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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Federal Reserve Banks v. Chris Hoffman

Case No. D2004-0918

 

1. The Parties

The Complainant is Federal Reserve Banks, a United States Joint Venture of Federally Chartered Corporations, composed of the following twelve organizations: Federal Reserve Bank of Atlanta; Federal Reserve Bank of New York; Federal Reserve Bank of Boston; Federal Reserve Bank of Chicago; Federal Reserve Bank of Cleveland; Federal Reserve Bank of Dallas; Federal Reserve Bank of Kansas City; Federal Reserve Bank of Minneapolis; Federal Reserve Bank of Philadelphia; Federal Reserve Bank of Richmond; Federal Reserve Bank of St. Louis; and Federal Reserve Bank of San Francisco , represented by Brinks Hofer Gilson & Lione, United States of America.

The Respondent is Chris Hoffman, Pacific Palisades, California of United States of America .

 

2. The Domain Name and Registrar

The Domain Name at issue <fedlineadvantage.com> is registered with Go Daddy Software, Inc., Scottsdale, Arizona, U.S.A.

 

3. Procedural History

A Complaint dated November 3, 2004, was received by the World Intellectual Property Organization Arbitration Mediation Center (the “Center”) by email on November 3, 2004, and in hardcopy on November 5, 2004. On November 4, 2004, the Center sent Complainant an Acknowledgement of Receipt of Complaint.

On November 4, 2004, the Center sent to the Registrar a Request for Registrar Verification. On November 4, 2004, the Registrar transmitted to the Center, via e-mail, its response confirming registration of the Domain Name to Respondent. The November 8, 2004 Commencement Notification, was sent by the Center to Respondent, via email, with a hard copy of the Complaint sent by courier.

The Commencement Notification stated that in accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (“Rules”) and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (“Supplemental Rules”), the Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (“Policy”), Rules and Supplemental Rules. The Commencement Notification further stated that payment in the required amount was made by Complainant to the Center. The Commencement Notification set the deadline for responding to the Complaint at November 28, 2004.

On November 29, 2004, having received no Response from Respondent, the Center transmitted, via email, to the parties a Notification of Respondent Default. No Response or other document has been received by the Center from Respondent since the Notification of Default. Having reviewed the communications records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent”.

The Administrative Panel finds that Respondent received notice of the Complaint and failed to submit a Response as required by Paragraph 5 of the Rules. Accordingly, Respondent is in default and pursuant to Paragraph 14(a) of the Rules, the Administrative Panel shall proceed to a decision based on the allegations in the Complaint, the Rules and the Supplemental Rules, and shall draw such inferences as it considers appropriate.

In view of the Complainant’s selection of a three-person Panel, the Center invited Carol Anne Been, R. Eric Gaum, and Jeffrey M. Samuels to serve as Panelists, with Ms. Been serving as Presiding Panelist. On December 23, 2004, the parties were notified that the previously identified Panelists had been appointed and that a decision was to be handed down on January 6, 2005. On January 10, 2005, the time for the Panel to forward its decision to WIPO was extended to January 20, 2005.

 

4. Factual Background

The facts as presented in the Complaint are as follows. Complainant, Federal Reserve Banks, the central banking authority responsible for monetary policy in the United States, has owned, used, and promoted its FEDLINE mark since as early as 1982. Complainant first registered its FEDLINE mark with the United States Patent and Trademark Office in 1993, claiming first use of its FEDLINE mark in 1982.

Complainant filed an application to register the mark FEDLINE ADVANTAGE for banking services namely the electronic transmission of data and documents (Serial No. 76/588,940) with the United States Patent and Trademark Office on April 27, 2004. One month later, in May 2004, Complainant announced the impending launch of its web-based service under the FEDLINE ADVANTAGE mark in its Fedfocus newsletter. In June 2004, Complainant further publicized its impending program under the FEDLINE ADVANTAGE mark, also in its Fedfocus newsletter. On August 15, 2004, the New York Post published an article that included a discussion of the impending launch of Complainant’s service under the FEDLINE ADVANTAGE mark.

On the same day as the New York Post article was published, Respondent registered the Domain Name <fedlineadvantage.com>. The Domain Name currently redirects to Respondent’s “www.plannedchildhood.org” site, which contains political and social content.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that its extensive use and promotion of its FEDLINE mark has caused the FEDLINE mark to become well-known in association with Complainant. Complainant further alleges that the Domain Name is identical to Complainant’s mark, FEDLINE ADVANTAGE, for which an application for federal trademark registration is pending.

Complainant argues that Respondent registered and uses the Domain Name in bad faith, with the intent to exploit Complainant’s goodwill and redirect users to a website espousing Complainant’s political and social views. Complainant further argues that at least four previous Administrative Panel decisions against Respondent for similar actions shows a pattern of Respondent’s bad faith.

B. Respondent

Respondent has not filed a response and thus has not contested the allegations of the Complainant.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

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

(ii) that Respondent has no legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith.

A. Similarity of the Domain Name to Complainant’s Trademarks

Complainant has rights in the FEDLINE trademark, for which it holds United States trademark registrations. The Domain Name is similar to Complainant’s FEDLINE mark, in that the Domain Name uses that mark in its totality. Respondent’s use of another word, the commonly used term ADVANTAGE, in the Domain Name does not eliminate the similarity of the Domain Name to Complainant’s FEDLINE mark. See, e.g., Microsoft Corp. v. Stop2Shop a/k/a Gene Vozzola, WIPO Case No. D2004-0510 (October 29, 2004), and cases cited therein.

Further, Complainant’s announcements of its planned use of the mark FEDLINE ADVANTAGE, the New York Post article referencing the mark, and Complainant’s reservation of rights in the FEDLINE ADVANTAGE mark through its trademark filing, gave Complainant an interest in the FEDLINE ADVANTAGE mark that arose prior to Respondent’s registration of the Domain Name. The Domain Name is identical to Complainant’s prior rights in this mark.

Thus, the Administrative Panel holds that the Domain Name is confusingly similar to Complainant’s FEDLINE and FEDLINE ADVANTAGE marks.

B. No Legitimate Interests

There is no evidence in the record of any rights or legitimate interest of Respondent in the FEDLINE ADVANTAGE mark included in the Domain Name, such as Respondent’s use of a corresponding name to offer goods or services; Respondent being known by a corresponding name; or Respondent making a legitimate noncommercial or fair use of the Domain Name.

Respondent had the opportunity to respond to the Complaint. Therefore, the Administrative Panel may conclude from Respondent’s failure to respond and provide contrary evidence that no evidence of any rights or legitimate interest of Respondent in the FEDLINE ADVANTAGE mark exists. See, e.g., Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000) (“It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts.”). Thus, the Administrative Panel holds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registration and Use in Bad Faith

The timing of Respondent’s registration of the Domain Name suggests that it was made with full awareness of Complainant’s impending use of the FEDLINE ADVANTAGE mark and in an attempt to capitalize on the publicity surrounding the announcement of planned use of the mark. Complainant filed an application to register the mark FEDLINE ADVANTAGE with the United States Patent and Trademark Office on April 27, 2004. In May and June 2004, Complainant publicized the impending launch of its service under the FEDLINE ADVANTAGE mark in its Fedfocus newsletter. On August 15, 2004, the New York Post published an article that included a discussion of the impending launch of Complainant’s services under the FEDLINE ADVANTAGE mark. On the same day as the New York Post article was published, Respondent registered the Domain Name. This timing, absent any evidence to the contrary from Respondent, is evidence of bad faith.

Respondent uses the Domain Name to redirect web users to a website posting a political and social message. “[A]s many other Panels have found, the misdirection of Internet users seeking Complainant’s website to a highly charged political website involves Complainant in a political debate in which it has no part” and tarnishes Complainant’s mark. PRIMEDIA Special Interest Publications Inc. v. Anti-Globalization Domains, WIPO Case No. D2003-0869 (December 31, 2003). Respondent’s use of Complainant’s marks to cause web users seeking Complainant’s services to receive an unexpected political and social message is further evidence of bad faith.

Respondent has registered at least four Domain Names incorporating trademark rights or names of others, at least one after widespread publicity of such mark, and used those Domain Names, as here, to redirect web users to a website posting a political and social message. See Douglas Forrester v. Chris Hoffman d/b/a Planned Childhood, Inc., Case No. FA 170664 (NAF September 3, 2003). Respondent’s registration of the Domain Name is in bad faith as defined by Section 4(b)(ii) of the Policy, which states that bad faith exists when “you 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”.

Thus, the Administrative Panel finds that Respondent registered and uses the Domain Name in bad faith.

 

7. Decision

Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel requires that the Domain Name <fedlineadvantage.com> registered by Respondent, Chris Hoffman, be transferred to Complainant, Federal Reserve Banks.

 


Carol Anne Been
Presiding Panelist

Jeffrey M. Samuels
Panelist


R. Eric Gaum
Panelist

 

Dated: January 18, 2005

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0918.html

 

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