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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Teachers Insurance and Annuity Association of America v. Unasi Inc.

Case No. D2005-1266

 

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 Unasi Inc., Panama.

 

2. The Domain Names and Registrars

The disputed domain names

<iaa-cref.org>
<itaa-cref.com>
<itaa-cref.org>
<riaa-cref.org>
<taacref.com>
<tiaaa-cref.com>
<tiaaa-cref.org>
<tiaaacref.org>
<tiaa-ccref.org>
<tiaa-cef.com>
<tiaacef.com>
<tiaa-cerf.com>
<tiaacerf.com>
<tiaacerf.org>
<tiaacraf.com>
<tiaacraf.org>
<tiaacraft.com>
<tiaa-crdf.org>
<tiaa-cre.com>
<tiaa-cred.com>
<tiaacred.com>
<tiaa-creef.com>
<tiaa-creef.org>
<tiaacreef.org>
<tiaa--cref.org>
<tiaa-creft.org>
<tiaa-creg.com>
<tiaacre.org>
<tiaa-crerf.org>
<tiaacrf.com>
<tiaa-crfef.org>
<tiaa-crfe.org>
<tiaacrf.org>
<tiaa-crref.org>
<tiaa-ctef.org>
<tiaa-ref.org>
<tiaas-cref.org>
<tiacreft.com>
<tiiaa-cref.com>
<tiiaacref.com>
<tiiaa-cref.org>
<toaacref.com>
<triaa-cref.org>
<ttiaacref.org>
<wwwtiaa-cref.com>
<www-tiaa-cref.org>
<yiaa-cref.org>

are registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com,

iHoldings.com Inc. d/b/a DotRegistrar.com, Capitoldomains, LLC and

DomainDoorman, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2005. On December 8, 2005, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com

iHoldings.com Inc. d/b/a DotRegistrar.com

Capitoldomains, LLC

DomainDoorman, LLC

a request for registrar verification in connection with the domain names at issue. On December 12, 2005, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com

iHoldings.com Inc. d/b/a DotRegistrar.com

DSTR Acquisition VII, LLC d/b/a Dotregistrar.com

Capitoldomains, LLC

DomainDoorman, LLC

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 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2006.

The Center appointed Teruo Doi as the Sole Panelist in this matter on January 17, 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 United States of America and international commerce in connection with its various financial services since at least 1952, including the word mark TIAA-CREF (“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.

The Complainant uses its TIAA-CREF mark to promote its services on the Internet, through its website available at “www.tiaa-cref.org”, a copy of its website is attached to the Complaint, and also through its website available at <tiaa-crefinstitute.org>, a copy of this website is attached to the Complaint. 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.

(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 followings:

- TIAA-CREF (and block design), subject of U.S. Registration No. 1,617,632, 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. 1,351,983, 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. 1,911,410, 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.

(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 facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Names – that are, <tiaa-ccref.org>, <tiaa-cef.com>, <tiaa-cerf.com>, <tiaa-crdf.org>, <tiaa-cre.com>, <tiaa-cred.com>, <tiaa-creef.com>, <tiaa-creef.org> <tiaa-creg.com>, <tiaa-crerf.org>, <tiaa-crefe.org>, <tiaa-crfef.org>, <tiaa-ctef.org>, <tiaa-ref.org>, <tiaaa-cref.com>, <tiaaa-cref.org>, <tiaaacref.org>, <tiaacerf.com> <tiaacerf.org>, <tiaacraf.com>, <tiaacraf.org>, <tiaacre.org>, <tiaacred.com>, <tiaacreef.org>, <tiaacrf.com>, <tiaacrf.org>, <tiaas-cref.org>, <tiaa-cref.com>, <tiiaa-cref.org>, <tiaa-cert.com>, <toaacref.com>, <triaa-cref.org>, <ttiaacref.org>, <tiaa-creft.org>, <iaa-cref.org>, <itaa-cref.com>, <itaa-cref.org>, <riaa-cref.org>, <taacref.com>, <tiaa-cref.org>, <tiaa-crref.org>, <tiaacef.com>, <tiiaacref.com>, <www-tiaa-cref.org>, <wwwtiaa-cref.com>, <yiaa-cref.org>, <tiacreft.com>, and <tiaacraft.com> – be transferred to the Complainant in accordance with paragraph 4(b)(i) of the Policy, on the following grounds:

(1) The Domain Names registered and used by the Respondent are confusingly similar to the Complainant’s TIAA-CREF mark: Each of the Domain Names incorporates the Complainant’s TIAA-CREF mark and/or confusingly similar misspellings of the Complainant’s TIAA-CREF mark.

Confusing similarity turns on the inherent distinctiveness of the trademark, the extent of the use of the trademark, the extent of time the trademark has been in use, the nature of the wares, services and businesses, 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 that, with two sets of exceptions, i.e., <www-tiaa-cref.org> and <wwwtiaa-cref.com>, each of the Domain Names differs, if at all, from the Complainant’s mark only by the omission, addition, substitution or transposition of one letter, the visual and aural similarities between the Domain Names and the Complainant’s TIAA-CREF mark are overwhelming. It is well settled that a domain name which differs from a complainant’s mark by only one letter is very likely to be confusingly similar to the trademark --especially since the trademark is distinctive. (See Reuters Ltd v. Global Net 2000, Inc., WIPO Case No. D2000-0441). Each of the Domain Names sounds confusingly similar to the Complainant’s mark, in particular because many of the Domain Names begin with “tiaa” and are followed by some or all of the letters “c”, “r”, “e”, and “f”, in that order; the other Domain Names begin similarly, with only a letter omitted, added, substituted or transposed. A domain name that incorporates a mark or a confusingly similar misspelling or portion of a mark and also includes an additional letter or substitutes a letter is not sufficiently different from the mark to obviate confusing similarity. (See Sherman License Holdings, Limited v. Icedlt.com, WIPO Case No. D2004-0713; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314; and Geobra Brandstaetter GmbH & Co KG v. Only Kids Inc., WIPO Case No. D2001-0841).

Finally, as previous WIPO decisions have repeatedly stated, the omission of the hyphen in certain Domain Names, as well as the addition of the generic top-level domain to the end of a domain name or the letters “www” to the beginning of a domain name, does not diminish the confusingly similar nature of the Domain Names (See Columbia Sportswear Company v Mahlon Keeler, WIPO Case No. D2000-0206; Bang & Olufsen a/s v. Unasi Inc WIPO Case No. D2005-0728; and Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441).

(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 Names in connection with a bona fide offering of goods or services. To the contrary, all but one of the Domain Names redirects users to “www.tiaa-cef.org”, which provides a directory of links directing Internet users to entitles 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 (It is noteworthy that the respondent in Bang & Olufsen is the same Respondent in the present case). Copies of the web pages for the Domain Names, and for “www.tiaa-cef.org”, are attached to the Complaint.

Moreover, the Respondent is not commonly known by any of the Domain Names. The Respondent’s name does not appear in any of the Domain Names, nor does the Unasi name appear anywhere on the website to which the Domain Names, are directed. There is absolutely no connection between the Respondent’s Domain Names and the Complainant’s name or marks.

Finally, the Respondent is not making “legitimate non-commercial or fair use” of the Domain Names, “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 domain names that incorporate the Complainant’s mark and/or confusingly similar variants of the Complainant’s TIAA-CREF mark to divert Internet users to “www.tiaa-cef.org”, which, in turn, provides links to the websites of the Complainant’s competitors and causes pop-up advertisements to appear. The only conceivable purpose of the “www.tiaa-cef.org” website accessed via the Domain Names (and of the tiacreft.com website) is to trade upon the goodwill associated with the Complainant’s TIAA-CRFEF mark and thereby to divert and redirect Internet users from the Complainant’s website to the Respondent’s directory sites. (See CBS Broadcasting, Inc. v. Toeppen, WIPO Case No. D2000-0400; and Netcentives, Inc. v. B.W. Brody Co., WIPO Case No. D2000-0672).

(3) The Domain Names at issue were registered and are being used in bad faith: The Respondent has registered and used the Domain Names in bad faith under paragraph 4(b) of the Policy. The Respondent seeks to take advantage of the owner of a famous mark and to attract traffic to its own site by the improper registration and use of domain names confusingly similar to that famous mark. The Respondent registered and uses domain names incorporating the misspellings of the TIAA-CREF mark to drive visitors to its directory sites; the Domain Names redirect Internet users to the site at “www.tiaa-cef.org”, which presents a directory of “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 Names also trigger pop-up advertisements. The Respondent thus attempts to benefit commercially by taking advantage of the confusing similarity between the Domain Names 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 registration and use of a domain name. (See Reuters Ltd. v. Global Net 2000, 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 domain names that are 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 Names 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 website of the U.S. Patent & Trademark Office would have found the TIAA-CREF family of marks. (See Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551).

Finally, the Respondent’s history of registering and using domain names that have no legitimate connection to its business and that contain other’s prominent marks provides further evidence of bad faith. In fact, the Respondent, under variants of its name “Unasi”, has been involved in at least eleven UDRP procedures regarding more than forty domain names, all of which resulted in the transfer of the disputed domain names to the complainants. (See Gianfranco Ferre’ S.p.A. v. Unasi, Inc., WIPO Case No. D2005-0622; Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728; Red Bull GmbH v. Unasi Management Inc., WIPO Case No. D2005-0304; State Farm Mutual Automobile Insurance Co. v. Unasi Management Inc., Case No. FA0505000472028 (NAF June 15, 2005); Morgan Stanley v. Unasi Management Inc., Case No. FA0505000471488 (NAF June 20, 2005); ermalogica, Inc. and The International Dermal Institute, Inc. v. Unasi, Inc., Case No. FA0505000485936 (NAF July 6, 2005); Save the Children Foundation, Inc. v. Unasi, Inc. Case No. FA0507000510017 (NAF August 19, 2005); Deutsche Telekom AG v. Unasi Management, Inc., WIPO Case No. D2005-0423); Members Equity PTY Ltd. v. Unasi Management Inc., WIPO Case No. D2005-0383); La Caixa d’Etalvis I Pensions de Barcelona v. Unasi Inc., WIPO Case No. D2005-0567; and Jafra Cosmetics, S.A. de C.V. v. Unasi Inc., WIPO Case No. D2005-0926). (also noting that “Unasi Inc.” and “Unasi Management Inc.” refer to the same entity).

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) That 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 right 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 Complaint and, as such, does not contest the facts asserted by the Complainant in the Complaint.

A. Identical or Confusingly Similar

The Domain Names registered and used by the Respondent are 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 since at least 1952. The word “TIAA-CREF” is an arbitrary combination of letters of alphabet having no meaning other than representing the Complainant’s business, and this word is always the dominant and distinctive part of the TIAA-CREF family of marks.

Each of the Domain Names registered and used by the Respondent incorporates the Complainant’s TIAA-CREF mark and/or confusingly similar misspellings of the Complainant’s TIAA-CREF mark. The suffix “.com” or “.org” attached to each of the Domain Names does not affect the finding of confusing similarity with the Complainant’s TIAA-CREF mark because both suffixes, “.com” and “.org”, represent the top-level domain and should be disregarded in the finding of confusing similarity of the Domain Names with the Complainant’s TIAA-CREF mark. The prefix “www” attached to two of the Domain Names, <www-tiaa-cref.org> and <wwwtiaa-cref.com>, should not affect the finding of confusingly similarity with the Complainant’s TIAA-CREF mark. The elimination of such suffixes and prefix in the finding of confusing similarity is well-supported by the UDRP decisions cited by the Complainant. (See Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441).

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(c) of the Policy, because there is no evidence to show that the Respondent, whose name is Unasi Inc. has been or is commonly known by any of the Domain Names, or that the Respondent acquired any trademark rights in the Domain Names, neither the Complainant has authorized or permitted the Respondent to use the word TIAA-CREF for its Domain Names.

Based on the case file, the Complainant has met the second element of test.

C. Registered and Used in Bad Faith

The Domain Names have been registered and are being used in bad faith by the Respondent on the following grounds:

It is clearly established that the Complainant’s AIAA-CREF mark possesses distinctive quality and is well known or famous as representing the Complainant’s financial services and each of the Domain Names is confusingly similar to the Complainant’s mark. Having concluded that the Respondent has no rights or legitimate interests in the Domain Names, the Panel finds that the Respondent’s sole intention of registering and using these Domain Names is 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 its products or services offered on the Respondent’s site (paragraph 4(b)(iv) of the Policy). The Panel notes that the website associated with the domain name is used for providing links in the fields of mutual funds and investment services, the same goods or 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.

 

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 Names – that are, <tiaa-ccref.org>, <tiaa-cef.com>, <tiaa-cerf.com>, <tiaa-crdf.org>, <tiaa-cre.com>, <tiaa-cred.com>, <tiaa-creef.com>, <tiaa-creef.org>, <tiaa-creg.com>, <tiaa-cref.org>, <tiaa-crfe.org>, <tiaa-crfef.org>, <tiaa-ctef.org>, <tiaa-ref.org>, <tiaaa-cref.com>, <tiaaa-cref.org>, <tiaaacref.org>, <tiaacerf.com>, <tiaacerf.org>, <tiaacraf.com>, <tiaacraf.org>, <tiaacre.org>, <tiaacred.com>, <tiaacreef.org>, <tiaacrf.com>, <tiaacrf.org>, <tiaas-cref.org>, <tiiaa-cref.com>, <tiiaa-cref.org>, <tiaa-cerf.com>, <toaacref.com>, <triaa-cref.org>, <ttiaacref.org>, <ttiaacref.org>, <tiaa-creft.org>, <jaa-creft.org>, <iaa-cref.org>, <itaa-cref.com>, <itaa-cref.org>, <taacref.com>, <tiaa-cref.org>, <tiaa-creref.org>, <tiaacef.com>, <tiiaacref.com>, <www-tiaa-cref.org>, <wwwtiaa-cref.com>, <yiaa-cref.org>, <tiacreft.com>, and <tiaacraft.com> – be transferred to the Complainant.


Teruo Doi
Sole Panelist

Dated: January 31, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1266.html

 

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