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Franklin Resources, Inc. and Templeton Global Advisors, Inc. v. Conceptium Group LLC. Venture Development [2005] GENDND 35 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Franklin Resources, Inc. and Templeton Global Advisors, Inc. v. Conceptium Group LLC. Venture Development

Case No. D2004-1005

1. The Parties

The Complainants are “Franklin Resources, Inc. and Templeton Global Advisors, Inc.” (the “Complainant”), corporations duly organized and validly existing under the laws of the state of Delaware and Bahamas, with their principal place of business located at One Franklin Parkway, San Mateo, California, United States of America.

Respondent is Conceptium Group LLC. Venture Development (the “Respondent”), with designated address at Torre La Castellana, Avenida Principal, Caracas, Venezuela.

2. The Domain Name and Registrar

The domain name under dispute is <templetoncapital.com> (the “Domain Name”).

The registrar of the disputed domain name is Bulk Register, LLC, (“BulkRegister.com” or the “Registrar”) located in Baltimore, Maryland, United Sates of America.

3. Procedural History

The Complaint was filed with the World Intellectual Property Organization (“WIPO”) Arbitration and Mediation Center (the “ Center”) on November 30, 2004, and on December 1, 2004, through e-mail and hardcopy, respectively, with the required filing fee for a single-member administrative panel. The Complaint was filed in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy”) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). An Acknowledgment of the Receipt of Complaint was sent to Complainant by the Center on December 1, 2004.

On December 1, 2004, the Center sent a “Request for Registrar Verification” via e-mail to BulkRegister.com requesting, a confirmation that BulkRegister.com had received a copy of the demand; that the domain name under dispute is registered before BulkRegister.com; that Respondent is the current registrant of such domain name; and requesting full contact details available under the BulkRegister.com database. On December 1, 2004, the Center received via e-mail from BulkRegister.com the Registrar Verification Response.

On December 3, 2004, Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules. It is worth mentioning that the undersigned sole panelist has independently determined and agrees with the Center’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the Supplemental Rules.

On December 3, 2004, the Center properly sent via fax, e-mail and hardcopy through express mail to Respondent and to the technical and administrative contact, “Notification of Complaint and Commencement of Administrative Proceeding” enclosing copy of Complainant’s complaint. Furthermore, hardcopy of such Complaint as confirmed by Complainant was also previously sent by Complainant to Respondent via FedEx on December 3, 2004. This sole panelist considers that the Complaint was properly notified to the registered domain-name holder, the technical contact, and the administrative contact as provided for in paragraph 2(a) and 4(a), of the Rules.

In accordance with the Rules, paragraph 5, and the Supplemental Rules, the due date for Response was December 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2005.

On January 7, 2005, the undersigned signed and sent to the Center, a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On January 11, 2005, the Center sent to Complainant and Respondent a “Notification of Appointment of Administrative Panel and Projected Decision Date”, appointing Pedro W. Buchanan Smith as Sole Panelist and scheduling January 25, 2005, as the date for issuance for the Panel’s decision, pursuant to paragraphs 6(h) and 15(b) of the Rules. The Panel finds that it was properly constituted.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information, statements or documents from the parties (taking note of Respondent’s default in responding to the Complaint), nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.

The language of the proceeding is English, as being the language of the domain Registration Services Agreement, pursuant to paragraph 11(a) of the Rules.

4. Factual Background

The Complainant, Franklin Resources, Inc. is the parent company of Templeton Global Advisors, Inc. The Complainant provides financial services to individuals and institutional investors, including investment advisory and services, limited partnership investment vehicles, banking services, employer sponsored retirement plans, college investment programs, charitable giving programs, insurance based investment programs, and financial record keeping and custodial services. Complainant has offices world wide.

Complainant has been using the Templeton mark in connection with such services provided since January 1978 and has been using the TEMPLETON INTERNATIONAL mark in connection with such financial services since November 1985.

A service mark was issued to Complainant Templeton Global Advisors Limited, an affiliate of Complainant Franklin Resources, Inc., for TEMPLETON by the United States Patent and Trademark Office (“USPTO”) in connection with 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 Templeton Global Advisors Limited is the assignee of the registration for TEMPLETON INTERNATIONAL issued by the USPTO in connection with investment management and investment advisory services on November 22, 1988.

Complainant has registered these trademarks in the European Community and in sixty-three other countries, including Venezuela, the country in which Respondent resides.

All of Complainant’s advertising since 1978 has featured prominently the TEMPLETON mark. During the period 1996 to 2004, as stated by Complainant, this party has spent more than US$250,000,000 on advertising.

As indicated by the Complainant, on January 28, 2004, the Domain Name, <templetoncapital.com> was registered.

Respondent uses the domain name at issue to link to a website that uses source code copied from Complainant’s websites.

Complainant has registered the trademark TEMPLETON in different locations such as: Argentina, Australia, Austria, Bahamas, Bahrain, Benelux, Bermuda, Bolivia, Brazil, Canada, Chile, China, Colombia, Costar Rica, Czech Republic, Denmark, Ecuador, Estonia, European Community (CTM), Finland, France, Germany, Gibraltar, Greece, Guatemala, Guernsey, Hong Kong SAR of China, Hungary, India, Indonesia, Ireland, Israel, Italy, Japan, Jersey, Republic of Korea, Kuwait, Latvia, Malaysia, Malta, Mexico, Monaco, New Zealand, Norway, Peru, Philippines, Poland, Portugal, Russia, Singapore, South Africa, Spain Sri Lanka, Sweden, Switzerland, Taiwan Province of China, Thailand, Turkey, United Arab Emirates, United Kingdom, Uruguay, Venezuela and Vietnam, as provided in a summary submitted by Complainant in support of its Complaint.

5. Parties’ Contentions

A. Complainant

Respondent’s domain name is a combination of Complainant’s TEMPLETON mark and the English word “capital” which is used to suggest financial and investment services. Respondent is not a licensee of Complainant.

Respondent has not been authorized to use Complainant’s service marks in a domain name or in any fashion. Moreover, Respondent is using the domain name at issue to divert Internet users to a website that offers services that directly compete with those offered by Complainant.

Respondent has copied the source code from Complainant’s website in order to construct a website that has the “look and feel” of Complainant’s website so as to further confuse Internet users as to the source of the competing financial services offered by Respondent.

Respondent attempts to convince the user that not only is Respondent affiliated with Complainant, but that the user has actually arrived at a website maintained by Complainant. The services offered on Respondent’s website are directly competitive with the financial services offered by Complainant, and Respondent undoubtedly realizes commercial gain from the confusion it has created, which situation clearly constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.

That the mere use of Complainant’s mark and a term descriptive of the services offered to confuse Internet users into purchasing competitive services is sufficient in itself to constitute bad faith.

That Respondent has provided false contact information in its registration for the Domain Name including a false name, phone number and fax number, further evidencing its bad faith.

B. Respondent

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

6. Discussion and Findings

The Panel considers that the Respondent by registering the contested domain name with BulkRegister.com (an ICANN accredited domain name registrar), agreed to be bound by all terms and conditions of its Registration Services Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registration Services Agreement by reference), which policies request that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider’s supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and policy, and this Panel has jurisdiction to decide this dispute.

Furthermore, the Panel considers that in the same manner by entering into the above mentioned Registration Agreement, the Respondent acknowledged and agreed that the domain name is subject to suspension, cancellation or transfer by an UDRP procedure in order to resolve a dispute under the Policy.

The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.

Such requirements include that the parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of the Panel be properly made and the parties be notified of the appointment of this Panel; and, that both parties be treated with equality in these administrative proceedings.

In the case of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond. That the failure of the Respondent to submit a response is not due to any omission under these proceedings. That there is sufficient and adequate evidence confirming the above.

Considering that the Respondent has defaulted in submitting a response to the allegations of Complainant, this Panel as directed by paragraphs 14(a) and (b) and 15 (a) of the Rules shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, and may draw such inferences there from as it may consider appropriate on the basis of Complainant’s undisputed representations.

Paragraph 4 (a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that 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 (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This Panel finds that Respondent’s Domain Name is confusingly similar to Complainant’s TEMPLETON trademark as the word “capital” merely describes the services the Complainant offers and thus is not distinctive.

B. Rights or Legitimate Interests

Furthermore, this Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the domain name as it has not used or prepared to use the TEMPLETON domain name in connection with any bona fide offering of goods or services as contemplated under Paragraph 4(c)(i) of the Policy; nor that the 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 as contemplated under Paragraph 4(c)(iii) of the Policy.

C. Registered and Used in Bad Faith

The Panel also finds that Respondent has used the Domain Name in bad faith, in particular but without limitation, pursuant to Paragraph 4(b)(iv) of the Policy, in view that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.

Lastly, it is hereby noted that no settlement has been reached by the Parties and made known to this Panel prior to the rendering of this Panel’s decision, which may eventually affect or give ground for termination of this administrative proceedings as provided for under paragraph 17(a) of the Rules, nor is this Panel aware of the existence or initiation of any other type of legal proceedings before a court of competent jurisdiction for independent resolution, regarding the domain name dispute as contemplated under paragraph 4(k) of the Policy.

7. Decision

Therefore, this Panel finds:

(1) that the Domain Name registered by Respondent is confusingly similar to Complainant’s trademark TEMPLETON; and

(2) that Respondent has no rights nor legitimate interests in respect of the <templetoncapital.com> Domain Name; and

(3) that the <templetoncapital.com> Domain Name has been registered and is being used in bad faith by the Respondent.

Therefore, the Panel orders, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy and 15 of the Rules, that the registration of the domain name <templetoncapital.com> be transferred to Franklin Resources, Inc., Complainant.

Pedro W. Buchanan Smith
Sole Panelist

Dated: January 25, 2005