Massachusetts Financial Services Company v. Moniker Privacy Services, Traverito Traverito
Case No. D2007-0949
1. The Parties
The Complainant is Massachusetts Financial Services Company, Boston, Massachusetts, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
The Respondent is Moniker Privacy Services, Pompano Beach, Florida, United States of America; amended to Traverito Traverito, ‘Crcega 329 4 planta, Barcelona Alabama, Spain’.
2. The Domain Name and Registrar
The disputed domain name <massachusettsfinancialservices.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2007. On June 29, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On August 21, 2007, after some delay, Moniker Online Services, LLC transmitted by email to the Center its verification response advising that the Registrant was Traverito Traverito, Crcega 329 4 plant, Barcelona, Alabama 08037, ES. In response to a notification by the Center conveying the information submitted by the Registrar on the domain name holder, the Complainant filed an amendment to the Complaint on August 29, 2007. The Center verified that the Complaint, together with the amendment to 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 August 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2007.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on October 4, 2007. 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
The Complainant established the first mutual fund in the United States of America in 1924 and since then has offered a range of financial products and services, both in the United States of America and abroad (Complaint, [11]). No further detail is provided in the Complaint as to the longevity and scale of the Complainant’s activities, but in 1996 a service mark was registered in the United States comprising MASSACHUSETTS FINANCIAL SERVICES with a disclaimer of any exclusive right to use the words “financial services” apart from the mark as registered (Complaint, Annex 3).
It is unclear who is the registrant of the domain name <massachusettsfinancialservices.com>. According to a WHOIS Search dated June 7, 2007 (Complaint, Annex 1), the registrant was Moniker Privacy Services of an address in Florida. It appears that there were email and telephone communications between the Complainant’s authorized representative and someone at Moniker Privacy Services prior to the filing of the Complaint. However, as noted above, the Registrar of the domain name, which also shares the name Moniker (Moniker Online Services Inc) eventually advised that the registrant was Traverito Traverito, Crcega 329 4 planta, Barcelona Alabama, 08037, Spain. No response or other communication has been received from this party.
As the domain was to expire on October 13, 2007, the Registrar advised that it would place a “lock” on the name until the present proceeding is determined in accordance with paragraph 3.5.7.7 of the ICANN Expired Domain Deletion Policy (email dated August 28, 2007 from Moniker Support to WIPO).
5. Parties’ Contentions
A. Complainant
The Complainant contends that, for the purposes of paragraph 4(a)(i) of the Policy, the domain name is identical or confusingly similar to its trade and service mark, in that it incorporates the words of the mark in their entirety. In this regard, it submits that the .com suffix is to be disregarded, citing Rollerblade Inc. v. Chris McCrady,
WIPO Case No. D2000-0429 in support.
The Complainant further submits that, for the purposes of paragraph 4(a)(ii) of the Policy, there is no evidence that the Respondent has any rights or legitimate interests in respect of the domain name. Under this heading, the Complainant asserts that, so far as it can determine, the Respondent is not, and has never been, a representative of Massachusetts Financial Services or licensed to use its services mark. Furthermore, the Complainant contends that the Respondent is not currently offering any goods or services through the website at the disputed domain name, but rather that the website simply lists a number of links which ultimately take users to sites operated by other traders that offer various financial and insurance services (printout of the homepage form the Respondent’s website is at Complaint, Annex 6). There also appears to be no link between the website at “www.massachusettsfinancialservices.com” and the State of Massachusetts. The Complainant contends further, on information and belief, that the Respondent is not commonly known by the name “massachusettsfinancialservices.com”
The Complainant further argues that the requirement of registration and use in bad faith, as stipulated in paragraph 4(a)(iii) of the Policy, is made out (some of the matters referred in the Complaint under paragraph 4(a)(ii) are also relevant here). Thus, the Complainant believes that the Respondent has adopted the domain name in order to divert traffic from the Complainant’s business to its own and that the Respondent, at the time of registering the domain name, should have been aware of the Complainant’s service mark and trade name. Further, the Complainant alleges that the Respondent’s use of the domain name creates a likelihood of confusion to users, as well as precluding the Complainant from registering the name in the .com domain. The Complainant argues that there will be continuing damage and harm to its property rights if the Respondent continues to be registered, and therefore seeks transfer of the disputed domain name to itself.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that,
“…if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Respondent’s domain name
“…is identical or confusingly similar to a trademark or service mark in which the complainant has rights.”
So far as the first part of this paragraph is concerned, there are the following differences between the domain name and the services mark that mean that they are not identical: the domain name comprises one word with the .com suffix, while the service mark consists of three separate words. However, these differences are only minor, and there is no doubt that the composite domain name is still confusingly similar to the service mark. The Panel also accepts the Complainant’s submission that the .com suffix to the end of the domain name does not affect the domain name for the purpose of establishing whether it is identical or confusingly similar: in addition to Rollerblade Inc v. Chris McCrady,
WIPO Case No. D2000-0429, see Bang & Olufsen a/s v. Unasi Inc,
WIPO Case No. 2005-0728 and Deutsche Welle v. DiamondWare Limited,
WIPO Case No. D2000-1202. The Complainant has therefore satisfied this aspect of paragraph 4(a)(i) of the Policy.
The second part of paragraph 4(a)(i) is also satisfied, in that the Complainant has proved that it has “rights” in the trade or service mark, in that the words MASSACHUSETTS FINANCIAL SERVICES are registered as a service mark under US law. It is unnecessary therefore, for the purposes of paragraph 4(a)(i), to have regard to any further rights at general law that the Complainant may have in the mark as an unregistered mark (noting here that there is nothing in the Complaint to support any broader claim by the Complainant to rights in an unregistered mark, in any event).
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(b) which provides that:
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 [the Respondent’s] 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.
Essentially, these are matters for a Respondent to put forward for the Panel’s consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exist.
Thus, the Complainant asserts that it has never given permission to the Respondent to use the mark MASSACHUSETTS FINANCIAL SERVICES and that the Respondent is not and has never been one of its representatives. In addition, there appears to be no evidence that the Respondent has been using the domain name for a bona fide offering of goods or services. While the domain name resolves to a website (Complaint, Annexe 6), the services listed there are of a very diverse kind, eg “stock ticker symbol”, “insurance”, “US bank ranking”, “blank social security cards”, “Georgia tax law”, “cheap auto insurance New Jersey”, “offshore banking instrument”, “personal signature loans”, etc. These headings lead, in turn, to other websites, which offer some, but by no means, all of these particular services. Thus, when the panelist visited these sites, they tended to be Australian websites which often had little, if anything, to do with the particular service listed on the “www.massachusettsfinancialservices.com” website. For example, the link for “Georgia tax law” led to “Business Taxation Laws” and the small business website of the Age newspaper in Melbourne, Australia. Again, the link for “Atlanta Mortgage Loan Calculator” led to links to the websites of the National Australia Bank, one of Australia’s largest banks, and to Aussie Loans, a large home lender, none of these companies obviously having any link to Atlanta, let alone Massachusetts. The same pattern occurs with each of the links that appear on the website, and there is nothing to suggest that any of the services that are offered by these other websites are linked in any way to the operator of <massachusettsfinancialservices.com>. In view of this, it is impossible for the Panel to conclude that the circumstance referred to in paragraph 4(c)(i) exists.
In the same way, there is simply no evidence of any facts that would support the circumstances referred to in paragraph 4(c)(ii) or (iii).
The absence of any Response from the Respondent addressing the matters referred to in paragraph 4(c) entitles the Panel to infer that none of these circumstances exist in the present case. Accordingly, the Panel is satisfied that the requirement of no rights or legitimate interests under paragraph 4(a)(ii) of the Policy has been made out.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii), the Complainant must further show that the domain name has been registered and is being used in bad faith. Paragraph 4(b) then provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration anduse of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decisions of the panels to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith: Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna,
WIPO Case No. D2000-0869 and E & J Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under Paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules, the Panel is entitled to draw from such default such inferences, as it considers appropriate.
On the evidence before it, there is no evidence before the Panel to indicate that the circumstances referred to in paragraph 4(b)(i) or (ii) arise here. It is also impossible to ascertain whether the intention referred to in paragraph 4(b)(iii) exists; in particular, it is unclear whether the Complainant and Respondent are, in fact, competitors.
So far as paragraph 4(b)(iv) is concerned, however, different considerations may arise. In an earlier decision of the same panelist with similar facts to the present, Integrated Payment Systems. Inc. v. integratedpaymentsystems.com c/o Whois Identity Shield Case,
WIPO Case No. D2006-1214, it was impossible for the panel to infer the derivation of a commercial benefit to the Respondent simply on the supposition that there might be a payment per “click” – there was no evidence one way or the other on this question. On the other hand, in the present case, each of the entries on <massachusettsfinancialservices.com> leads to a listing of “sponsored results”, namely the links to the various other websites to which the user is then directed. The precise meaning of the word “sponsored” is uncertain, but might possibly give rise to the inference that there has been some benefit to the Respondent in including these links on <massachusettsfinancialservices.com>. Accordingly, it might be said that there is a use here of the domain name in bad faith, i.e. for the purpose of the Respondent obtaining a commercial benefit from attracting users to its website by creating a likelihood of confusion with the Complainant. Nonetheless, while this might point ultimately to a use of the domain name in bad faith, it does not address the prior question of whether the registration of the domain was also in bad faith.
As noted above, the circumstances referred to in paragraph 4(b) are not exhaustive and there may be other facts or circumstances that point to bad faith registration and use of the domain name. In this regard, the Complainant alleges that the registration of the domain can only have been made in bad faith because the Respondent must have known of the existence of the Complainant’s registered service mark prior to its registration of the domain name, in other words, that the Respondent would have had actual or constructive knowledge of the Complainant’s service at the time of registration.
As a general matter, it appears that constructive knowledge of a trade mark registration is not a factor that UDRP panels have usually held sufficient on its own to justify a finding that the registration of an identical or confusingly similar domain has been in bad faith, although the WIPO Overview of WIPO Panel Views on Selected UDRP Questions notes that this concept has been applied in a few cases where a complainant had a United States registered trademark and the respondent was also located in the United States. In such cases, the US doctrine of constructive notice may be held to be applicable: see, for example, Kate Spade, LLC v. Darmstadter Designs,
WIPO Case No. D2001-1384 and Cellular One Group v. Paul Brien,
WIPO Case No. D2000-0028. Nevertheless, there are also decisions where panels have been critical of the application of such a doctrine where the respondent comes from a non-US jurisdiction: see, for example, Alberto-Culver Company v. Pritpal Singh Channa,
WIPO Case No. D2002-0757, where the Panel said, in relation to a UK respondent and a US domain name registrant:
“The Complainant’s evidence of bad faith registration and use is exceedingly weak. I reject the idea that some sort of “constructive notice” is generated upon a trademark registration, and that this is sufficient to establish bad faith. To accept this idea is to accept that a trademark registration—without anything further—is enough to establish bad faith under the Policy. This is a ludicrous suggestion, and runs contrary to the clear intention of paragraph 4.a.(iii) which was intended to protect the interests of domain name holders who registered without bad faith. The evidence of advertising expenditures (some $1.5 million a year over multiple countries) does not indicate that the mark is particularly well known. Moreover, there is no indication of the amount spent on advertising in England. There is nothing to indicate that the Respondent was ever aware of the mark.”
Accordingly, while it may be true that the doctrine of constructive notice will have some application in cases where both parties are based in the US, it is also notable that, even in those cases where the doctrine has been applied, there have been other circumstances indicating bad faith, including evidence that the relevant trade mark had been widely used beforehand both in the USA and elsewhere, and was well known, quite apart from the fact of registration: see, for example, Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 and Ticketmaster Corp v. Spider Web Design Inc, WIPO Case No. D2000-1551.
In the present case, while the Respondent now has a non-US address (in Barcelona, Spain), it would appear that it may initially have had a US address. However, the real problem for the Complainant here is that, apart from the fact of registration, it has not provided any further evidence of the duration and extent of the use of its mark, and this makes it impossible for the Panel to infer the necessary constructive knowledge, as was the case in the Volvo and Ticketmaster decisions referred to above. Allegations that a mark is well known are not enough: there should be some evidence of actual usage such as would provide a proper basis for inferring that the Respondent must have known of the existence of the Complainant’s mark at the time of registration of the domain name.
In consequence, while there appears to be some basis for inferring that the domain is presently being used in bad faith within the circumstances envisaged in paragraph 4(b)(iv) of the Policy, the Complainant cannot succeed in showing that the initial registration of the domain name was made in bad faith, on the basis of alleged constructive knowledge of the US trade mark registration alone.
Is this conclusion affected by the fact that the identity of the Respondent is uncertain and, moreover, may have shifted from the USA to Spain? The Complainant has not directed any specific submissions to this point, but on the material supplied to the Panel it appears that the initial registration of the domain name was effected by a privacy service (Moniker Online Privacy) under the auspices of the Registrar (Moniker Online Services), with the true identity of the registrant being kept confidential. Subsequently, the “true identity” of the registrant has been “revealed” by the Registrar, with the provision of a name and address in Spain. There may be some doubt as to the authenticity of this name and address, but it does not appear that the Complainant has sought to investigate this matter further. In itself, there is nothing wrong in a registrant seeking anonymity through the use of a privacy service: see further the discussion of this in HSBC Finance Corporation v. Clear Blue Sky Inc,
WIPO Case No. D2007-0062 and see further TDS Telecommunications Corporation v. Registrar [20758] Nevis Domain and Registrant [117460] Moniker Privacy Services,
WIPO Case No. D2006-1620. However, in a case such as the present, these facts clearly merit further investigation by a Complainant if it is seeking to show the existence of bad faith at the time of registration. In other cases, the use of proxies has been held to be a relevant factor, albeit of minor weight, along with others, in showing bad faith: see, for example, Grupo Televisa SA v. Autosya DTV2001-0007; CBS Broadcasting Inc v. Edward Enterprises, WIPO Case No. D2000-0242; and Lion Country Supply Inc v. J Katz,
WIPO Case No. D2003-0106. However, it has never been given primacy in itself as a circumstance amounting to bad faith, in the absence of some further element of fraud or deception.
In the present case, while one might have doubts about the use of a privacy service as well as the authenticity of the details relating to the subsequently identified registrant, it is difficult for the Panel to investigate these matters further in the absence of evidence from the Complainant that might indicate that this was a deliberate attempt to evade detection or that attempts have been made to contact the Respondent at the Spanish address and that these have failed (or, indeed, that the name and address are fictitious). It is true that the Respondent has not filed a response and has otherwise not acknowledged communications from the Center. However, given that the Complainant is seeking transfer of the domain name and has the onus of establishing the various requirements of paragraph 4(a), there is insufficient material here for the Panel to conclude that the use of a privacy service by the Respondent warrants an inference that the registration of the domain name was effected in bad faith.
In light of the above, the Panel is not satisfied that the material provided by the Complainant alone has made out the third requirement of paragraph 4(a), namely that both the registration and use of the domain name was made in faith bad faith.
This, however, is not an end of the matter, as the Panelist is aware, from his own investigations, aided by the domain name decision data base maintained by the Center, that there have been some 21 decisions by WIPO UDRP panelists since 2006 involving Moniker Privacy Services and that the majority of these decisions have ordered the transfer of the disputed domain names. Two of these decisions, moreover, have involved the present Respondent Traverito Traverito as the ultimate registrant. In one of these, RJ Reynolds Tobacco Company and GMB Inc v. Traverito Traverito, WIPO Case No. D2007-0598, the panel ordered transfer; in the other, McMullen Argus Publishing Inc v. Moniker Privacy Services/ Traverito Traverito,
WIPO Case No. D2007-0680, the complaint was denied. It is not entirely clear from the reports of these two decisions what evidence had been put before the panels, but one strong point of difference appears to have been that the Reynolds mark had been used quite extensively for a long time before registration of the domain name and possibly had some claim to be regarded as a well known mark. By contrast, in the second case, there was no evidence, apart from registration, of the reputation attaching to the Complainant’s mark, and no evidence had been provided by the Complainant that enabled the Panel to conclude that registration of the domain name had been effected within one of the sets of circumstances outlined in paragraph 4(a)(iii) of the Policy. In this regard, the complaint in that case appeared to suffer from the same deficiencies as the Complaint in the present proceeding.
Notwithstanding these problems, the fact that there has already been one decision of a WIPO UDRP panel finding that the same Respondent (Traverito Traverito) has previously registered another domain name in bad faith is of some significance. In particular, it suggests that the circumstances outlined in paragraph 4(b)(ii) may exist, namely that the Respondent has registered the domain name “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.” While one such previous bad faith registration may not suggest a “pattern of such conduct”, it is relevant here to have regard to the McMullen Argus decision where the activities of the Respondent appear very similar to those in the present case, even though that complaint was ultimately denied. In the present Panelist’s view, these circumstances are just sufficient to push this case over the line and to provide a basis for him to conclude that the registration of the domain name here was in bad faith. This conclusion is, of course, fortified by the findings above that the present use of the domain name clearly appears to be in bad faith, as well as the other matters noted above concerning the actual identity and location of the Respondent.
By way of conclusion, it should be said that this has not been an easy matter for the Panel to resolve, as it has been necessary to go beyond the material contained in the Complaint. Fortunately, the comprehensive data base maintained by the Center has made this a relatively manageable task, but it would have been preferable for these matters to have been investigated by the Complainant and presented in the Complaint itself. The Panel also notes that there has been one other Complaint by Massachusetts Financial Services which has previously succeeded in transfer: Massachusetts Financial Services Company v. SWI Digital.com, Incorporated, WIPO Case No. D2007-0841. This was in respect of the domain name <massachusettsfinancial.com>, but against a different respondent and registered by a different registrar. Accordingly, it has no relevance to the present proceeding.
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 name <massachusettsfinancialservices.com> be transferred to the Complainant.
Staniforth Ricketson Sole Panelist
Dated: October 18, 2007
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