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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Teachers Insurance and Annuity Association of America v. Wreaks Communications Group

Case No. D2006-0483

 

1. The Parties

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.

Respondent is Wreaks Communications Group, Poultney, Vermont, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <tiaa-cref.net> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2006. On April 19, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On April 19, 2006, Register.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 1, 2006. In accordance with the Rules, paragraph 5(a), the Response due date was May 21, 2006. Respondent did not submit a formal response. Accordingly, the Center notified Respondent’s default on May 23, 2006. On May 23, 2006, after the default notification, Respondent sent an email communication to the Center, which the latter duly acknowledged on May 24, 2006. No substantive response was filed.

The Center appointed Michael A. Albert as the sole panelist in this matter on June 1, 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 evidence submitted by Complainant, which, in the absence of any response by Respondent, is undisputed, indicates that Complainant is a New York corporation and financial services provider, which with its affiliates and subsidiaries does business under the name TIAA-CREF. It has provided financial services to individuals and institutions in the fields of education, research and health care under that name since at least 1952.

As part of its business, Complainant has secured a variety of United States and international trademark registrations for the marks TIAA-CREF, TIAA-CREF MUTUAL FUNDS, TIAA-CREF INDIVIDUAL & INSTITUTIONAL SERVICES,TIAA-CREF INVESTMENT MANAGEMENT, TIAA-CREF INVESTMENT SOLUTIONS, and TIAA-CREFF INSTITUTE (collectively, the “TIAA-CREF marks”), as well as various logos incorporating those marks. Complainant has appended to its Complaint evidence of its United States trademark registrations in the TIAA-CREF marks.

Complainant has used the TIAA-CREF marks in commerce continuously and consistently for decades, some since as early as 1952. Complainant spent almost $100 million in promoting these marks in 2004 and 2005 alone. The TIAA-CREF marks have become famous and associated with Complainant’s goods and services. Complainant maintains a substantial internet presence at its web site at “www.tiaa-cref.org”, and has done so since 1997.

Respondent registered the disputed domain name, <tiaa-cref.net>, on May 25, 2000. Since that date, the domain name has never resolved to a web page.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that it has established trademark rights by virtue of its long use of the TIAA-CREF marks in commerce, its federal registration of the marks, and its substantial investment in building customer good will in the marks. Complainant also contends that the disputed domain name is identical to its marks, apart from the top level domain name.

Complainant also argues that Respondent has no rights or legitimate interests in the domain name. Complainant maintains that Respondent has made no use of the domain name at all since registering it. Thus, Respondent has not used the domain name in connection with a bona fide offering of goods or services, nor is it making noncommercial or fair use of the domain name. There is also no evidence that Respondent is commonly known by the domain name.

Finally, Complainant contends that Respondent has registered and is using the domain name in bad faith. While Respondent has failed to use the domain name for any purpose since registering it, failure to use a domain name can constitute bad faith in the totality of the circumstances. Such a conclusion is especially appropriate here, as Respondent had at least constructive notice of Complainant’s rights in the TIAA-CREF marks. Cases that fail to find bad faith based on a respondent’s inactivity are easily distinguishable from the current situation.

B. Respondent

The Respondent did not submit a formal response to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes, first, that Complainant has sufficiently shown that it has rights in its TIAA-CREF mark.

The domain name incorporates the entirety of Complainant’s TIAA-CREF mark, and a substantial portion of other marks in the TIAA-CREF family of marks. The only addition is the “.net” top level domain. Top level domains are irrelevant to a finding that a domain name and trademark are identical. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (July 7, 2000), (addition of a generic top-level domain is “not relevant” to a determination of similarity, as it is required, necessary, and functional).

The Panel finds that Complainant has shown that the domain name is identical or confusingly similar to its TIAA-CREF marks under the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Respondent does not appear to have any trademark or other intellectual property rights in the domain name. There is also no evidence before the Panel that Respondent has commonly been known by the domain name or any variant of it. See RMO, Inc. v. Burbridge, FA96949 (Nat. Arb. Forum May 16, 2001) (interpreting the Policy, paragraph 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); Gallup Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum January 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark).

There is also no evidence that Respondent has made any use of the domain name in connection with a bona fide offering of goods or services, or as part of a noncommercial or fair use. Respondent has simply passively held the <tiaa-cref.net> domain name since registering it. Absent some contrary evidence from Respondent, passive holding of a domain name does not constitute “legitimate non-commercial or fair use.” See Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195 (October 26, 2000) (noting that respondent was a passive holder of the disputed domain name <crateandbarrel.org> in that “the domain name does not resolve to a site” and ruling that, “[g]iven that the domain name has been registered since mid-March, 2000, it is fair to infer that the Respondent has not made, nor taken any preparatory steps to make,” any legitimate use of the domain name); Netcentives, Inc. v. B.W. Brody Co., WIPO Case No. D2000-0672 (September 29, 2000) (finding that the complainant made the requisite showing under paragraph 4(a)(ii) where complainant argued that the domain name at issue had no value to the respondent apart from the goodwill and reputation associated with complainant’s mark).

The Panel finds that Respondent has no rights or legitimate interests in the domain name under the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Respondent has not engaged in any of the activities enumerated by the Policy, paragraph 4(b), as examples of bad faith registration and use. Instead, Respondent has merely passively held the web site, engaging in no activity. However, beginning with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), a number of panels have held that inaction by a respondent with regard to a domain name can constitute bad faith use when the respondent has registered the domain name in bad faith and the totality of the circumstances leads to the conclusion that a “[r]espondent’s passive holding amounts to bad faith.” Telstra, supra (stating that “paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith…. [I]n considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”). See also Autoshop 2 Di Battaglia Ferruccio C. S.N.C. v. Willamette RF Inc., WIPO Case No. D2004-0250 ( June 2, 2004) (collecting cases citing to Telstra).

When considered in the light of Telstra and subsequent cases, Complainant in this case has shown bad faith registration and use by Respondent:

(i) As both Respondent and Complainant are residents of the United States, Respondent was on constructive notice of Complainant’s trademark rights in the TIAA-CREF mark. See Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000).

(ii) Respondent was likely on actual notice of Complaint’s rights in the TIAA-CREF marks as well. Through its marketing efforts, Complainant had made the mark famous throughout the United States well before Respondent registered the disputed domain name. See Telstra, supra (the Policy, paragraph 4(a)(iii) satisfied where “Complainant’s trademark has a strong reputation and is widely known”). In addition, Respondent resides in the same state and city as Complainant, increasing the likelihood that Respondent was actually aware of Complainant’s mark. Finally, Complainant has operated a web site at <tiaa-cref.org> since 1997, approximately three years before Respondent registered the <tiaa-cref.net> domain name. This suggests that Respondent intended to divert internet traffic that was aimed for Complainant’s legitimate site to its own site, which was identically named apart from the top-level domain. Taken as a whole, these circumstances establish bad faith registration by Respondent.

(iii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use. See Telstra, supra.

(iv) Complainant’s mark is an arbitrary term or acronym. Nothing in the disputed domain name or in Respondent’s actions suggest any desire to comment on Complainant or its products, provide a guide to such products, use the term descriptively, or otherwise engage in any nominative or fair use. As such, it is “not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” See Telstra, supra.

(v) While Complainant has not come forth with evidence that Respondent in this case provided false contact information, as did the respondent in Telstra, the consideration of bad faith is to be undertaken in view of all the circumstances. The provision of false contact information or operation under a false identity is not a prerequisite for a finding of bad faith registration and use based on respondent inaction. See, e.g., Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021 (March 9, 2000) (citing Telstra with approval and ruling that respondent’s inaction constituted bad faith, even though respondent appears to have provided correct contact information).

A few decisions have distinguished Telstra, and refused to find bad faith registration and use based on a respondent’s inaction as to the disputed domain name. The factors present that differentiated those cases from Telstra, however, are not present in the current case. In Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038 (March 9, 2005), bad faith registration and use was not found because the respondent had registered the domain name more than a year before the complainant made any use of the VALVE mark, and because the mark was “a common English word frequently used in its generic sense.” Id. By contrast, the current Complainant used the TIAA-CREF mark long before Respondent registered the disputed domain name, and it is an arbitrary mark that has no generic sense. In Autoshop, bad faith was not found because the respondent, not a resident of the same forum as the complainant, was not on constructive or actual notice of Complainant’s rights, and itself had rights and legitimate interests in the domain name. Id. In this case, Respondent had both constructive and actual notice of Complainant’s rights, and has no rights of its own in the domain name. Finally, in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, (August. 21, 2000), bad faith was not found where the marks asserted by the complainant were weak and homophones of a generic term, the disputed domain names were generic or descriptive terms, and respondent was already making use of some of the domain names. Id. By contrast, Complainant’s TIAA-CREF marks are strong and famous, the disputed domain name is not generic or descriptive, and Respondent is not making use of the domain name.

The Panel finds that, on the facts and circumstances of this particular case, Respondent has registered and used the domain name in bad faith under the Policy, paragraph 4(a)(iii).

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name <tiaa-cref.net> be transferred to the Complainant.

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Michael A. Albert
Sole Panelist

Dated: June 15, 2006