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Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX [2005] GENDND 300 (20 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Charles Schwab & Co., Inc. v. Josh Decker d/b/a I GOT YOUR TIX

Case No. D2005-0179

1. The Parties

The Complainant is Charles Schwab & Co., Inc., San Francisco, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, New York, United States of America.

The Respondent is Josh Decker d/b/a I GOT YOUR TIX, Rancho Cordova, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <schwabbanking.com> and <schwabbanking.info> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2005. On February 16, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On February 18, 2005, eNom 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 February 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2005.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on April 5, 2005. 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 recognized in the financial services industry as a leading discount and online broker in the United States. Complainant has over 7 million accounts, client assets of approximately $1 trillion , and more than 275 offices in the U.S. Complainant averages more than 160,000 online trades per day and opens approximately 2000 new online accounts daily. Complainant has developed significant goodwill in the SCHWAB trade name and SCHWAB marks through extensive marketing and advertising over a period of 30 years. See Charles Schwab & Co., Inc.v. Polanski, WIPO D2001-0959.

Complainant owns trademark applications or registrations in over 40 different jurisdictions for marks consisting, in whole or in part, of the term SCHWAB. In the U.S., Schwab owns 111 registrations that include the word SCHWAB, 98 of which were registered before August 2003, and 110 of which were in use before August 2003. All of the registrations are valid, subsisting and in full force and effect, and serve as prima facie (if not conclusive) evidence of the validity of the mark registered and of Complainant’s exclusive rights to the mark.

On April 28, 2003, before Respondent registered the Domain Names, the launch of the Charles Schwab Bank was announced in a press release transmitted to approximately 2000 newspapers, wire services, magazines, and broadcast points across the U.S., including the Sacramento Bee, a Sacramento, California-based newspaper. The Charles Schwab Bank, operated by Complainant’s affiliated company, Charles Schwab Bank, N.A., is headquartered in Reno, Nevada, and provides checking, savings, credit and debit cards and other banking services. Currently, there are approximately 45,000 accounts opened with the Charles Schwab Bank. Since its launch in 2003, Charles Schwab Bank, N.A., has invested significant expense and effort in advertising and promoting its services under the SCHWAB mark, including nationwide television advertising, print and online advertising.

Charles Schwab Bank uses the SCHWAB mark pursuant to a license agreement entered into with Complainant. As a matter of U.S. law, all use of the SCHWAB marks, including the CHARLES SCHWAB BANK mark by Charles Schwab Bank, N.A., inures to the exclusive benefit of Complainant. 15 U.S.C. § 1055.

Complainant has had a presence on the Internet since 1996 at the website “www.schwab.com” which allows for on-line trading by subscribers. Other URL’s used by Complainant include <schwabfunds.com>, <charlesschwab.com>, <schwabnow.com>, <chwabwireless.com> and <aboutschwab.com>. Complainant registered <schwabbank.com> on December 21, 2001 and the website went live in April, 2003. Complainant also owns <schwabbankmortgage.com>, registered on January 27, 2003, which went live in April 2003, and <schwabbankcreditcard.com>, registered on May 4, 2004, which went live in November 2004.

Sometime after October 19, 2004, the domain name <wwwschwabbanking.com> went live and was used to redirect consumers to Mr. Decker’s website <igotyourtix.com>, a website owned by Respondent that sells tickets to sporting and other events. The phone number given for the registrant in the WHOIS record for <schwabbanking.com> is the same phone number listed on the <igotyourtix.com> website.

On January 31, 2005, Complainant sent a demand letter to Respondent, by email and by fax, requiring Respondent to transfer to Complainant all domain names he owned that included Complainant’s SCHWAB mark. On February 2, 2005, two days after the demand letter was received by email, Respondent changed the use of the <schwabbanking.com> domain name so that it redirected Internet users who typed in schwabbanking.com to a website at “www.sacexoticdancers.com”, another website owned by Mr. Decker, that provides adult content.

Nothing contained in either of the two websites has anything to do with Complainant or is related to the services provided by or the business of Complainant. Recently, Respondent stopped pointing the <schwabbanking.com> domain name to the adult content site. While there currently is no website at the domain name <schwabbanking.com>, Respondent maintains the ability to redirect traffic at any time.

After Complainant learned of the re-routing of the <schwabbanking.com> domain name to an adult content site, Complainant attempted unsuccessfully to contact Respondent by phone. Complainant’s calls either were not answered, Complainant’s attorney was put on hold, or messages left for Respondent were not returned. Complainant’s attempt to resolve the matter by sending a demand letter was also unsuccessful. The letter required a response by February 7, 2005, but Respondent did not respond to the letter.

Complainant recently learned that Respondent is also the registrant of the schwabbanking.info domain name. That domain name is currently being used to redirect Internet users to a default page supplied by the registrar that consists of various links.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain names <schwabbanking.com> and <schwabbanking.info> are identical or confusingly similar to Complainant’s trade name SCHWAB, to Complainant’s SCHWAB, CHARLES SCHWAB and CHARLES SCHWAB BANK marks, and to trademarks including the term SCHWAB in which Complainant has prior and exclusive rights (collectively the “SCHWAB Marks”). Over 98 of Complainant’s trademark registrations were issued prior to Respondent’s registration of the Domain Names. Complainant contends that Respondent knew or should have known that the Domain Names would be confused with the Complainant’s registered trademarks.

Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

Respondent uses the name <igotyourtix.com> rather than <schwabbanking.com> or <schwabbanking.info> for its business of offering tickets to sporting and other events.

There has never been any relationship between Complainant and Respondent that would give rise to any license, permission or authorization to use or register the Domain Names.

Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the domain names under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services. Respondent has never used the Domain Names in connection with providing any goods or services legitimately associated with those names.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(ii) because it is not commonly known by the Domain Names. Respondent has no connection or affiliation with Complainant, has not received any license or consent, express or implied, to use the SCHWAB registered trademark in a domain name or in any other manner.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name.

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of paragraph 4(b)(iii). The Respondent’s unauthorized domain name registrations have been redirecting Internet users to Respondent’s <igotyourtix.com> website that offers tickets to sporting and other events, and more recently, to an adult content website at <sacexoticdancers.com>. Any use by Respondent of the <schwabbanking.com> or <schwabbanking.info> domain names would actively infringe upon Complainant’s registered trademark by attracting visitors to Respondent’s website and could not qualify as legitimate use. See Eurail Group GIE v. DOTrader, WIPO D2003-0422.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs: “A panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Sole Panelist in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States. Autosales Incorporated v. Don Terrill, WIPO D2001-1341.

A. Identical or Confusingly Similar

In light of the numerous trademark registrations owned by Complainant for the SCHWAB marks in the United States, there is no doubt that Complainant has satisfied the first element of the Policy. See Charles Schwab & Co., Inc. v. Polanski, WIPO D2001-0959; United Feature Syndicate, Inc. v. All Business Matters, Inc. and Dave Evans, WIPO D2000-1199.

Complainant has numerous trademark registrations for marks that include the word SCHWAB, including a federal registration for the mark CHARLES SCHWAB BANK. Here, there can be no dispute that the Domain Names <schwabbanking.com> and <schwabbanking.info> are confusingly similar to Complainant’s various SCHWAB marks. The disputed Domain Names incorporate the SCHWAB trade name and trademark and add it to a generic term that describes Complainant’s services, not Respondent’s services. By adding the word “banking” (which describes Complainant’s services) to the SCHWAB mark, Respondent has not avoided confusion; he has only increased it. See Arthur Guiness Son & Co (Dublin) Ltd. v. Healy-Bosth, WIPO D2001-0026; AT&T Corp. v. CME Inc.

Therefore, the Panelist finds that the Domain Names are confusingly similar to the trademarks of the Complainant.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of proof on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a).

The record indicates that Respondent has no relationship with or permission from Complainant to use of any of the SCHWAB marks.

The Policy paragraph 4(b) allows three nonexclusive methods for the Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Names:

(i) before any notice to Respondent of the dispute, his 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is 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.

The Complainant has sustained their burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Names.

It is inconceivable that Respondent would not have had actual knowledge of Complainant’s prior longstanding trademark rights in the SCHWAB marks, and very likely also had knowledge of Complainant’s launch of the Charles Schwab Bank in April 2003, prior to registration of the Domain Names. Registration of a trademark with the USPTO provides constructive notice of the registrant’s claim of ownership thereof. 15 U.S.C. § 1072. Where a Respondent has constructive notice of a trademark, and yet registers a confusingly similar domain name thereto, the Respondent cannot be said to have a legitimate interest in the domain name. See, e.g., CCA Industries v. Dailey, WIPO D2000-0148, and Young Genius Software AB v. MWD, WIPO D2000-0591. Moreover, on July 22, 2003, one month before the first of the Domain Names was registered by Respondent, Complainant applied to register CHARLES SCHWAB BANK. In addition, Respondent registered the Domain Names after Complainant had already established a presence on the Internet at <schwab.com>, <schwabbank.com> and <schwabbankmortgage.com>, among others. Given Complainant’s extensive use of the SCHWAB marks, it is highly likely that Respondent was also on actual notice of Complainant’s trademark rights.

There exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use <schwabbanking.com> or <schwabbanking.info>, which incorporate in whole Complainant’s SCHWAB mark, accompanied by the word “banking” which describes Complainant’s services, not those of Respondent. Thus, Respondent cannot establish any legitimate rights or interests in the Domain Names. See, e.g., Serta, Inc. v. Maximum Investment Corporation, WIPO D2000-0123; Guerlain S.A. v. H I Investments, WIPO D2000-0494.

The file contains no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(b). Respondent is not commonly known by the name SCHWAB, the websites to which the Domain Names have pointed have nothing to do with Complainant and have no relationship to Complainant’s services, there is no connection between the Domain Names and the goods or services offered at the websites to which the Domain Names point or have previously pointed, and Respondent is not making legitimate noncommercial or fair use of the Domain Names with an intention not to mislead consumers. See Charles Schwab & Co., Inc. v. Polanski, WIPO D2001-0959 (noting that use of a domain name confusingly similar to another’s trademark, with a view to directing Internet traffic to websites in which respondent has a financial interest and which has no connection to the trademark owner cannot constitute a bona fide offering of goods or services or legitimate non-commercial or fair use of the domain name).

Therefore, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

The fact that Respondent with prior knowledge of the Complainant’s trademark has taken SCHWAB as the dominant part of the Domain Names is evidence of bad faith. See Chernow Communications, Inc. v. Kimball, WIPO D2000-0119. Bad faith is further shown by Respondent’s addition of the word “banking” which describes Complainant’s services rather than Respondent’s. It is evident that Respondent, in registering the Domain Names, was seeking to take advantage of the publicity surrounding the launch of the Charles Schwab Bank in addition to taking advantage of the SCHWAB Marks. Bad faith use and registration also is evident from Respondent’s use of the <schwabbanking.com> domain name to divert Internet users to websites that either provide Respondent with commercial benefit or tarnish Complainant’s valuable trademark rights. Redirection to a pornographic site has in numerous previous UDRP decisions been held to indicate bad faith.

7. Decision

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 names, <schwabbanking.com> and <schwabbanking.info> be transferred to the Complainant.

Lynda J. Zadra-Symes
Sole Panelist

Date: April 20, 2005