WIPO Domain Name Decision: D2006-1607

Franklin Resources, Inc., Franklin Advisers, Inc., Templeton Asset Management Ltd. v. Franklin Fund Group

The Complainants are Franklin Resources, Inc., of San Mateo, California, United States of America, Franklin Advisers, Inc., and Templeton Asset Management Ltd., represented by M. Scott Donahey, United States of America.

The Respondent is Franklin Fund Group, Pasadena, California, United States of America.

The disputed domain name <franklinfundgroup.com> is registered with Wild West Domains, Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2006. On December 19, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On December 20, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on January 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2007.

The Center appointed Jeffrey H. Kaufman as the sole panelist in this matter on February 26, 2007. 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.

Complainant Franklin Resources, Inc. is the parent company of Complainants Franklin Advisers, Inc. and Templeton Asset Management Ltd. (hereinafter collectively and severally referred to as “Complainants”.)

Complainant Franklin Resources, Inc. is the owner of the following U.S. trademark registrations:

a. Registration No. 1,607,629 for the mark FRANKLIN, with a registration date of July 24, 1990, and a first use date of 1947;

b. Registration No. 2,576,903, for a design of the head of Benjamin Franklin (BEN HEAD DESIGN), with a registration date of June 11, 2002, and a first use date of 1958;

c. Registration No. 2,857,953, for the mark FRANKLIN TEMPLETON INVESTMENTS (& BEN HEAD DESIGN), with a registration date of June 29, 2004, and a first use date of 2000.

Complainant Franklin Advisers, Inc. is the owner of Registration No. 1,545,628 for FRANKLIN PARTNERS FUNDS, with a registration date of June 27, 1989, and a first use date of 1987.

Complainant Templeton Asset Management Ltd. is the owner of numerous trademark registrations in China, including the BEN HEAD design, FRANKLIN, the Chinese characters for FRANKLIN, and FRANKLIN MUTUAL SERIES, among others.

In addition to the marks identified above, the Complainants have used the mark THE FRANKLIN GROUP OF FUNDS in connection with investment funds offered by Complainants to the general public. The Complainants have used this mark continuously since 1947.

The Respondent is not a licensee of the Complainants, nor is it otherwise authorized by the Complainant to use any of Complainants’ marks.

The Respondent uses the domain name at issue to link to a website that features prominently a modified version of the Complainant’s BEN HEAD DESIGN mark and includes the caption FRANKLIN FUND GROUP. The website purports to offer financial and investment services directly competitive with those offered by the Complainants.

The UDRP Policy requires Complainants to prove each of the following three elements in order to prevail in this proceeding:

1) the domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

2) the Respondent has no rights or legitimate interests in respect of the domain name; and

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to undertake reasonable efforts to provide actual notice of the Complaint to the Respondent. The Panel finds that the Respondent has been given a fair opportunity to present its case, and, as no Response was filed, the Panel will proceed to a decision on the Complaint. UDRP Rules paragraph 4(a).

The Panel may decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. UDRP Rules paragraph 15(a). As the Respondent has defaulted, the Panel shall draw such inferences therefrom as it considers appropriate. UDRP Rules paragraph 14(b). The Respondent’s default does not automatically result in a decision in favor of the Complainant: the Complainant must still prove each of the three elements required by Policy paragraph 4(a).

The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:

i) Before any notice to you of the dispute, your 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) You, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

iii) You are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The Complainants claim trademark rights since 1947 in the marks FRANKLIN and THE FRANKLIN GROUP OF FUNDS, among other FRANKLIN marks. The domain name <franklinfundgroup.com> is confusingly similar to the Complainants’ marks FRANKLIN and THE FRANKLIN GROUP OF FUNDS. The addition of words such as “fund” and “group” does nothing to avoid the confusing similarity.

The Respondent did not file a Response to this Complaint. In view of the Complainants’ rights to their marks dating back to well before the Respondent’s registration of the domain name, the nature of the Respondent’s website, and Complainants’ representation that they have not authorized the Respondent to register the domain name, the Panel finds that the Complainants have established prima facie that the Respondent lacks rights or legitimate interests in the domain name. As the Respondent has failed to come forward with any assertions of legitimate interest or other rights to the domain name, the Panel finds that the Complainants have met this element of the Policy.

In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interest in the domain name, such as use or preparation to use the domain name prior to notice of the dispute, being commonly known by the domain name, or making legitimate noncommercial or fair use of the domain name.

It is not sufficient to prevail that the Complainants prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, WIPO Case No. D99-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.

However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

i) Circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

ii) [the Registrant 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 Registrant has] engaged in a pattern of such conduct; or

iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location.

UDRP Policy, Paragraph 4(b). These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. (Id.)

The Respondent’s registration of the domain name <franklinfundgroup.com> in 2000, some 50 years after Complainants began using their FRANKLIN marks, and the Respondent’s use of the domain name for a website allegedly offering services in direct competition to the Complainants, are evidence of the Respondent’s registration and use of the domain name in bad faith. UDRP Policy paragraph 4(b)(iv). The Respondent’s use of a design similar to the Complainants’ BEN HEAD DESIGN mark on its website is further evidence of the Respondent’s bad faith. The Panel finds that Complainants have established the Respondent’s bad faith use and registration of the domain name.

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 <franklinfundgroup.com> be transferred to the Complainant Franklin Resources, Inc.