known trademarks owned by unrelated entities. The Respondent has been found on at least thirty-four (32) separate occasions by UDRP panels to have registered and used a challenged domain name in bad faith.
An Internet user who accesses the website to which the subject domain name resolves is taken to a webpage associated with a search engine, at which, as of November 29, 2005, the “sponsored links” included “Mutual Funds”, “Top Mutual Funds to Buy”, “Hedge Fund Accounts” and “Starting a new Hedge Fund”, among numerous others.
When an Internet user clicks on one of these sponsored links, the user is taken to a page for another’s website. For example, clicking on “Starting a new Hedge Fund” leads to a website for Trade Blade at “tradeblade.com”.
The Respondent did not participate in this proceeding.
5. Parties’ Contentions
The Complainant relies on its registered mark and long use of the words “common fund”. It asserts that the subject domain name is “…identical and confusingly similar to the Complainant’s trademark and domain name”.
The Complainant states that the Respondent is not known by the words “common fund” and apparently has no direct interest in them. It uses the subject domain name only to resolve to a webpage which directs users to services that are similar to those offered by the Complainant.
The Complainant states: “…the Respondent’s registration of the subject domain name is intended to and will confuse the relevant purchasing public into believing that [the] Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with a website to which the subject domain name resolves. There clearly is no reason to use the <commonfund.com> domain name in this manner except for purposes of bad faith to divert traffic from [the] Complainant and for [the] Respondent to generate income from such a sponsored link.”
It is the position of the Complainant that the “… Respondent was on constructive notice of Complainant’s well-known COMMONFUND marks by virtue of Section 22 of The Lanham Act, 15 U.S.C. §1072. It is further inconceivable that the Respondent was unaware of the COMMONFUND name, which has been well-known for decades in the investment industry by virtue of Complainant’s long and ubiquitous use thereof”.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain names are 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 names; and
(iii) the domain names have been registered and are being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names;
(ii) registration of the domain names 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;
(iii) registration of the domain names primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain names, intentionally attempting 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 website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant relies on previous domain name dispute decisions. While often these are helpful, they are neither controlling nor binding on this Administrative Panel.
A. Identical or Confusingly Similar
The Complainant registered the words “common fund” and long has used them.
The Complainant asserts that the subject domain name, “… is identical and confusingly similar to the Complainant’s trademark and domain name”.
These are different criteria that involve different evidentiary considerations, but it is clear that the subject domain name is identical to the Complainant’s mark. If differs only by the addition of “.com” which is of no significance.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent is not known by the subject domain name and is not authorized to use the Complainant’s mark.
Information that a respondent has a history of cyber-squatting is not conclusive, but it can be relevant. Similarly, information that a respondent warehouses domain names, may support an inference that its interest in a given domain name is not legitimate.
A respondent is not obliged to participate in a domain name proceeding, but if it were not to do so, it would be vulnerable to the usual inferences that flow from the not unreasonable assertions of fact of a complainant.
The information provided to the Administrative Panel leads to an inference that the Respondent does not have a legitimate interest in the subject domain name. The Respondent has done nothing to supplant that inference.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
A finding that a respondent does not have a legitimate interest in a domain name that is identical to the mark of another does not lead automatically to a conclusion of bad faith, but the facts that give rise to the finding may be relevant to the bad faith inquiry.
In this case, the Complainant asserts: “Respondent was on constructive notice of Complainant’s well-known COMMONFUND marks by virtue of Section 22 of The Lanham Act, 15 U.S.C. §1072”.
United States legislation providing for constructive notice is not controlling in a domain name dispute, particularly one in which the Respondent is not in the United States.
Of greater significance is the long-standing and known use by the Complainant of its mark.
The subject domain name, which incorporates the Complainant’s name, is not generic or a common-word derivative. Its registration leads to an inference that the choice of words was not by accident. This is supported by the Respondent’s reference to investment matters.
The Respondent’s history as a cyber-squatter also leads to an inference of bad faith, which the Respondent has done nothing to supplant.
The Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(iii) of the Policy.
Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established it case.
The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Date: January 30, 2006