The Complainants are American Funds Distributors, Inc., and The Capital Group Companies, Inc. of Los Angeles, California, United States of America, represented by Latham & Watkins LLP, United States of America.
The Respondent is Eunice May of Hong Kong, SAR of the People’s Republic of China, represented by PPX International, Inc., Hong Kong, SAR of the People’s Republic of China.
The disputed domain name <americanfund.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2011. On February 24, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 24, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2011. The Respondent did not submit any timely response. Accordingly, the Center notified the Respondent’s default on March 29, 2011.
The Center appointed Keith Gymer as the sole panelist in this matter on April 5, 2011. 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. Following the Panel’s appointment, communications were received from the Respondent’s representative, but no substantive submissions were made and the Panel has proceeded to take its decision.
The Lead Complainant American Funds Distributors, Inc., is a California corporation which is a subsidiary owned by The Capital Group Companies, Inc., which a Delaware registered corporation. The Complainants provide investment management services, particularly in relation to mutual funds in the United States. The Capital Group Companies, Inc., has been providing such services since 1931. The Complainants have used the name and mark AMERICAN FUNDS in relation to their services.
The Lead Complainant is the registered proprietor of various US Federal Trademark registrations for marks incorporating the elements “AMERICAN FUNDS”. These include US Reg. No. 2,627,929 for AMERICAN FUNDS – filed on July 6, 2001 and registered on October 1, 2002, with a claimed first use date of February 1970. The earliest cited registration is US Reg. No. 1,582,924 for the mark AMERICAN FUNDSLINE – filed on May 22, 1989 and registered on February 13, 1990 with a claimed first use date of May 1987.
The Capital Group Companies, Inc., is the registrant of various domain names incorporating the element “americanfunds”, including <americanfunds.com>, dating from February 1995. The Complainants operate a website at “www.americanfunds.com” which provides information regarding their current services.
The disputed domain name <americanfund.com> is registered to the Respondent at an address in Hong Kong, SAR of China, and was created, according to the WhoIs record, on February 23, 1999.
The Complainants made submissions as follows (in edited form) supported by 28 annexes, principally comprising details of trademark and domain name registrations and copies of earlier UDRP decisions:
“The domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights”
The Complainants Have Rights in the AMERICAN FUNDS Trademark - Complainant Capital Group has been managing investors’ assets since 1931, and is one of the worlds most successful and experienced investment management organizations. American Funds Distributors is a subsidiary of Capital Group, and offers the American Funds, one of the three largest mutual fund families in the United States, with assets under management of more than USD 900 billion. Maintaining the high level of quality performance and service for which American Funds is known has been critical to the Complainants’ success and is essential to their continued success. Through extensive use and advertising of its mutual fund products, American Funds Distributors’ AMERICAN FUNDS marks have developed a very strong reputation among consumers as being associated with a highly-respected and successful investment company. The Complainants own 22 United States trademark registrations for marks consisting of or containing the term “AMERICAN FUNDS,” including the following registrations:
Mark | U.S. Reg. No./App. No. | Class/Goods/Services | Indicated First Use Date | Registration Date |
|
AMERICAN FUNDS |
2,627,929 |
Class 36: financial services |
February 1970 |
Oct. 1, 2002 |
Mark | U.S. Reg. No./App. No. | Class/Goods/Services | Indicated First Use Date | Registration Date |
|
AMERICAN FUNDS DISTRIBUTORS |
3,417,419 |
Class 36: financial services |
April 1950 |
April 29, 2008 |
|
AMERICAN FUNDS INSTITUTIONAL GROUP |
3,183,222 |
Class 36: financial analysis and consultation |
December 2003 |
Dec. 12, 2006 |
|
AMERICAN FUNDS PORTFOLIO PLANNER |
3,279,516 |
Class 36: financial services |
October 2005 |
Aug. 14, 2007 |
|
AMERICAN FUNDS HYPOTHETICALS |
3,264,149 |
Class 36: financial services |
July 2007 |
July 17, 2007 |
|
AMERICAN FUNDS TARGET DATE RETIREMENT SERIES |
3,279,248 |
Class 36: financial services |
August 2007 |
Aug. 14, 2007 |
|
AMERICAN FUNDS INSURANCE SERIES |
2,441,920 |
Class 36: financial services |
April 2001 |
April 10, 2001 |
|
AMERICAN FUNDSLINE |
1,582,924 |
Class 36: mutual fund information services |
May 1987 |
Feb. 13, 1990 |
|
AMERICAN FUNDS MONEY MARKET FUND |
3,774,096 |
Class 36: financial services |
May 2009 |
April 13, 2010 |
|
AMERICAN FUNDS SERVICE COMPANY |
3,417,421 |
Class 36: financial services |
Oct. 1968 |
April 29, 2008 |
In addition to owning the above-referenced United States trademark registrations, the Complainants have also established common law rights to the AMERICAN FUNDS marks through extensive use and promotion of those marks since at least as early as February 1970. The AMERICAN FUNDS marks are well-known and famous throughout the United States and internationally and impart substantial goodwill to the Complainants.
The Complainants have also registered various domain names to promote their financial and retirement products and related businesses, including under the AMERICAN FUNDS marks. For instance, the Complainants (and their subsidiaries and affiliates) have registered 149 domain names that consist of or contain the AMERICAN FUNDS mark, including the following names:
|
<americanfunds.com> |
<americanfunds.net> |
|
<americanfunds.org> |
<americanfunds.info> |
|
<americanfunds.biz> |
<americanfunds.us> |
|
<americanfundsretirement.com> |
<myamericanfunds.com> |
The disputed domain name <americanfund.com> consists entirely of the Complainants’ AMERICAN FUNDS registered trademark minus the letter “s” at the end of the domain name. There can be no dispute that the <americanfund.com> domain name registered by the Respondent is identical to the Complainants’ AMERICAN FUNDS trademark in all material respects and that there is an obvious likelihood of confusion between the Respondent’s domain name and the Complainants’ registered trademarks.
The mere removal of the letter “s” is not enough to avoid confusion, and appears to be mere typosquatting. Typosquatting is a practice by which “a registrant deliberately introduces slight deviations into famous marks” for commercial gain. Here, the Respondent’s domain name is a slight variation of the Complainant’s famous AMERICAN FUNDS trademark – differing only in the removal of the letter “s.” The Respondent’s typosquatting, by definition, renders the disputed domain name confusingly similar to the Complainants’ mark.
“Respondent has no rights or legitimate interests in the domain name”
Neither the Respondent’s name nor its administrative and technical contact information reveal any right or legitimate interest in any variation of the Complainants’ famous AMERICAN FUNDS trademark. Indeed, the Respondent has no “legitimate right or interest” in the Complainants’ famous AMERICAN FUNDS trademark. Nor have the Complainants ever licensed or otherwise permitted the Respondent to use their AMERICAN FUNDS trademark, or to register any domain name including the AMERICAN FUNDS trademark. There is no relationship between the parties. The Respondent registered the <americanfund.com> domain name without the authorization, knowledge, or consent of the Complainants. Moreover, the website operated by the Respondent at the disputed <americanfund.com> domain name contains numerous sponsored commercial links to financial and retirement planning websites of the Complainants’ competitors, including TD Ameritrade and Vanguard. These links are conclusive evidence of the Respondent’s efforts to confuse consumers and trade off of the Complainants’ famous AMERICAN FUNDS trademarks by misleadingly diverting confused consumers to sponsored links that create revenue for the Respondent.
For all of these reasons, it is clear that the Respondent has no right or legitimate interest in the disputed domain name.
“The domain name was registered and is being used in bad faith”
UDRP Policy para. 4(b) enumerates four circumstances where bad faith in the registration and use of a domain name “shall” be found, including when the domain name was registered and is being used to “intentionally attempt[] to attract, for commercial gain, Internet users to [the] 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 [the] web site or location or of a product or service on [the] web site or location.” This circumstance is found in the present case. Accordingly, the Respondent’s registration and use of the <americanfund.com> domain name constitutes “bad faith” under the terms of the UDRP Policy.
First, the Respondent’s registration of the < americanfund.com> domain name was in bad faith. The Respondent has no legitimate rights or interests in the domain name, as discussed above. This sharply contrasts with the strong reputation and fame of the Complainants’ AMERICAN FUNDS trademark, of which the Respondent has constructive knowledge due to the Complainants’ trademark registrations and long-term use in the market. See eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (respondent had “substantial” constructive knowledge of complainant’s trademarks given long- term use and registrations). Actual or constructive knowledge of the Complainants’ trademark rights supports a finding of bad faith registration. Id.
Second, the Respondent’s use of the domain name is in bad faith, as it attempts to cause confusion among consumers looking for the well-known AMERICAN FUNDS mutual fund who inadvertently omit the last letter of the name. This is one of the quintessential examples of bad faith, as introducing slight deviations into a registered trademark is considered to be “typosquatting.” It is well-settled that the practice of typosquatting, in and of itself, is evidence of the bad faith registration of a domain name. See, e.g., Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568 (“Typosquatting is virtually per se registration and use in bad faith.”). The Respondent exacerbates the confusion caused by its blatant typosquatting by using the domain as a portal website containing, among others, links to sites related to mutual funds, and to the Complainants’ competitors. The Respondent’s registration and use of the <americanfund.com> domain name is thus an attempt to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a clear likelihood of confusion with the Complainants’ AMERICAN FUNDS mark as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website and products and services offered therein. See Policy, para. 4(b)(4). There is thus no question that the Respondent is using the disputed domain name for the purpose of creating confusion among consumers who are looking for the Complainants’ well-respected financial company and investment products and thereby reaping commercial gain via revenue paid by the sponsors of the links on the site. The Respondent’s use of the disputed domain name to cause confusion for its own profit constitutes bad faith under paragraph 4(b) of the Policy and under WIPO UDRP decisions.
The Complainants ask for the disputed domain name to be transferred to the Lead Complainant.
The Respondent did not reply in timely or substantive fashion to the Complainant’s contentions.
In order for the Panel to decide to grant the remedy of transfer of a domain name to the Complainants under the Policy it is necessary that the Complainants must prove, as required by paragraph 4(a) of the Policy, that
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainants of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate.”
Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
The disputed domain name is <americanfund.com>.
The Lead Complainant has demonstrated that it has registered US trademark rights, at least from 2002, in the service mark AMERICAN FUNDS per se.
The generic domain suffix “.com” is not relevant for the purposes of comparison.
The disputed domain name differs from the Lead Complainant’s mark only by omission of the terminal “s”.
For the purposes of comparison with the mark in which the Complainant(s) have rights, the Panel accepts that this difference is minimal, and that the disputed domain name may be considered identical or confusingly similar to a trademark in which the Complainants have rights, and the requirements of paragraph 4(a)(i) of the Policy are met.
Under paragraph 4(c) of the Policy, any of the following circumstances, (but without limitation), if shown, would serve to demonstrate the Respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the Respondent of the dispute, 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has made no response to the Complainant’s submissions and provided no justification for any claims to relevant rights of her own.
The Complainants have pointed out that they have not authorized the Respondent to use the AMERICAN FUNDS trademark, and have asserted that the fact that the Respondent’s website at “www.americanfund.com” includes apparently sponsored links to various competitors and other financial planning sites are “conclusive evidence of the Respondent’s efforts to confuse consumers and trade off the Complainants’ famous AMERICAN FUNDS trademarks…”.
The Panel is prepared to accept that none of the specific examples given under paragraph 4(c) of the Policy is directly applicable in this case. It is also acknowledged that the absence of rights or legitimate interests is frequently imputed, in circumstances where a domain name is used for a website which appears to comprise automatically generated search results, apparently based on terms relevant to a complainant’s trademark and field of business.
However, in the Panel’s view, more caution must be exercised in situations where a domain name may itself be perceived as highly descriptive, and potentially capable of legitimate, generic use, notwithstanding the existence of a complainant’s proprietary rights in a very closely similar name or mark.
The Panel considers this Complaint relates to such a situation. It is plainly conceivable that an investor, whether outside or inside the U.S., could legitimately be offered, or ask for, investment advice relating to an “American fund” or to “American funds”, being descriptive references to funds managed in or investing in America.
It may be that this is not and was not the intention of the Respondent but, for the reasons more fully explained in Section C below, the Panel believes that the Complaint is not supported by sufficient evidence to exclude the possibility.
The Panel therefore holds the question whether the Respondent has no rights or legitimate interests in respect of the disputed domain name, to be moot and unnecessary to determine in this case.
Under paragraph 4(b) of the Policy, the following are examples of the sort of conduct (without limitation) which, if found, shall be considered as evidence of registration and use in bad faith:
“(ii) [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 [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”
The Complainants have asserted that the circumstances of paragraph 4(b)(iv) of the Policy, in particular, are to be found in the present case. They claim that the Respondent must be held to have constructive knowledge of the Complainants’ rights “due to Complainants’ trademark registrations and long-term use in the market”, and seek to rely on the decision in earlier UDRP Decision eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633.
However, in the Panel’s opinion, there is a glaring detail, which the Complainants have blithely failed to address in their assertions and in their evidence. That is that the disputed domain name was actually registered (first created, according to the WhoIs information) in February 1999, before any of the Complainants’ cited trademarks was actually registered or even applied for – with the sole exception of US Reg. No. 1,582,924 for AMERICAN FUNDSLINE. No evidence has been presented to the Panel to raise any doubts that the present registrant and Respondent in these proceedings was not the original registrant at that time of initial domain name registration. The Complainant has simply not addressed the issue. The Panel therefore has no reason not to accept that the Respondent and current registrant of the domain name was also the original registrant when the domain name was first created back in 1999.
The Complainants have claimed that the AMERICAN FUNDS name and mark “are well-known and famous throughout the United States and internationally” and that the Complainants have “established common law rights … through extensive use and promotion … since at least as early as 1970”, but the Complaint does not include any evidence to support the claimed nature and extent of this fame, nor of the common-law rights and goodwill, which the Complainants say have been imparted by such extensive use.
The Respondent is based in Hong Kong, SAR of China, which is itself a notable financial center. The Complainants have not shown any objective evidence of rights there – or anywhere else outside the United States. The Complainants only obtained objectively identifiable (i.e. registered) rights in AMERICAN FUNDS per se after the disputed domain name had been registered, and then again only in the United States. As noted in Section B above, the words “American fund” and “American funds” may also clearly be legitimately used in a generic, descriptive sense – and a simple Google search for “American Fund”, for example, reveals that indeed there are other financial businesses who refer to an “American Fund” or “American Funds” in such terms. The situation in the present dispute is clearly not comparable to eBay Inc. v. Sunho Hong, supra, where the highly distinctive mark EBAY was at issue and the complainant itself had relevant registered rights in South Korea.
On the evidence provided, therefore, the Panel does not consider that the Complainants have demonstrated that the Respondent must necessarily have registered the disputed domain name in bad faith in February 1999.
The Complainants did register their domain name <americanfunds.com> in 1995, before the disputed domain name was registered, but no evidence has been submitted as to when the Complainants own domain name was first being used for a website.
They also assert that the disputed domain name is objectionable as “typosquatting”, and that this, “in and of itself is evidence of the bad faith registration of a domain name”, following an earlier UDRP decision Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568. “Typosquatting” was not unknown in 1999, but if the disputed domain name was registered as a “typosquat” in 1999, that begs the question of why the Complainants have taken 12 years to crystallize their allegations in the present Complaint. The Complainants have only provided evidence of the nature of the current website at “www.americanfund.com”, with no indication of when this first appeared, or when they first became aware of this website or even of the disputed domain name itself. Further, the situation in this case is by no means close to that in Go Daddy Software, Inc. v. Daniel Hadani, supra, where the “typos” – “f” for “g” and “i” or “p” for “o” on the keyboard were obvious, and the disputed domain names had no obvious alternative legitimate purposes. The difference between “American Funds” and “American Fund” may be only one letter, but both are meaningful and capable of legitimate generic use as explained previously. The Panel does not accept the Complainants assertion that the use of <americanfund.com>, as it is now, should be characterized as “blatant typosquatting” and that the disputed domain name must therefore also have been registered – 12 years ago – in bad faith.
In the Panel’s view, at this remove, and with the lack of evidence in the Complaint as to all the circumstances as they were in 1999 (e.g. nature and extent of Complainants’ then uses; nature of use by Respondent of the disputed domain name then, and in the intervening period since), it is not possible to conclude, with sufficient confidence, that the disputed domain name was originally registered in bad faith (even if it were to be considered now to be used in a way which might be objectionable).
The Panel finds that the Complainants have not demonstrated that the disputed domain name was originally registered in bad faith and the Panel therefore concludes that the corresponding requirement of paragraph 4(a)(iii) of the Policy is not met. (In the light of this finding, the Panel does not need to proceed with any holding regarding the current use of the disputed domain name.)
For all the foregoing reasons, the Complaint is denied.
Keith Gymer
Sole Panelist
Dated: April 25, 2011