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Franklin Resources, Inc. v. Ling Shun Shing [2004] GENDND 830 (2 June 2004)

1. The Parties

The Complainant is Franklin Resources, Inc., San Mateo, California, United States of America, represented by Tomlinson Zisko, LLP, United States of America.

The Respondent is Ling Shun Shing, Shanghai, The People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <franklintemplton.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2004. On April 14, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On April 14, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com 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 April 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2004.

The Center appointed Isabel Davies as the sole panelist in this matter on May 19, 2004. 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

Complainant is the owner of a service mark which was issued to the Complainant for FRANKLIN by the United States Patent and Trademark Office (“USPTO”) in connection with investment management and mutual fund advisory, distribution and administrative services on July 24, 1990, and for TEMPLETON financial services, including mutual funds, limited partnership investment vehicles, financial and investment management, financial analysis, banking, investment trust services, real estate management services, insurance services, and life insurance and annuity contracts on December 2, 1997. Complainant has provided copies of printouts from the USPTO website showing the Complainant’s registration (Complaint Annex 2).

As of March 9, 2004, Complainant has registered the FRANKLIN TEMPLETON mark in the following countries: Argentina, Australia, Austria, Benelux, Bermuda, Bolivia, Brazil, Canada, Chile, China, Colombia, Costa Rica, Denmark, Ecuador, Finland, France, Germany, Gibraltar, Greece, Guernsey, Hong Kong, Hungary, Indonesia, Ireland, Israel, Italy, Japan, Jersey, Korea, Malaysia, Malta, Mexico, Monaco, New Zealand, Peru, Poland, Russia, Singapore, South Africa, Sri Lanka, Sweden, Switzerland, Taiwan, Thailand, United Arab Emirates, United Kingdom, and Venezuela.

Complainant has provided a summary of these registrations (Complaint Annex 3). The summary shows that FRANKLIN TEMPLETON was registered in China, the country of Respondent’s residence, on March 7, 1999.

The validity of the Complainant’s trademark registrations for FRANKLIN TEMPLETON has not been contested by the Respondent and the Panel accepted as an undisputed fact that Complainant is the holder of valid trademark registration for FRANKLIN and TEMPLETON in the United States and for FRANKLIN TEMPLETON in the countries listed at Annex 3.

Complainant states that it has been using the FRANKLIN TEMPLETON mark in connection with financial services since March 1993, and has been using FRANKLIN TEMPLETON INVESTMENTS mark in connection with such services since 1990. This has not been contested and the Panel accepts this as an undisputed fact.

Complainant states that it has offices worldwide including an office in Shanghai, China, the city in which Respondent is resident. This has not been contested by the Respondent and the Panel accepts that this is an undisputed fact.

The domain name in dispute is registered with iHoldings.Com, Inc., d/b/a.registrar.com.

According to the registrar’s WHOIS database the registrant of the domain name <franklintemplton.com> is Ling Shun Shing. The record of this registration was created on September 17, 2002.

The record was last updated on October 24, 2003. A copy of the printout of the WHOIS data for <franklintemplton.com> is attached to the Complaint at Annex 4.

Complainant states (Complaint paragraph 18) that Respondent uses the domain name at issue to link to a website which features links to direct competitors of Complainant in the financial services area. A copy of pages from the website headed “Franklintemplton.com, your source for the most popular FRANKLINTEMPLETON info!” is at Annex 5 page 1 through page 6 of Complaint. A copy of pages from the website of Complainant’s direct competitors to which Respondent links are attached to the Complaint as Annex 5 page 7 through page 17.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s domain name is confusingly similar to Complainant’s service marks. Complainant contends that:

Complainant states that Respondent has no rights or legitimate interest in the disputed domain name. It states:

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

“21. Complainant has an office in China. Complainant registered the service mark FRANKLIN TEMPLETON in china on March 7, 1999. Respondent, a resident of Shanghai, China, did not register the domain name at issue until September 17, 2002, more than three and one-half years later. Not only must Respondent have been aware of complainant’s well-known mark and its business, but the fact that Respondent used the confusingly similar domain name to link to a web site that offered financial services directly competitive to those offered by Complainant and headed “Franklintemplton.com, your source for the most popular Franklintemplton info!” shows that Respondent was aware of Complainant’s mark and its association with financial services. Respondent clearly derives financial benefits from linking to the web sites of Complainant’s competitors through use of a domain name confusingly similar to Complainant’s well-known marks.”

Complainant requests that the Panel ask the Registrar to transfer the domain name <franklintemplton.com> from the Respondent to it.

B. Respondent

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

6. Discussion and Findings

(a) Identical or Confusingly Similar

In this case the sole difference in spelling between the trade mark and the disputed domain name is omission of the second “e” in “templeton”. The Panel determines that the terms FRANKLIN TEMPLETON and FRANKLIN TEMPLTON are confusing similar in appearance and sound to a consumer or Internet user to FRANKLINTEMPLTON. The terms “franklintempleton.com” and “franklintemplton” are confusingly similar in appearance and sound. As Respondent has registered the disputed domain name deliberately to obtain the benefit of its attraction of customers or Internet users who would be seeking a website operated by Complainant, this indicates that Respondent knows that they are diverting business intentionally from Complainant.

The Panel therefore considers that Complainant has satisfied the Panel that the domain name of which complaint is made is identical or confusingly similar to the trade mark in which Complainant has rights.

(b) Rights or Legitimate Interests

Respondent has, by failing to respond, shown no rights or legitimate interests in respect of the domain name <franklintemplton.com>. The Complainant has clearly made out a prima facie case under this matter. Therefore, Respondent lacks rights or legitimate interests in the domain name.

(c) Registered and Used in Bad Faith

Respondent registered <franklintemplton.com> several years after Complainant started using and registered their mark. Respondent clearly had knowledge of Complainant’s prior adoption and usage of the mark. Registering a domain name primarily for the purpose of disrupting the business of a competitor or for attracting Internet users to another site by creating confusion is evidence of bad faith. Policy paragraphs 4(b)(iii) and (iv).

The Panel determines that Respondent acted in bad faith in Registering and using a disputed domain.

7. Decision

Having established all three elements required by the Policy, paragraph 4(a), it is the decision of the Panel that the request of relief be granted. Accordingly, for all the foregoing reasons, it is ordered that the domain name <franklintemplton.com> be transferred from Respondent to Complainant. The Panel therefore requests the Registrar to transfer the domain name <franklintemplton.com> to Complainant.

Isabel Davies
Sole Panelist

Date: June 2, 2004