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Generic Top Level Domain Name (gTLD) Decisions |
Hewitt Associates LLC v. Robin Cuff
Claim
Number: FA0412000376375
Complainant is Hewitt Associates LLC (“Complainant”),
100 Half Day Road, Lincolnshire, IL 60069.
Respondent is Robin Cuff (“Respondent”),
1021 Stone Cmurcm Rd. E., Hamilton, Ontario L9C 3P1, Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hewittassociatesinc.com>, registered with
In2net Registrar.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
7, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on December 13, 2004.
On
December 14, 2004, In2net Registrar confirmed by e-mail to the National
Arbitration Forum that the domain name <hewittassociatesinc.com>
is registered with In2net Registrar and that Respondent is the current
registrant of the name. In2net Registrar has verified that
Respondent is bound
by the In2net Registrar registration agreement and has thereby agreed to
resolve domain-name disputes brought
by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
December 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of January 10, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing
contacts, and to postmaster@hewittassociatesinc.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 20, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules")
"to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules,
the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hewittassociatesinc.com>
domain name is confusingly similar to Complainant’s HEWITT ASSOCIATES mark.
2. Respondent does not have any rights or
legitimate interests in the <hewittassociatesinc.com> domain name.
3. Respondent registered and used the <hewittassociatesinc.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Hewitt Associates LLC, is in the business of
providing actuarial and consulting services in the areas of employee benefits,
compensation,
communication and administration. Complainant’s parent company is Hewitt Associates Inc.
Complainant holds registrations in Canada and with the United States
Patent and Trademark Office for the HEWITT (U.S. Reg. No. 2,217,151
issued on
January 12, 1999 and Canada Reg. No. TMA535,484 issued October 23, 2000) and
HEWITT ASSOCIATES (U.S. Reg. No. 1,355,772
issued August 20, 1985 and Canada
Reg. No. TMA536,938 issued November 9, 2000) marks.
The <hewittassociatesinc.com> domain name was registered on August 31, 2004. The domain name resolves to a website that
offers loans under Complainant’s name for an advance fee payment. However, it is believed that once Internet
users pay the fee, they do not receive the loan. The contact information on the website provides a former address
and current telephone numbers for Complainant’s New York office. Furthermore, Respondent claims that it did
not set up the website and that Respondent’s credit card information was
misappropriated
by the operator of the website to make payments to the
registrar for the domain name registration.
Paragraph 15(a)
of the Rules instructs this Panel to "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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain
name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established that it has rights in the HEWITT ASSOCIATES mark through
registration with the United States Patent and
Trademark Office and by
continuous use of its mark in commerce.
See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently
distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive and
that Respondent has the burden
of refuting this assumption).
The <hewittassociatesinc.com>
domain name registered by Respondent is confusingly similar to Complainant’s HEWITT
ASSOCIATES mark because the domain name incorporates
Complainant’s mark in its
entirety, deviating only with the addition of the abbreviation “inc” for the
term “incorporated.” Furthermore, the
domain name is identical to the name of Complainant’s parent company, Hewitt
Associates Inc. The Panel finds that
simply adding a common abbreviation for a generic term to Complainant’s
registered mark is insufficient to distinguish
the domain name from the mark. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000)
(finding that <kelsonmd.com> is identical or confusingly similar to
Complainant’s federally registered service
mark, “Kelson”); see also PG&E Corp. v. Anderson, D2000-1264
(WIPO Nov. 22, 2000) (“Respondent does not by adding the common descriptive or
generic terms ‘corp’, ‘corporation’ and
‘2000’ following ‘PGE’, create new or
different marks in which it has rights or legitimate interests, nor does it
alter the underlying
[PG&E] mark held by Complainant”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent lacks rights and legitimate interests in the <hewittassociatesinc.com>
domain name, which contains Complainant’s HEWITT ASSOCIATES mark in its entirety. The Panel determines that Complainant has
made a prima facie case in support of its allegations, so the burden
shifts to Respondent to show that Respondent has rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, Respondent failed to respond to the
Complaint, so the Panel assumes that Respondent lacks rights and legitimate
interests
in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate
interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with
respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate
interests in the domain name); see also
Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply
to the Complaint).
Furthermore,
since the Panel has found that Complainant has made the prima facie
showing and Respondent has failed to respond, the Panel is entitled to accept
all reasonable allegations and inferences in the Complaint
as true. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact
in the allegations of the Complaint to be deemed true); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a Response the Panel is
free to make inferences from the
very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
The <hewittassociatesinc.com>
domain name resloves to a website that purports to offer loans under
Complainant’s name. The loans are
offered in exchange for an advance fee payment. However, Complainant asserts that consumers who send in the
advance fee do not actually receive any loans or loan services. The Panel determines that Respondent’s use
of a domain name confusingly similar to Complainant’s HEWITT ASSOCIATES mark to
divert
Internet users to a website that offers services under Complainant’s
mark without authorization is not in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's
website and marks, its use of the names was not in connection
with the offering of goods or services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using Complainant’s
mark by redirecting Internet traffic to its own website); see also State Farm Mut. Auto. Ins. Co. v. LaFaive,
FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of
information and services under a mark owned by a third party
cannot be said to
be the bona fide offering of goods or services”).
No evidence in
the record suggests that Respondent is commonly known by the <hewittassociatesinc.com>
domain name and Respondent has provided no proof to establish that it has ever
been known by the domain name.
Therefore, the Panel concludes that Respondent has not established that
it has rights or legitimate interests in the disputed domain
name pursuant to
Policy ¶ 4(c)(ii). See RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because Respondent is not commonly known by
the disputed
domain name or using the domain name in connection with a legitimate or fair
use).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
According to the
Complaint, Respondent has indicated that it did not set up the website and that
Respondent’s credit card information
and identity were misappropriated to set
up and pay for the disputed domain name registration. Furthermore, the disputed domain name is
being used to offer fraudulent loans under Complainant’s name for the purpose
of obtaining
advance fees from Internet users for loan services the users will
never receive. The Panel finds that
this scheme, known as “phishing,” is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29,
2004) (finding bad faith where the website was being used for a “phishing”
scheme and Respondent
asserted “that
an unknown perpetrator stole his identity and registered the disputed domain
name for purposes of the fraudulent scheme alleged
by Complainant”); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb.
Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to
misrepresent itself as Complainant
and to provide misleading information
to the public supported a finding of bad faith); see also Halifax plc v. Sunducl,
D2004-0237 (WIPO June 3, 2004) (“[T]he
apparent potential for “phishing” and obtaining information by deception, is
not just evidence of bad faith but possibly suggestive
of criminal activity. It
is accepted that on this basis there is no other possibility than the site
being registered in bad faith.”).
The
<hewittassociatesinc.com> domain name is being used to
intentionally attempt to attract Internet users to a website that purports to
offer loans under Complainant’s
name.
Furthermore, the operator of the website derives commercial benefit by
charging a fee for the loan services which the Internet users
will never
receive. Thus, the Panel determines
that Respondent’s attempts to divert Internet users for commercial gain by
attracting them to its website
through a likelihood of confusion with
Complainant’s mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that Respondent registered and used the domain name in bad faith
pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website);
see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if Respondent profits from its diversionary use of Complainant's
mark when
the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent
is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <hewittassociatesinc.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
February 3, 2005
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