DECISION

Assante Holdings, Inc. v. Kevin Baker

Claim Number: FA0204000109384

PARTIES

Complainant is Assante Holdings, Inc., Winnipeg, CANADA (“Complainant”) represented by Bernard R. Gans, of Jeffer, Mangels, Butler & Marmaro LLP.  Respondent is Kevin Baker, Morgan Hill, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thepersonalcfo.com>, registered with Verisign - Network Solutions, Inc.

PANEL

On May 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 9, 2002; the Forum received a hard copy of the Complaint on April 10, 2002.

On April 11, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <thepersonalcfo.com> is registered with Verisign - Network Solutions, Inc. and that Respondent is the current registrant of the name.  Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - 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 April 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 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@thepersonalcfo.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.

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

The <thepersonalcfo.com> domain name is identical to Complainant's PERSONAL CFO mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1996, Complainant has used its PERSONAL CFO mark in commerce in relation to investment advising services.  Complainant registered the mark in the United States on May 12, 1998 as Reg. No. 2,157,478 and in Canada on March 26, 1999 as Reg. No. 1010021.  Complainant has invested substantial time, money and effort into promoting its PERSONAL CFO mark.  Complainant has created substantial goodwill among independent and affiliated investment advisors and consumers due to its efforts to provide high quality, reliable financial management services.  Complainant’s mark is directly associated with its line of financial products and services, and is recognized as the single source for such services and products by Complainant’s customers.

Respondent registered the disputed domain name on July 13, 1999.  Complainant has found no evidence that Respondent has ever used the domain name 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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 that it has rights to its PERSONAL CFO mark through registration and continuous use.  Furthermore, Respondent’s <thepersonalcfo.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entirety of Complainant’s mark and merely omits the space between PERSONAL and CFO and adds the generic word “the,” and the top-level domain name “.com.”  The omission of a space between two words does not create a distinct mark capable of overcoming a claim of identical or confusing similarity.  See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES).  The addition of a generic word such as “the” to Complainant’s mark does not create a distinct domain name.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).  Moreover, the addition of a generic top-level domain name is not relevant when considering whether a domain name is identical or confusingly similar.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent has held the registration for <thepersonalcfo.com> since 1999 and has failed to establish a website or use the domain name in relation to any business or noncommercial purpose.  Registration of a domain name alone does not create rights or legitimate interests, therefore Respondent’s passive holding of the disputed domain name is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Respondent is known to the Panel as Kevin Baker, and has not come forward to establish otherwise.  Therefore there is no evidence that Respondent is commonly known as <thepersonalcfo.com> and Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent was on notice as to Complainant’s rights in its PERSONAL CFO mark when it registered the disputed domain name because Complainant’s mark is on the Principal Register of the United States Patent and Trademark Office.  Registration of the disputed domain name despite this notice is evidence of bad faith registration.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[ w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Furthermore, Respondent has held the domain name since 1999 and failed to make any use of it.  This is considered to be passive holding and evidence of bad faith use.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <thepersonalcfo.com> be transferred from Respondent to Complainant.

James P. Buchele, Panelist

Dated: May 20, 2002

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