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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

First Magnus Financial Corp. v. Domains Ventures

Case No. D2006-1427

 

1. The Parties

The Complainant is First Magnus Financial Corp., Tucson, Arizona, United States of America, represented by Fennemore Craig, United States of America.

The Respondent is Domains Ventures, Xiamen, Fujian, the People’s Republic of China.

 

2. The Domain Name and Registrar

The disputed domain name <firstmagnusfinancial.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2006. On November 9, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On November 16, 2006, Moniker Online Services, 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 November 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2006.

The Center appointed Adam Samuel as the sole panelist in this matter on December 18, 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 Complainant has been using the name First Magnus Financial since 1996. It has not, though, registered the trademark. It uses the name in all fifty states of the United States of America. Its revenue in 2003 exceeded $336 million.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that First Magnus Financial has developed secondary meaning. First Magnus Financial has engaged in significant advertising over the past ten years. First Magnus Financial’s mark is used in all fifty states. Secondary meaning is clearly established. The mark serves to identify services of the Complainant and to distinguish the source of services provided by it from competitors’ services.

By using First Magnus Financial in the domain name in issue, the Respondent creates a likelihood of confusion regarding sponsorship and approval of Respondent’s website by the Complainant.

The disputed domain name is identical to the First Magnus Financial mark, in appearance, meaning, and sound.

The use of the domain name in issue is likely to confuse customers of the Complainant. “Internet users do not undergo a highly sophisticated analysis when searching for domain names.” Green Products Co. v. Independence Corn By-Products Co., 992 F.Supp. 1070, 1079 (N.D. Iowa 1997).

In selecting the disputed domain name, the Respondent intends to divert First Magnus Financial’s customers to its site.

Potential customers are likely to believe that the domain name in issue is authorized or approved by the Complainant. Use of a trademark as a domain name “sends a message to Internet users that the website is associated with, or sponsored by the company owning the trademarks” and is “not a fair use”. The Respondent’s links on the site include “Mortgage Rates”, “Mortgage”, “Mortgage Loan”, “Home Mortgage”, and “Rates”.

The Respondent is also using the slogan “What you need, when you need it” on the website. Complainant has discovered a U.S. trademark registration for “WHAT YOU NEED, WHEN YOU NEED IT” owned by another company. Not only is the Respondent creating confusion with the Complainant’s trademark being used as a domain name, but by using the line “What you need, when you need it” gives the impression that the Complainant is infringing on another company’s federally registered mark.

The Respondent did not register the disputed domain names until after the First Magnus Financial trademark was established. The Respondent has failed to establish rights or legitimate interests in the disputed domain name.

The Respondent registered the domain name in issue on July 30, 2003. Complainant has been using the trademark First Magnus Financial since 1996 and registered its domain name on November 5, 1997 – nearly 6 years before Respondent’s registration. Respondent had constructive notice of the trademark rights. Respondent uses the domain name to offer financial services. Respondent was obviously actually aware of the use of First Magnus Financial as a trademark.

Registration of the domain name in issue prevents the use of the FIRST MAGNUS FINANCIAL trademark as a domain name by the Complainant.

The Respondent obtains “hits” from Internet users seeking First Magnus Financial and benefits from the resulting “initial source confusion”.

B. Respondent

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

 

6. Discussion and Findings

Under the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which it 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.

A. Identical or Confusingly Similar

Complainant claims to be entitled to common law trademark rights in the name First Magnus Financial due to its regular usage as a business name since 1996 across all fifty states of the United States of America, extensive advertising and large revenues from the name.

In a recent case, Lilian Vachovsky, COO, Aplus.Net Internet Services v. A+ Hosting Inc., WIPO Case No. D2006-0703, the WIPO Panel, in rejecting the claim that a common law mark existed summarized the position under US law and the caselaw, decided under the Policy:

“It is well settled that the term “trademark or service mark” as used in Paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

“Common law rights in a trademark derive from the use of the mark in commerce so as to distinguish the trademark owners’ goods or services from those of its competitors. See T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996). Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).

“Although the Complainant apparently does not have a registered trademark or service mark for the words “Aplus” or “Aplus.Net”, this fact standing alone is not fatal to a finding of identity or confusing similarity under the Policy. According to paragraph 4(a)(i) of the Policy, common law rights are sufficient to support a domain name complaint. To establish common law rights in a mark, a complainant must show that its mark has acquired secondary meaning, i.e., that the public associates the asserted mark with complainant’s goods and services. See First Place Financial Corp. v. Michele Dinoia c/o SZK.com, FA 506772 (Nat. Arb. Forum August 22, 2005). ICANN Panels have found relevant evidence of secondary meaning to include “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition”. Candy Direct, Inc. v. italldirect2u.com, FA 514784 (Nat. Arb Forum August 22, 2005)”.

Common law rights in a trademark derive from the use of the mark in commerce so as to distinguish the trademark owners’ goods or services from those of its competitors and may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. Here the unanswered Complaint asserts that the Complainant has been using its name since 1996 and had generated revenues through this of $336 million in 2003. The Complainant can show secondary meaning in that the public associates the asserted mark with the Complainant’s services through the length of its sales activities, the significant revenues and the extent of its advertising. First Magnus Financial as a combination of words has no independent meaning apart from being the Complainant’s name.

While one may regret that the Complainant has not registered its trademark, the widespread successful use of the name First Magnus Financial by the Complainant and its marketing using this name leads the Panel to conclude that the Complainant owns common law trademark rights in that name.

The domain name in issue reproduces the trademark without the gaps between the words and with just the addition of the suffix “.com”. It is clearly confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

The Respondent is not called ‘First Magnus Financial’ and does not appear to trade under that name. There is no evidence that the Complainant has authorized it to use the mark. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the case file, and in view of the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

The domain name in issue resolves to a website offering mortgage and other financial products which compete with the Complainants’ products. The domain name was registered in 2003. By this time, the Complainant’s business was a major financial corporation operating in exactly the same area that the Respondent is attempting to gain business through the domain name in issue. Indeed, the website to which the domain name in issue resolves indicates a link to the Complainant although it does not work as such.

In addition, the combination of words “First Magnus Financial” has no coherent meaning independently of the Complainant’s business.

This leads to the conclusion that the Respondent chose the domain name in question in order to exploit the Complainant’s service mark either to disrupt the Complainant’s business or to benefit from the service mark through earning revenue by means of payments that it might be able to earn from sites to which users of its website might click through. It is not relevant to the question of bad faith as to whether these attempts have been successful.

The fact that the Respondent is using the domain name in issue to divert customers to competitors of the Complainant is further evidence of bad faith.

The Panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068, agreed that this type of behaviour constituted bad faith. It said:

“The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant’s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) “50% of all revenues generated from searches, popunders, popups, and exit popups” in respect of users directed to its website through the participants domain name.

“This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith … In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.”

For similar reasons, the Panel concludes that the Respondent has both registered and used the domain name in issue in bad faith.

 

7. Decision

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 <firstmagnusfinancial.com> be transferred to the Complainant.

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Adam Samuel
Sole Panelist

Dated: January 1, 2007