Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Atlas Advisers, Inc. v. Atlas Securities,
Inc.
Claim Number: FA0209000125752
PARTIES
Complainant
is Atlas Advisers, Inc., San
Leandro, CA, USA (“Complainant”) represented by Steven M. Weinberg, of Greenberg
Traurig, LLP. Respondent is Atlas Securities, Inc.,
Providenciales, TC (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <atlassecurities.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that has acted independently and impartially and to the
best of his knowledge has no known conflict in serving
as Panelist in this
proceeding.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 23, 2002; the Forum
received a hard copy of the
Complaint on September 23, 2002.
On
September 25, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <atlassecurities.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has
verified that Respondent is
bound by the Network Solutions, Inc. registration agreement and has thereby
agreed to resolve domain-name
disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
September 26, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 16, 2002 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent
via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing
contacts, and to postmaster@atlassecurities.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 24, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility
under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available
means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules,
the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
a. Respondent’s <atlassecurities.com> domain
name is confusingly similar to Complainant’s registered ATLAS SECURITIES mark.
b. Respondent does
not have any rights or legitimate interests in the <atlassecurities.com> domain
name.
c. Respondent
registered and used the <atlassecurities.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Atlas Advisors, Inc., is the
holder of the service mark ATLAS SECURITIES (U.S. Serial No. 76/357879), a mark
it has used
continuously in commerce since July of 1990. Under this mark,
Complainant distributes mutual funds and annuities to the public. It
also
provides services to customers of Golden West Financial Corp, Complainant’s
parent corporation and a Fortune 500 Company. Complainant
currently maintains
over 100,000 accounts totaling in excess of $2 billion in assets, and is the
only broker/dealer in the United
States permitted to do business under the
ATLAS SECURITIES mark.
Respondent, Atlas Securities, Inc.,
registered its <atlassecurities.com> domain name on January 16, 1998. Respondent’s domain name
resolves to an undeveloped and blank website. Currently, Respondent’s
administrative
contact and senior owner is being sought by foreign law
enforcement authorities for securities fraud and other criminal actions.
Respondent is not licensed or otherwise authorized to make any use of
Complainant’s ATLAS SECURITIES mark for any purpose.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the Complainant must 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; and
(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.
Identical and/or Confusingly Similar
Complainant has established rights in the
ATLAS SECURITIES mark through registration with the U.S. Patent and Trademark
Office, as
well as via continuous and widespread use of the mark. Although
Complainant does not hold a registration in every jurisdiction worldwide,
or in
the country where Respondent is domiciled, it has sufficient rights to have
standing to bring a Complaint. See Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which a
Respondent
operates. It is sufficient
that Complainant can demonstrate a mark in some jurisdiction); see also Smart Design LLC v. Hughes, D2000-0993
(WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require
Complainant to demonstrate ‘exclusive rights,’
but only that Complainant has a
bona fide basis for making the Complaint in the first place); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628
(WIPO Aug. 11, 2000) (finding
Complainant has rights to the name when the mark is registered in a country
even if Complainant has never traded in that
country). In this dispute,
Complainant has demonstrated a “bona fide” basis for making this Complaint by
showing its widespread and
active use of its mark in financial circles.
Respondent’s <atlassecurities.com>
domain name is identical to Complainant’s ATLAS SECURITIES mark. The only
differences between the domain name and the mark is the
removal of the space
from ATLAS SECURITIES and the addition of “.com” after the mark. The deletion
of a space from a well-known mark
does not prevent a domain name from being
found identical to a mark under the Policy. See Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible
in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Little Six, Inc. v.
Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that
<mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark).
Furthermore,
as a generic top-level domain (such as “.com”) is required for every domain
name, this addition will not have any effect
on whether Respondent’s domain
name is identical to Complainant’s mark. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb.
11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as
a rule of thumb, that the domain name
of a particular company will be the
company name [or trademark] followed by ‘.com.’”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25,
2000) (finding that the top-level of the domain name such as “.net” or “.com”
does not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar).
Accordingly, the Panel finds that the <atlassecurities.com> domain name
is identical to Complainant’s registered ATLAS SECURITIES mark under Policy ¶
4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon Complainant. Under
Policy ¶¶
4(c)(i-iii), Respondent can rely on an offering of bona fide goods or
services connected with the disputed domain name, the fact
that it has been
commonly known by the domain name, or that it is making a legitimate
noncommercial or fair use of the domain name
to demonstrate a right or
legitimate interest in a domain name. If Complainant rebuts each of these
elements, it has satisfied its
burden by successfully addressing any of the
specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore
shifting
the burden to Respondent. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in
respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate
interests in the domain name).
It is neither a bona fide offerings of
goods or services, nor an example of a legitimate noncommercial or fair use,
under Policy ¶¶
4(c)(i) and (iii) when the holder of a domain name that is
identical to an established mark fails to utilize the domain name for
an
extended period of time. See Bloomberg
L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no
rights or legitimate interest can be found when Respondent fails to use
disputed domain names in any way); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14,
2000) (finding that failure to provide a product or service or develop the site
demonstrates that Respondents
have not established any rights or legitimate
interests in the domain name). Respondent registered its <atlassecurities.com> domain name over four years ago, yet
the domain name remains undeveloped. A blank website offers no bona fide goods
or services, and
is not a legitimate or fair use under the Policy.
Despite the fact that the disputed domain
name resembles the business name of Respondent, Complainant has sufficiently
shown that
Respondent is not commonly known by that name. Complainant has never
licensed or authorized Respondent to use its mark. Because Respondent
registered the disputed domain name after Complainant’s use of the mark became
widespread there is sufficient evidence to conclude
that Respondent is not
“commonly known” by the <atlassecurities> domain name. See Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interest in the domain name because Respondent
never submitted a Response nor
provided the Panel with evidence to suggest otherwise).
Once a complainant has successfully
presented its prima facie case illustrating a respondent’s lack of
rights or legitimate interests in its domain name, the burden of demonstrating
rights and
legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the
Panel in Response to the Complaint, Respondent fails to meet that burden. See
Canadian Imperial Bank of Commerce v.
D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in its domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Although the
Policy lists four circumstances that are considered to be evidence of bad faith
registration and use, the circumstances
described therein are not exhaustive,
but are rather merely illustrative of situations clearly defining bad faith and
registration.
See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith
evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010
(WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within
the ‘particular’ circumstances set out
in ¶ 4(b), does not mean that the domain
names at issue were not registered in and are not being used in bad faith”).
One example
of bad faith registration and use not enumerated in the Policy is
the concept of “passively holding” a domain name, especially one
that is
identical to a mark in which a complainant has rights.
A well-known trademark operates as
constructive notice of the existence of the mark. It is evidence that a domain
name has been registered
and used in bad faith when Respondent registers a
domain name that is identical to a trademark. See U-Haul Int’l, Inc. v.
Steven Freed, FA 103,878 (Nat. Arb. Forum Mar. 1, 2002) (because of the
fame attained by Complainant’s mark, it can be presumed that Respondent
knew of
U-HAUL before registering the disputed domain names); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given
the world-wide prominence of the
mark and thus Respondent registered the domain name in bad faith).
Furthermore, passive holding of a domain
name, without any further justification or demonstrable preparations for use,
infers bad
faith use and registration of the domain name. See Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain
name or website that connects with the
domain name, and that passive holding of
a domain name permits an inference of registration and use in bad faith); See
also Mondich & Am. Vintage Wine
Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that
Respondent’s failure to develop its website in a two year period raises the
inference
of registration in bad faith).
Within financial circles, Complainant’s
ATLAS SECURITIES mark is well-known. Complainant has demonstrated that
Respondent knew or
should have known of Complainant’s rights in its mark prior
to registration of the domain name. Respondent’s use of Complainant’s
mark is
therefore an action that evidences bad faith registration. Moreover, Respondent
has passively held its domain name for over
four years, a long enough period of
time to establish an inference of bad faith registration and use.
In light of Respondent’s failure to
respond in these proceedings, Complainant has shown ample evidence for the
Panel to conclude that
Respondent both acquired and used <atlassecurities.com> in bad faith. See Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate
for the Panel to draw adverse inferences from Respondent’s failure to reply
to
the Complaint).
Accordingly, the Panel finds that
Respondent both registered and used its domain name in bad faith, and Policy ¶
4(a)(iii) has been
satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <atlassecurities.com> domain name
be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 28, 2002
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1482.html