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NFO Research, Inc. v. Henry Chan [2004] GENDND 900 (14 July 2004)

1. The Parties

The Complainant is NFO Research, Inc., Pennsylvania, United States of America (“the Complainant”) represented by Blank Rome, LLP, United States of America.

The Respondent is Henry Chan, of Nassau, Bahamas (“the Respondent”).

2. The Domain Name and Registrar

The disputed domain name <nfomysurvey.com> (the “Domain Name”) is registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2004. On May 24, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar 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 May 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2004.

The Center appointed Tony Willoughby, Thomas D. Halket and Sergio Rodriguez Castillo as panelists in this matter on July 2, 2004. The Panel finds that it was properly constituted. Each member of 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

For over fifty years the Complainant has been engaged in the business of opinion polling and survey based market research. Originally it traded under the name of National Family Opinion but since about 1948, it has used in the course of trade as a business or trading name the acronym NFO. The Complainant is the proprietor of US service mark registrations for the marks, NFO, NFO (device) and NFO RESEARCH. All these registrations are US registrations and are at least twenty years old.

The Complainant registered the domain name, <mysurvey.com> in May 1997. Since 1999, the Complainant has been developing and delivering consumer survey panel research services online via its website at “www.mysurvey.com”. On that website on most if not all the main pages a prominent logo is used comprising the domain name <mysurvey.com> and the Complainant’s NFO device. The result is that the logo appears to read ‘nfomysurvey.com’, albeit represented stylistically along the lines of ‘nfomySurvey.com’

In the text most of the references to the domain name <mysurvey.com> are immediately preceded by the acronym NFO.

The Respondent registered the Domain Name on February 28, 2003. Currently, if one enters “www.nfomysurvey.com” into the browser, one finds that it connects to a site at “www.dp.information.com” which is a site listing a number of survey sites not being survey sites of or associated with the Complainant.

The Respondent has been involved in a large number of domain name disputes in which he was found to have registered the domain names in issue in bad faith and in which it was ordered that the domain names be transferred to the various complainants. The Complainant has identified twelve WIPO decisions in 2003 and 2004 (e.g. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611, Cincinnati Bell, Inc. v. Henry Chan, WIPO Case No. D2003-0954, Virtual Canvas v. Philip Viger, WIPO Case No. D2004-0075, D2004-0117 and EBSCO Industries, Inc. v. Henry Chan, WIPO Case No. D2004-0140) and another nine NAF decisions under the Policy (e.g. Nos. FA0303000152617 FA0306000162050 and FA0308000176552).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to service marks in which the Complainant has rights. The Complainant claims registered rights in respect of NFO, NFO AND DESIGN and NFO RESEARCH and the Complainant claims unregistered rights (common law rights) acquired by long and extensive use in relation to NFOMYSURVEY.COM, MY SURVEY and MYSURVEY.COM.

Paragraph 15 of the Complaint reads as follows:-

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points to the examples set out in paragraph 4(c) of the Policy being examples of circumstances which if shown to be present demonstrate a respondent’s rights or legitimate interests in respect of a domain name but the Complainant claims that none of these examples is applicable to the case in hand. There is no evidence that the Respondent has used or has been preparing to use the Domain Name in connection with a bona fide offering of goods or services. There is no suggestion that the Respondent has ever been commonly known by the Domain Name or has ever acquired any trade mark rights in the Domain Name. Finally, the Respondent cannot show that he has made a legitimate non-commercial or fair use of the Domain Name.

Moreover, the Complainant contends that the Domain Name has been registered and is being used in bad faith.

The Complainant draws attention to the numerous examples of cases in which the Respondent has been held to be a cybersquatter. The Complainant contends that “the lengthy and burgeoning list of decisions adverse to Respondent allows the Panel in the instant case to draw strong inference that Respondent has registered and used the domain name nfomysurvey.com in bad faith.”

The Complainant draws attention to the longstanding use that the Complainant has made of the acronym NFO and the other marks in which it claims rights and asserts that the Respondent cannot have registered the Domain Name by accident. Clearly the Respondent was well aware of the Complainant’s rights in its various marks.

The Complainant also draws attention to the fact that the Domain Name is connected to a website listing other competing survey websites i.e. websites competing with the services of the Complainant. The Complainant asserts that the activity complained of is designed to produce a financial gain for the Respondent and to the financial detriment of the Complainant.

The Complainant seeks transfer of the Domain Name.

B. Respondent

The Respondent has not responded.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name comprises the Complainant’s registered mark NFO in conjunction with the Complainant’s domain name <mysurvey.com>. The Domain Name comprises, in sum, the textual element of the logo featured prominently on the Complainant’s website namely ‘nfomySurvey.com albeit in a uniform font.

The Complaint contains sufficient evidence to support the claim that the Complainant has a significant reputation and goodwill in the United States in respect of its website and the services provided through that website. It is to be noted that the Respondent has not contradicted any of that evidence.

The Panel is satisfied as to the Complainant’s registered rights in the acronym NFO and the Panel is also satisfied that on the evidence before it the Complainant is likely to have unregistered (common law) rights in its domain name <mysurvey.com> and in the combination NFOMYSURVEY.COM in the United States. The Panel is conscious that the law of the Bahamas (apparently, the Respondent’s home country) may not recognize such rights, but for the purposes of paragraph 4(a)(i) of the Policy the Complainant simply has to establish that it has trade mark or service mark rights somewhere i.e. a bona fide basis for launching a complaint under the Policy.

In the result the Panel finds that the Domain Name is identical or confusingly similar to service marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy the Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy, which is addressed to respondents, identifies what respondents can prove to demonstrate their rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) reads as follows:

“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is for the Complainant to demonstrate a prima facie case under paragraph 4(a)(ii) of the Policy. If the Complainant is successful in establishing a prima facie case (i.e. a case to answer), it is for the Respondent to answer that case, whether by reference to the examples set out in paragraph 4(c) of the Policy or by some other means.

The Panel is in no doubt that the Complainant has done enough to establish a prima facie case. None of the examples set out in paragraph 4(c) of the Policy appears to be applicable. Neither the Domain Name nor any of its constituent parts is the name of the Respondent. The Domain Name commences with the trading name and primary service mark of the Complainant, a company very well-known in its field in the United States; there then follows the Complainant’s domain name, by reference to which it conducts substantial online business; and, in sum, the Domain Name comprises the textual elements of the logo featured prominently on the Complainant’s website.

Inevitably, the Panel asks itself why the Respondent registered somebody else’s name for the Domain Name. In this case, given the use made of it to connect and/or link the Respondent’s website to sites promoting survey services of a variety of companies competing with the Complainant, it seems very probable that the Respondent registered the Domain Name with a view to attracting visitors to its website by a deceit, namely the use of a domain name having no connection whatever with the site, and presumably with a view to damaging the business of the Complainant (i.e. by diverting custom elsewhere) and/or for commercial gain (e.g. acquiring fees or commissions for referrals).

Accordingly, there are a number of questions, which call for answers from the Respondent, but the Respondent has elected not to respond. The Panel can think of no basis upon which the Respondent might reasonably be said to have rights or legitimate interests in respect of the Domain Name. In these circumstances the absence of a response from the Respondent necessarily means that the Complaint succeeds under this head. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The fact that the Respondent has been involved in over 20 previous domain name disputes under the Policy in which he has been found to be a cybersquatter is of interest, but it is not conclusive of bad faith. After all, it appears that the Respondent is the proprietor of nearly 20,000 domain name registrations DeloitteTouche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 and it would be surprising if they were all abusive registrations within the meaning of paragraph 4(a)(iii) of the Policy.

Nonetheless, having come to the conclusions set out in the paragraphs at the bottom of the preceding page, it is but a short step to conclude that the Respondent registered the Domain Name for an abusive purpose within the meaning of paragraph 4(b) of the Policy. The reason may have been with a view at some stage to selling it to the Complainant at a profit; after all, to have a catalogue of several thousand domain names indicates that the Respondent is in some form of trade dependent upon the stockpiling of domain names.

However, the Panel believes it to be probable that the Respondent registered the Domain Name for commercial gain of another kind, namely fees and commissions derived from referrals of Internet users from his site to the other sites to which his site was linked. By using the Domain Name to connect to his website he deceives internet users into believing that the website is a site of or associated with the Complainant and, having attracted them to his site, he encourages them to visit the other survey research sites there featured. The Panel agrees with the Complainant that the Respondent will in all probability have been receiving some kind of commission or referral fee in respect of the diverted traffic.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <nfomysurvey.com>, be transferred to the Complainant.

Tony Willoughby
Presiding Panelist

Thomas D. Halket
Panelist

Sergio Rodriguez Castillo
Panelist

Dated: July 14, 2004