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and Mediation Center
ADMINISTRATIVE PANEL DECISION
A.G. Edwards & Sons, Inc. v. Acme Mail
Case No. D2007-0355
1. The Parties
Complainant is A.G. Edwards & Sons, Inc., St. Louis, Missouri, United States of America, represented by Blackwell Sanders Peper Martin LLP, St. Louis, Missouri, United States of America.
Respondent is Acme Mail, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <agedward.com>, is
registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
Complainant filed its Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2007. On March 14, 2007 the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com (“directNIC”) a request for registrar verification in connection with the domain name at issue. On March 14, 2007, directNIC.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 and technical contact. On March 23, 2007, 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 March 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 13, 2007.
The Center appointed Steven L. Snyder as the sole
panelist in this matter on April 24, 2007. 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
After retiring from government service in 1887, General Albert Gallatin Edwards and his son, Benjamin Franklin Edwards I, founded “A.G. Edwards and Son” in St. Louis, Missouri. Another son apparently joined the ranks at some point as did, eventually, many more people. Complainant now employs approximately 15,400 employees in 700 offices spread throughout the United States of America and Europe.
Operating under the mark, A.G. EDWARDS, Complainant advertises itself as being a “full-service brokerage firm” that offers “clients a full range of financial services and investment products.” Among its services and products are annuities, bank deposits, bonds, certificates of deposit, money market funds, mutual funds, stocks, estate planning, money management and credit cards.
Complainant has registered at least four marks with the United States Patent & Trademark Office, including A.G. EDWARDS (reg. no. 3,004,154) and AG EDWARDS and design (reg. no. 3086277). The marks are registered in connection with financial services, brokerage services and investment products. Complainant’s website can be reached via “www.agedwards.com”.
Information about Respondent is more difficult to come by. Apparently, it is a fan of the old Roadrunner cartoons: It bills itself as “Acme Mail.” Like the famed roadrunner, Respondent is hard to get a hold of. The contact information it provided to the domain name registrar, directNIC, does not lead anywhere – the email address does not work and letters sent to the P.O. Box were returned unopened.
At the time the Complaint was filed, Respondent’s
domain name, <agedward.com>, resolved to the “www.cnn.com”
news website. Currently, the domain name leads a user to a homepage that is
entitled “Agedward.com” and provides a variety of links to other
sites. Many of the links are for financial services, such as “Personal
Finance,” “Financial Planning,” and “Money Management.”
A multitude of irksome popup advertisements is triggered by a visit to the site,
many of which are for financial services.
5. Parties’ Contentions
For many years and in many places, Complainant has used the A.G. EDWARDS mark in connection with financial services and products. Its rights in the mark have been confirmed by multiple registrations from the United States Patent & Trademark Office.
Many decades after Complainant started using the A.G. EDWARDS mark, and many years after it registered the <agedwards.com> domain name, Respondent registered <agedward.com>. Complainant contends Respondent’s domain name is confusingly similar to Complainant’s registered mark, the only difference being that the domain name omits the “s” at the end of Edwards.
Complainant argues that Respondent does not have any rights or legitimate interest in the disputed domain name. Respondent is purportedly called Acme Mail and not “A.G. Edward.” Respondent does not apparently use any trademark that corresponds to the disputed domain name. At the time the Complaint was filed, the disputed domain name resolved to the “www.cnn.com” website – a site that has nothing to do with Acme Mail or “A.G. Edward.”
The disputed domain name, contends Complainant, was registered and is being used in bad faith. This is shown by the similarity of the domain name to Complainant’s famous A.G. EDWARDS mark and Complainant’s own website, “www.agedwards.com”, the fact that the disputed domain name resolved (at that time) to the “www.cnn.com” website, and by the inaccurate contact information which Respondent provided to directNIC, the domain name registrar.
This is a straightforward case of typosquatting, Complainant contends, and the <agedward.com> domain name should be transferred from Respondent to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To prevail in this proceeding, Complainant must establish
that: (i) Respondent’s domain name is identical or confusingly similar
to a trademark or service mark in which Complainant has rights; (ii) 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. See Policy,
paragraph 4(a); Fifth Third Bancorp v. Joseph Robinson, WIPO
Case No. D2006-1183. Complainant has established each of these three elements.
A. Identical or Confusingly Similar
As fraternal twins know quite well, having a similar appearance to another person can cause a great deal of confusion. Likewise, a domain name that is similar but not identical to a trademark can cause confusion. In the current dispute, Respondent’s domain name is <agedward.com>. Complainant’s famous mark is AG EDWARDS.
Complainant’s mark has an “s” at
the end and Respondent’s domain name does not. That slight difference
does not matter: Respondent’s domain name is confusingly similar to Complainant’s
mark. See Hummert International Inc. v. Manila Industries, Inc., WIPO
Case No. D2006-0777 (finding <hummerts.com> confusingly similar to
HUMMERT mark); Horn Abbot International Limited v. Ian McMillan, WIPO
Case No. D2005-0198 (finding <trivialpursuits.net> confusingly similar
to TRIVIAL PURSUIT mark).
B. Rights or Legitimate Interests
The Policy provides several examples of when a respondent may have rights or legitimate interests in a domain name that is confusingly similar to a complainant’s mark. See Policy, paragraph 4(c)(i)-(iii). Respondent has chosen not to follow any of those examples.
First, Respondent did not use the domain name in connection
with a bona fide offering of goods or services prior to being notified
of the dispute. At the time the Complaint was filed, Respondent used the domain
name to steer users to the CNN news website. Thereafter, Respondent directed
users to a website that offered goods and services in competition with Complainant.
Using Respondent’s famous mark in order to promote another person’s
goods or services does not constitute a bona fide offering of goods or
services. See The Knot, Inc. v. Alexis Luongo, WIPO
Case No. D2006-0296.
Second, the Respondent is not “commonly known
by the domain name.” According to the WHOIS record, Respondent is Acme
Mail. Given Respondent’s failure to respond to the Complaint, the Panel
may rely upon the WHOIS database to ascertain Respondent’s identity. See
Diebold, Incorporated v. Paul Terwilliger, WIPO
Case No. D2003-0416 (“Both the fame of Complainant’s mark and
the name given in the WHOIS contact information supports the reasonable inference
that Respondent is not commonly known as any of the disputed domain names.”).
Third, there is no evidence that Respondent is making
“a legitimate noncommercial or fair use of the domain name.” Instead,
the evidence is that Respondent has used a domain name that is confusingly similar
to Complainant’s famous mark in order to steer consumers away from the
Complainant’s website. That is neither legitimate nor fair. See HYDAC
Technology GmbH v. Click Consulting Ltd., WIPO
Case No. D2006-1364.
C. Registered and Used in Bad Faith
Under the Policy, bad-faith registration and use may be shown when a respondent uses a domain name to “attract, for commercial gain, Internet users to [a] website . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website.” See Policy, paragraph 4(b)(iv). As noted above, that is what Respondent has done: Acme Mail registered a domain name that is virtually identical to Complainant’s famous trademark. Respondent has now linked the domain name to a website that bears a name which is very similar to Complainant’s and which offers similar goods and services
Respondent’s action evince bad-faith in the
registration and use of the domain name: “[T]he use of a third party trademark
without any prior consent to promote products and services that are similar
to the products and services of the trademark supports a finding of bad faith.”
Sanofi-Aventis v. Billionaire Club, WIPO
Case No. D2004-0805; Amazon.com, Inc. v. Victor Korotkov, WIPO
Case No. D2002-0516 (“the diversion by confusion is evidence of bad
Wealth does not necessarily bring wisdom or good typing
skills. There may be numerous A.G. Edwards customers who inadvertently end up
at Respondent’s website. While this may be exactly what Respondent intended,
it is exactly what the Policy is intended to prevent. Respondent may not retain
the disputed domain name.
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, <agedward.com>, be transferred to Complainant.
Steven L. Snyder
Dated: May 8, 2007