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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sharebuilder Corporation v. James A. Gilbert/webmaster webmaster

Case No. D2006-0010

 

1. The Parties

The Complainant is Sharebuilder Corporation, Bellevue, Washington, United States of America (“Complainant”), represented by Graham & Dunn, PC, United States of America.

The Respondent is James A. Gilbert, Sherman Oaks, California, United States of America (“Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name <sharebuilderira.com> (the “Disputed Domain Name”) is registered with SRSplus (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2006. On January 6, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 6, 2006, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed amendments to the Complaint on January 13, 2006 and January 14, 2006. The Center verified that the Complaint together with the amendments 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 Respondent of the Complaint, and the proceedings commenced on January 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 6, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent of Respondent’s default on February 8, 2006.

The Center appointed Steven Auvil as the sole panelist in this matter on February 14, 2006. 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 an online provider of stock brokerage services. Since 1999, Complainant has operated a web site at <sharebuilder.com>. Complainant is the owner of the registered U.S. trademark SHAREBUILDER with respect to “stock brokerage services, namely, facilitating the purchase and sale of equities by means of a global computer network.” The SHAREBUILDER mark was registered on the principal register (Registration No. 2,488,646) on September 11, 2001. Complainant asserts that, since 1999, it has expended more than $100 million and a substantial amount of effort in developing and marketing the SHAREBUILDER mark and that it is consequently widely recognizable as identifying stock brokerage services originating with Complainant. Complainant also asserts that it has developed and offers Individual Retirement Account (“IRA”) products in connection with the SHAREBUILDER mark and has provided evidence supporting this.

Respondent registered the Disputed Domain Name on June 28, 2005. Complainant forwarded a cease and desist letter to Respondent on September 13, 2003, and, on September 27, 2005, sent a communication to the Registrar attempting to ascertain the identity of the registrant of the Disputed Domain Name. Complainant filed a complaint with the Center on November 30, 2005, in relation to the Disputed Domain Name against the anonymous registrant. On the same day, Complainant received e-mail and voicemail communications from Respondent acknowledging that he was the registrant of the Disputed Domain Name. Respondent initially offered to transfer the Disputed Domain Name to Complainant without material condition. Relying on this representation, Complainant withdrew its original complaint. Respondent subsequently premised the transfer of the Disputed Domain Name on the material condition that Complainant first make cash payments to two charity organizations. Complainant refused and filed the current Complaint with the Center on January 5, 2006.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that its SHAREBUILDER mark is widely known for its stock brokerage services, including its IRA products and services, and that the Disputed Domain Name is confusingly similar to this well-known mark. Complainant also contends that it is highly likely that a consumer inputting or encountering a domain name containing the terms SHAREBUILDER and IRA would believe that Complainant was the source of the IRA products and services offered through that domain name.

In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name and that Respondent was not using it in connection with a bona fide offering of goods or services. Complainant provides evidence that Respondent admits this.

Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because (i) Respondent has taken active steps to conceal his true identity, (ii) there is no evidence that Respondent has legitimate rights or business interest in, or ever conducted legitimate business through, the Disputed Domain Name, and (iii) Respondent has a history of similar activity attempting to exploit Complainant’s SHAREBUILDER mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain the relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interest in the Disputed Domain Name registered by Respondent; and

(3) that the Disputed Domain Name registered by Respondent has been registered and used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed averments, 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.

A. Identical or Confusingly Similar

Respondent does not dispute, and the Panel finds, that the Disputed Domain Name registered by Respondent is confusingly similar to Complainant’s federally-registered SHAREBUILDER trademark, Registration No. 2,488,646. It is well settled that adding a top level domain name suffix such as “.com” or “.net” does not distinguish a domain name from being confusingly similar to a trademark. Nora Baumberger v. SAND WebNames – For Sale, WIPO Case No. D2001-0502 (June 7, 2001). Regarding the use of the suffix “ira” in the Disputed Domain Name, previous WIPO UDRP panels have accepted that the “user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’” Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446 (June 8, 2001) (citing J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4^th ed. 1998)). Further, the addition of the generic term “ira” does not dispel the confusing similarity arising from the incorporation of the SHAREBUILDER trademark. See Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 (September 12, 2000) (“credit” added to the mark HANG SENG in <hangsengcredit.com> did not distinguish that domain name from being confusingly similar to the HANG SENG mark); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001) (“parts” added to the mark OKIDATA in <okidataparts.com> did not distinguish that domain name from being confusingly similar to the OKIDATA mark).

Therefore, the Panel concludes that the Disputed Domain Name is confusingly similar to the SHAREBUILDER trademark, a federally-registered trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the Disputed Domain Name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c).

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent was not licensed by Complainant to use the mark SHAREBUILDER. Complainant has submitted persuasive evidence supporting its contention that the Disputed Domain Name does not bear any relationship to the business of Respondent and Respondent has not presented any arguments in rebuttal. Nothing in the record suggests that Respondent has at any time used the Disputed Domain Name in connection with a bona fide offering of goods or services or that Respondent is commonly known by the Disputed Domain Name. Respondent has not presented any arguments or evidence that he is making a legitimate noncommercial or fair use of the Disputed Domain Name, and it does not appear that he could make such a showing.

For these reasons, the Panel infers that Respondent has no such rights or a legitimate interest in the Disputed Domain Name. Pavillion Agency, Inc., and Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. and Glenn Greenhouse, WIPO Case No. D2000-1221 (December 4, 2000) (Panel free to infer no rights or legitimate interest where Respondent fails to rebut prima facie showing).

C. Registered and Used in Bad Faith

Finally, Complainant argues that Respondent has registered and used the Disputed Domain Name in bad faith. Specifically, Complainant argues that Respondent’s bad faith is reflected in the fact that, with actual or constructive knowledge of Complainant’s rights in its well-known trademark, Respondent (i) registered and used the Disputed Domain Name intending to passively hold onto it (which would prevent Complainant from registering it for its own business), (ii) took active steps to conceal his identity, and (iii) has a history of attempting to exploit Complainant’s SHAREBUILDER mark.

Complainant has provided evidence that Respondent admitted that the Disputed Domain Name “has no value” to and “has never been used” by him, and that he initially agreed to transfer it to Complainant without material condition but after Complainant withdrew the initial Complaint demanded contributions to “favorite” charity organizations in consideration of the transfer.

Complainant has not provided any evidence, nor does Complainant contend, that Respondent actually attempted to sell the Disputed Domain Name to Complainant or to a competitor. Finally, Complainant contends that Respondent’s actions to conceal his identity by registering the Disputed Domain Name anonymously and using a privacy service (“webmaster webmaster”) to conceal his identity also supports bad faith.

It is undisputed that Respondent incorporated Complainant’s SHAREBUILDER mark in two domain names in the past. See Sharebuilder Corporation v. James Gilbert, WIPO Case No. D2005-0685 (August 14, 2005) (where a panel ordered Respondent to transfer the domain names <sharebuilder-401k.com> and <sharebuilder401k.com> to Complainant). This shows a pattern of conduct of registering domain names without a bona fide intention to use them legitimately. See, e.g., Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275 (March 25, 2000); Aзo Minas Gerais S.A. Aзominas v. Josй Dutra, WIPO Case No. D2000-1458 (March 5, 2001); Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046 (March 24, 2000). Therefore, in view of Respondent’s failure to submit a Response, the Panel is free to infer that Respondent registered the Disputed Domain Name for an illegitimate purpose.

Further supporting a finding of bad faith is the implausibility that Respondent did not have actual notice of Complainant’s rights before registering the Disputed Domain Name. Complainant has submitted persuasive evidence supporting that the SHAREHOLDER mark is well known in the stock brokerage services field. Moreover, Respondent registered the Disputed Domain Name on June 28, 2005, 15 days after he received a cease and desist letter from Complainant concerning the other domain names registered by Respondent incorporating the SHAREHOLDER mark that were the subject of the prior WIPO UDRP action referenced above. See Sharebuilder Corporation v. James Gilbert, WIPO Case No. D2005-0685 (“The Complainant forwarded a cease and desist letter to the Respondent on June 13, 2005…”). Accordingly, this Panel finds that Respondent was aware of Complainant’s rights before registering the Disputed Domain Name.

In short, the Panel concludes that the bad faith element of the Policy is satisfied.

 

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 <sharebuilderira.com> be transferred to Complainant.

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Steven Auvil
Sole Panelist

Dated: February 28, 2006