Isharesinvestor.com

The timeline behind isharesinvestor.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Barclays Global Investors, N.A. v. Chartwell Partners Inc. Claim Number: FA0602000649706 PARTIES Complainant is Barclays Global Investors, N.A. (“Complainant”), represented by Susan L. Heller of Greenberg Traurig, LLP, 2450 Colorado Avenue, Suite 400E, Santa Monica, CA 90404. Respondent is Chartwell Partners Inc. (“Respondent”), 8430 Lauralwood Lane, Colorado Springs, CO 80919. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <isharesinvestor.com>, registered with Network Solutions, Inc. PANEL 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. Terry F. Peppard as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 24, 2006. On February 23, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <isharesinvestor.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 February 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 2006 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@isharesinvestor.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding. 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: Complainant is a creator of investment strategies with more than 2,800 clients in thirty-nine countries and with approximately $1.5 trillion in client assets. Complainant owns and operates ISHARES fund, which is the world’s most extensive family of Exchange Traded Funds (ETFs). Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its ISHARES mark (Reg. No. 2,422,249 issued January 16, 2001). Complainant spends more than $20 million per year marketing its ISHARES products and services. Respondent registered the <isharesinvestor.com> domain name on May 4, 2005. That domain name resolves to a website that appears to be associated with Respondent’s business. According to the website, Respondent is in the business of providing financial investment advice, which includes advice regarding Complainant’s ISHARES products and services. Complainant has not licensed or otherwise authorized Respondent to use Complainant’s ISHARES mark. Respondent is not commonly known by the <isharesinvestor.com> domain name. Respondent’s <isharesinvestor.com> domain name is confusingly similar to Complainant’s ISHARES mark. Respondent does not have any rights or legitimate interests in the <isharesinvestor.com> domain name. Respondent registered and uses the <isharesinvestor.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS (1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the same domain name was registered and is being used by Respondent in bad faith. DISCUSSION 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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: i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and ii. Respondent has no rights or legitimate interests in respect of the domain name; and iii. the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant asserts that it has established a prima facie case of rights in the ISHARES mark due to its registration of the mark with the USPTO. The Panel agrees and finds that Complainant has proven rights in the mark pursuant to the requirement of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“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.”). See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). The <isharesinvestor.com> domain name incorporates Complainant’s registered ISHARES mark as its dominant feature, to which Respondent has added the common term “investor” and the generic top-level domain (“gTLD”) “.com.” In Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), the panel found the domain name <okidataparts.com> confusingly similar to the complainant’s OKIDATA mark and held that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” Thus, the Panel concludes that Complainant has clearly established confusing similarity pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the domain name <westfieldshopping.com> confusingly similar because the WESTFIELD mark was the dominant element). Complainant has therefore satisfied the requirements under Policy ¶ 4(a)(i). Rights or Legitimate Interests Pursuant to Policy ¶ 4(a)(ii), Complainant has the initial burden of showing that Respondent lacks rights and legitimate interests in the <isharesinvestor.com> domain name. However, once Complainant has made a prima facie case with respect to this element, the burden shifts to Respondent to provide evidence that it has rights or legitimate interests under Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Without a response from Respondent, the Panel is entitled to presume that Respondent has not met its burden. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel may nonetheless choose to examine whether the evidence is sufficient to support a finding that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c), which we now do. Complainant here contends that Respondent is not commonly known by the <isharesinvestor.com> domain name, a contention that Respondent does not deny. Indeed Respondent registered the domain name under its business name “Chartwell Partners Inc.” according to the WHOIS database. Furthermore, Complainant asserts that it has not licensed or authorized Respondent to use the ISHARES mark. Where a respondent has failed to submit a response, the WHOIS information is often the only evidence identifying the respondent. Thus, where there is no response and the WHOIS information supports Complainant’s assertion, the Panel is left to conclude that Respondent is not commonly known by the disputed domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). It may also be noted in the same regard that Respondent’s website at the disputed domain name displays the name “Chartwell Partners Inc.” and <ChartwellAdvisor.com> further supporting the finding that Respondent does not identify itself by the domain name <isharesinvestor.com>. Therefore, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). Likewise, according to Complainant, Respondent is using the <isharesinvestor.com> domain name to divert Internet users to a website associated with Respondent’s business, which involves providing financial and investment advice, including advice regarding Complainant’s products and services offered under the ISHARES mark. In Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003), a respondent was using the <wwwzyban.com> domain name to operate a website that sold products in competition with a complainant’s ZYBAN mark. The panel there found that the respondent was “taking advantage of [the] [c]omplainant’s mark by diverting Internet users to [a] competing commercial site” and that such use did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. By parallel reasoning, this Respondent’s use of Complainant’s registered ISHARES mark to attract Internet users to Respondent’s competing website does not establish rights or legitimate interests pursuant to Policy ¶ 4(c)(i) or (iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where a respondent attempted to profit using a complainant’s mark by redirecting Internet traffic to its own website). Accordingly, Complainant has satisfied the requirements under Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant has provided evidence tending to show that Respondent is using the <isharesinvestor.com> domain name to resolve to a website providing information regarding Respondent’s financial business. Complainant maintains that Respondent is presumed to have known about Complainant’s rights in the ISHARES mark, because the purpose of Respondent’s business is to provide its clients with investment advice regarding Complainant’s ISHARES funds and similar products and services. The panel in Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004), found that a respondent’s use of the <hpdubai.com> domain name to operate a website that offered products similar to those offered by the complainant under its HP mark was for the purpose of benefiting from the goodwill associated with the complainant’s marks. According to the panel there, the respondent was diverting Internet users for its commercial gain, which conduct was taken evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The evidence here shows that Respondent knew about Complainant’s rights in the ISHARES mark and used that mark in the domain name without Complainant’s permission to attract business to Respondent’s own business. Respondent has therefore engaged in bad faith registration and use according to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (“Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”). Moreover, it is evident that Respondent registered the contested domain name with either actual or constructive knowledge of Complainant’s rights in the ISHARES mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such actual or constructive knowledge evidences bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002). For these reasons, Complainant has satisfied the requirements under Policy ¶ 4(a)(iii). DECISION Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED. Accordingly, it is Ordered that the <isharesinvestor.com> domain name be TRANSFERRED forthwith from Respondent to Complainant. Terry F. Peppard, Panelist Dated: April 5, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.