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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

First Manhattan Co. v. Cynergy Data

Case No. D2011-1019

1. The Parties

The Complainant is First Manhattan Co. of New York, New York, United States of America, represented by Lathrop & Gage L.L.P., United States of America.

The Respondent is Cynergy Data of Midvale, Utah, United States of America.

2. The Domain Name and Registrar

The disputed domain name <firstmanhattan.net> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2011. On June 16, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On June 16, 2011, Network Solutions, LLC 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 disputed domain name.

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 June 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2011.

The Center appointed a panelist in this matter on August 1, 2011. On August 3, 2011, the Panelist disclosed that he was unable to render a decision for this matter and on August 8, 2011, Richard Hill was appointed as the sole panelist. 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

The Complainant has registered trademarks for FIRST MANAHATTAN (“Mark”). That Mark is used extensively to promote a variety of products and services in the financial services sector.

The Complainant has not licensed or otherwise given permission to the Respondent to use its Mark.

The Respondent has used the disputed domain name to point to a web site containing links to products and services that directly compete with those of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it adopted the service mark FIRST MANHATTAN in 1964, and has used it ever since to promote its business in the field of investment management and securities brokerage and dealing. The Complainant is registered with the Securities Exchange Commission. It owns a registered United States (“U.S.”) Trademark for FIRST MANHATTAN and promotes its products and services under that Mark and at its website “www.firstmanhattan.com”. The Complainant’s activities, and its Mark, are well known throughout the United States.

According to the Complainant, it has not given permission to the Respondent to use its Mark in any manner whatsoever.

The Complainant states that the Respondent has used the disputed domain name to point to a website that featured the Complainant’s Mark prominently on the home page and other pages, together with descriptions such as “Global Wealth Management Group”, “Master Originator of Wealth” and “Great Communicator of Money.” According to its website, at the disputed domain name, the Respondent was “a leading commercial and finance company”, “one of the industry leaders in providing flexible consumer based financing programs”, etc. The disputed domain name has pointed to a website offering business consulting and planning.

According to the Complainant, the disputed domain name is identical to its Mark because it consists of the Mark followed by the gTLD “.net”.

The Complainant alleges that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services: on the contrary, the Respondent is relying on consumers’ recognition of the Complainant’s Mark to attract customers to the Respondent’s website. The unauthorized appropriation of another’s trademark in a domain name cannot confer rights or legitimate interests.

Further, says the Complainant, there are no other grounds under which the Respondent could claim to have rights or legitimate interests in the disputed domain name.

According to the Complainant, the Respondent is trading on the Complainant’s goodwill by using the disputed domain name to offer and promote its own service in competition with the Complainant, thus creating consumer confusion by diverting consumers to the Respondent’s website. That is, the Respondent has knowingly attempted to attract and to divert Internet users to its website for financial gain by intentionally creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the services offered or promoted through that website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s Mark with the addition of the gTLD suffix “.net”. It is therefore clear to the Panel that the disputed domain name is identical to the Complainant’s Mark.

B. Rights or Legitimate Interests

The Respondent has used the disputed domain name to operate a web site that contained links to products and services that compete with the Complainant. Given the confusing similarity in the names, and the fact that the disputed domain name is not a common, generic term, such use does not constitute a bona fide offering of goods or services under Policy, paragraph 4(c)(i), or a legitimate noncommercial or fair use under Policy, paragraph 4(c)(iii). See America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; see also Hoffmann-La Roche, Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.

Further, the Complainant’s Marks are well-known and it is difficult to conceive of any legitimate use of the disputed domain name in the circumstances. See Frampton v. Framton Enterprises, Inc., WIPO Case No. D2002-0141 (“The Panel believes that the Respondent has yet to provide any basis that would legitimize any claim it has to the contested domain name. In fact, it is extremely unlikely that the Respondent can even make such a claim. The simple reason is that the contested domain name includes the Complainant’s PETER FRAMPTON mark under which the Complainant provides his services and has been doing so for over 30 years.”)

The Panel finds that the Complainant has established its burden of proving this element of the Policy.

C. Registered and Used in Bad Faith

The Respondent has used the disputed domain name to operate a website that provides links to products and services that compete with the Complainant’s business. The Respondent is profiting from such use. Such use constitutes a disruption of the Complainant’s business and is therefore evidence of bad faith registration and use pursuant to Policy, paragraph 4(b)(iii). See Southern Exposure v. Southern Exposure, Inc., NAF Claim No. FA 94864 (finding the respondent acted in bad faith by attracting Internet users to a web site that competes with the complainant’s business); EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368 (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; see also Lacoste Alligator S.A. v. Wang Liming, WIPO Case No. D2009-0559 (“The Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to fact.”).

The Panel finds that the Complainant has established its burden of proving this element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <firstmanhattan.net> be transferred to the Complainant.

Richard Hill
Sole Panelist
Dated: August 10, 2011

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