Alpine Banks of
Claim Number: FA0801001140408
Complainant is Alpine Banks of Colorado (“Complainant”), represented by Miriam
Trudell, of Sheridan Ross P.C., of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <alpinebankingcorp.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 28, 2008.
On January 26, 2008, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <alpinebankingcorp.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.com 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 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 2008 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@alpinebankingcorp.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 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
This Complaint is based on the following factual and legal
grounds: ICANN Rule 3(b)(ix).
[a.] The first element that must be proven in a UDRP is that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i). Complainant proves this first element, as follows.
The domain name alpinebankingcorp.com is virtually identical and/or confusingly similar to the service marks “ALPINE BANK”, “ALPINE BANK and Design”, “ALPINE E-LINE”, “ALPINE ANYTIME”, “ALPINE ACCESS”, “ALPINE PAYMENT EXPRESS”, “ALPINE FAX”, and “ALPINE ONLINE” in which the Complainant has rights under ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i). As will be discussed below, with regard to Complainant’s marks “ALPINE BANK” and “ALPINE BANK and Design”, the domain name incorporates the entire written, literal portion of the marks, with the addition of the suffix “ing”, the entity identifier “corp,” and the top level domain (TLD) “.com”, none of which distinguish the domain name from Complainant’s registered service mark. With regard to Complainant’s marks “ALPINE E-LINE”, “ALPINE ANYTIME”, “ALPINE ACCESS”, “ALPINE PAYMENT EXPRESS”, “ALPINE FAX”, and “ALPINE ONLINE”, the domain name incorporates the dominant feature of Complainant’s marks.
With regard to the marks “ALPINE BANK” and “ALPINE BANK and Design”, the domain name is virtually identical to these registered marks because it contains the identical dominant term ALPINE, plus the descriptive term “banking,” a derivate of the term BANK in Complainant’s marks. The addition of the “ing” after BANK is not significant because it is a simple modification of the term BANK and the domain name creates the same impression as the registered marks. See Ace Cash Express, Inc. v. Marketing Total S.A. FA0710001097327 (Nat. Arb. Forum Dec. 10, 2007) (finding acecheckcashin.com is confusingly similar to the Complainant’s mark “ACE CASH EXPRESS”) and Citizens Financial Group, Inc. v. Domain Park Limited, FA0709001082415 (Nat. Arb. Forum Nov. 9, 2007) (finding that the citizenbankonlinebanking.com is confusing similar to the registered trademark “CITIZENS BANK ONLINE”). Further, the addition of the entity designator “corp” does not distinguish the domain name from the registered marks. See VeriSign, Inc. v. Dong-Soo Kim, FA0609000805013 (Nat. Arb. Forum Nov. 14, 2006) (finding that Respondent’s addition of “corp” does not distinguish the domain name verisigncorp.com from Complainant’s mark “VERISIGN”).
The lack of existence of the design element in the domain name also does not differentiate the domain name from Complainant's registered mark because logos cannot be represented in domain names. See Caterpillar Inc. v. Quin, D2000-0314 (WIPO Jun. 12, 2000) (finding that the domain names caterpillarparts.com and caterpillarspares.com were confusingly similar to the registered trademarks CATERPILLAR and “CATERPILLAR and Design” because the disputed domain names contained one distinct component, the word CATERPILLAR). Accordingly, the addition of the “ing” to the term BANK, the addition of the entity designator “corp,” and the lack of the representation of the design element in "ALPINE BANK and Design" in Respondent’s domain name “alpinebankingcorp.com” does not differentiate Complainant’s marks and the domain name in any meaningful way.
With regard to Complainant’s marks “ALPINE E-LINE”, “ALPINE ANYTIME”, “ALPINE ACCESS”, “ALPINE PAYMENT EXPRESS”, “ALPINE FAX”, and “ALPINE ONLINE” as compared to alpinebankingcorp.com, the domain name is confusingly similar to these marks because it incorporates the dominant portion of the mark and adds the descriptive terms “banking” and “corp.” The dominant portion of Complainant’s marks is the term ALPINE, because this word appears first and the terms following the mark ALPINE are either descriptive of or reference Complainant’s services. Since “banking” is descriptive, if not generic, for Complainant’s business, and “corp” is a mere entity designation, Respondent’s addition of these terms, along with the mere omission of descriptive terms, does not negate confusing similarity between the domain name and Complainant’s marks. See Citizens Financial Group, Inc. v. Domain Park Limited, FA0709001082415 (Nat. Arb. Forum Nov. 9, 2007) (finding that the citizenbankonlinebanking.com is confusing similar to the registered trademark “CITIZENS BANK ONLINE”); see also Ace Cash Express, Inc. v. Marketing Total S.A. FA0710001097327 (Nat. Arb. Forum Dec. 10, 2007) (finding acecheckcashin.com is confusingly similar to the Complainant’s mark “ACE CASH EXPRESS”); see also VeriSign, Inc. v. Dong-Soo Kim, FA0609000805013 (Nat. Arb. Forum Nov. 14, 2006) (finding that Respondent’s addition of “corp” does not distinguish the domain name verisigncorp.com from Complainant’s mark “VERISIGN”).
Finally, “[t]he addition of a top-level domain adds no distinct characteristics because top-level domains are a required feature of every domain name.” Daddy’s Junky Music Stores, Inc. v. Amjad Kausar, FA0301000140598 (Nat. Arb. Forum Feb. 11, 2003). See also Pomellato S.p.A. v. Tonnetti, D2000-0493 (WIPO Jul. 7, 2000) (the generic top-level domain “.com” after the name POMELLATO was found not to be relevant). Accordingly, the addition of “.com” to alpinebankingcorp.com does not add a distinctive characteristic to Respondent’s domain name.
In conclusion, even though the domain name alpinebankingcorp.com contains the suffix “ing” and the descriptive entity designator “corp,” does not include the design element present in “ALPINE BANK and Design” and includes the generic top-level domain “.com,” the domain name alpinebankingcorp.com is virtually identical and/or confusingly similar to Complainant’s registered service marks “ALPINE BANK”, “ALPINE BANK and Design”, “ALPINE E-LINE”, “ALPINE ANYTIME”, “ALPINE ACCESS”, “ALPINE PAYMENT EXPRESS”, “ALPINE FAX”, and “ALPINE ONLINE” and thus meets the first element under ICANN Rule 3(b)(iv)(i); ICANN Policy ¶4(a)(i).
[b.] The second element that must be proven in a UDRP is that the Respondent has no rights or legitimate interests in respect of the domain name that is the subject of this complaint. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii). Complainant proves this second element, as follows.
(i.) Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services, under ICANN Policy ¶4(c)(i).
Respondent is using the domain name alpinebankingcorp.com to misdirect Internet users to a general search engine site, which includes links to and web site advertising for a variety of third-party web sites. The disputed domain name is shown in large letters across the top of the page, and the page contains numerous links, many of which are titled with either Complainant's service mark or banking related terminology such as “Online Bank,” “Colorado Mortgage,” “Chase Bank,” and "bank loans," all of which are unaffiliated with Complainant and appear to be competitors of Complainant.
It is presumed that Respondent is making a commission or pay-per click referral fee via the links listed on the alpinebankingcorp.com site, which is not a bona-fide offering of goods or services under Policy ¶4(c)(i). See Liberty Mutual Insurance Company v. Unasi Inc., FA0508000528455 (Nat. Arb. Forum Sept. 14, 2005) (where Respondent used disputed domain names to divert Internet users to generic search engines and links to various products and services the “Panel presumes that Respondent derives commercial benefit from these diversions due to click-through fees from links on the websites.”); Dell Inc. v. Steve Kerry d/b/a North West Enterprise Inc., FA0605000705267 (Nat. Arb. Forum Jun. 21, 2006) (Panel inferred from evidence of the use of third party links on the disputed web site that “Respondent receives click-through fees for diverting Internet users to websites featuring advertisements for and links to websites offering products that are in direct competition with Complainant.”). In the instant case, Respondent’s use of a domain name confusingly similar to Complainant’s family of ALPINE banking marks to operate a web site that similarly displays links to banking competitors of Complainant for purposes of earning referral fees is likewise not a bona fide offering of goods or services under Policy ¶4(c)(i). See Target Brands, Inc. v. Kentech, Inc. c/o Domain Master, FA0605000697861 (Nat. Arb. Forum Jun. 16, 2006) (“The Panel concludes that use of a confusingly similar domain name to divert Internet users to a website that contains a search engine that consists of sponsorsed [sic] links to competing websites does not amount to a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under to Policy ¶4(c)(iii).”).
(ii.) Respondent is not commonly known by
the domain name pursuant to ICANN Policy ¶4(c)(ii).
The current WHOIS record for the disputed
name indicates that the record was created on November 5, 2007, and the current
registrant for the domain name is listed as “Sishi Chen.” There is nothing in the current WHOIS record
that indicates that Respondent is commonly known by
"ALPINEBANKINGCORP." See
Tercent Inc. v. Lee Yi, FA139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶4(c)(ii) does not apply). In Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA198969 (Nat. Arb. Forum Nov.
17, 2003), involving the domain name welsfargo.com, the Panel indicated that
because the Respondent’s WHOIS contact information for the disputed domain name
was given as “Onlyne Corporate Services11,” it could be inferred that the
Respondent was not commonly known by the name "welsfargo” in any
derivation. Similarly, in the instant case, it can be
assumed that Respondent, whose contact information is listed as “Sishi Chen” is
not commonly known by the name “alpinebankingcorp” or "ALPINE BANK"
in any derivation.
In addition, "merely registering the
domain name is not sufficient to establish rights or legitimate
interests." Vestel Elektronik
Sanayi ve Ticaret AS v. Kahevci,
D2000-1244 (WIPO Nov. 11, 2000).
Complainant further notes that there is no relationship between the
parties giving rise to any license, permission or other right by which the
Respondent could own or use any domain name incorporating Complainant's marks.
Finally, Respondent did not register or commence use of the domain name earlier than Complainant’s use of its service marks or Complainant's federal registration rights in its "ALPINE BANK" and “ALPINE” family of marks. See Familymeds Inc. v. Mohammed Tariq, D2003-0056 (WIPO Mar. 17, 2003) (Respondent may be able to prove it is commonly known by the domain name if Respondent can demonstrate that it commenced use of the domain name canadafamilymeds.com earlier than the Complainant’s use of its similar trademark). The registration date for the domain name was November 5, 2007 (see Exhibit C, the current WHOIS record), well after the Complainant’s January 1, 1983 first use date of its “ALPINE BANK” service mark and well after Complainant's federal registration rights in its "ALPINE BANK" mark, which was filed on February 16, 1988 and registered on June 6, 1989. Even Complainant’s most recent registration for “ALPINE E-LINE” was registered on July 25, 2006, more than a year before Respondent’s registration of the domain name.
(iii.) Respondent is not making a legitimate noncommercial or fair use of the domain name, under ICANN Policy ¶4(c)(iii).
As discussed above, Respondent is attempting
to commercially gain from use of the domain name to misleadingly divert consumers
to the disputed web site for the purpose of profiting from commissions or
advertising profits in the process. Such
conduct does not equate with a legitimate noncommercial or fair use of the
domain name. See Target Brands, Inc. v. Titan Net a/k/a Titan, FA0605000697980 (Nat. Arb. Forum Jun.
20, 2006) (finding use of domain name
targetcoupon.org that was confusingly similar to claimant’s trademark TARGET
and which featured commercial links to third-party web sites from which
Respondent presumably received referral fees to be neither a bona fide offering
of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial
or fair use pursuant to Policy ¶4(c)(iii)).
Because Respondent is not commonly known by the domain name, Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services and Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, Complainant has proven that Respondent has no rights or legitimate interests in respect of the domain name alpinebankingcorp.com under ICANN Policy ¶4(a)(ii).
Finally,
Complainant notes that if the owner of the domain name fails to respond to this
complaint, it is presumed that the owner has no rights or legitimate interests
in the disputed domain name. See Mattel,
Inc. v. RaveClub
[c.] The third element that must be proven in a UDRP is that the domain name has been registered and is being used in bad faith by Respondent. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii). Complainant proves this third element, as follows.
(i). By registering the domain name, Respondent has prevented Complainant from reflecting its service mark in a corresponding domain name. In addition, Respondent has engaged in a pattern of such conduct.
Respondent registered alpinebankingcorp.com to prevent Complainant from reflecting its service mark in a corresponding domain name. Further, Respondent and related parties, have engaged in a pattern of such conduct. First, Complainant would like to point out that the listed owner of the domain name was recently changed. On November 14, 2007, the registrant for the disputed domain name was listed as “Wei Zhang,” having an email address of cd133cd@gmail.com. On November 28, 2007, Complainant sent a cease and desist letter to Wei Zhang, but did not receive a response. Sometime between December 10, 2007 and January 3, 2008, the registrant for the domain name was changed to Sishi Chen, having an email address of cd136cd@gmail.com. The fact that the registrant’s name and contact information were changed following the mailing of a cease and desist letter indicates that Respondent was trying to avoid a UDRP proceeding by changing registrant information. Further, even though the name of the registrant changed, the November 5, 2007 creation date of the domain name remained the same. When a domain name is freely available and registered by a new party, the creation date will become the date of the registration by the new party. However, when a domain name is already registered and the current registrant simply changes the registrant information for the domain name, this indicates that the domain name was not released from registration and registered by a new party, but rather shows that the same entity, using different names, merely changed the contact information, and still remains responsible for the domain name.
The change in registrant information without a change in the
creation date for the WHOIS record provides further evidence that Respondent
was attempting to avoid legal action. See
Tipp 24 AG v. Tipp24 S.A., D2005-1312 (WIPO Feb. 9, 2006) (finding that a
transfer of the domain name from a Mr. Rieder to the Respondent without a
change in the creation date is evidence that the transfer was done solely for
the purposes of avoiding enforcement of a court decision against Mr.
Rieder). Moreover, the first and second
registrants of the domain name share almost the identical email address, (cd133cd@gmail.com v. cd136cd@gmail.com), the only difference
being use of the number 6 instead of 3, which provides further evidence that
the same person is likely behind the registrant changes and is the current
Respondent in this case.
Complainant has compiled evidence of Respondent’s pattern of registration and use of domain names that are confusingly similar to trademarks owned by third parties. They are as follows:
WHOIS record for the lendingtreesite.com domain name, with Sishi Chen listed as the domain name owner, U.S. Patent and Trademark Office web site information regarding U.S. Trademark Registration No. 2886058 for "LENDINGTREE," owned by LendingTree, Inc., and printouts from lendingtreesite.com.
WHOIS record for the bluecrossbuy.com domain name, with Sishi Chen listed as the domain name owner, U.S. Trademark Office web site information regarding U.S. Trademark Registration No. 3288738 for "BLUE CROSS," owned by Blue Cross and Blue Shield Association, and printouts from bluecrossbuy.com.
WHOIS record for the ftdflowerss.net domain name, with Wei Zhang listed as the domain name owner, U.S. Trademark Office web site information regarding U.S. Trademark Registration Nos. 2672801 and 2478658 for "FTD" and “FTD FRESHFLOWERS,” respectively, owned by Florists’ Transworld Delivery, Inc., and printouts from ftdflowerss.net.
WHOIS record for the frontierlinesair.net domain name, with Wei Zhang listed as the domain name owner, U.S. Trademark Office web site information regarding U.S. Trademark Registration No. 2885627 for "FRONTIER AIRLINES," owned by Frontier Airlines, Inc., and printouts from frontierlinesair.net.
WHOIS record for the cingularprepaid.info domain name, with Wei Zhang listed as the domain name owner, U.S. Trademark Office web site information regarding U.S. Trademark Registration No. 2596041 for "CINGULAR," owned by Cingular Wireless II, LLC, and printouts from cingularprepaid.info.
WHOIS record for the jennycraigworld.info domain name, with Wei Zhang listed as the domain name owner, U.S. Trademark Office web site information regarding U.S. Trademark Registration No. 2760695 for "JENNY CRAIG," owned by Jenny Craig, Inc., and printouts from jennycraigworld.info.
This pattern of registration is evidence of bad faith registration and use pursuant to ICANN Policy ¶(b)(ii). Daddy's Junky Music Stores, Inc. v. Amjad Kauser, FA03101000140598 (Nat. Arb. Forum Feb. 11, 2003); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others).
(ii.) Respondent has intentionally attempted to attract Internet users to a confusing web site unrelated to Complainant by creating a likelihood of confusion with the Complainant’ mark as to the source, sponsorship, affiliation or endorsement of the web site or links in the web site.
Upon typing in alpinebankingcorp.com, Internet users are directed to a web site containing a number of links for services that are in the same field as Complainant, the banking field, but are not affiliated with Complainant. Such use is an intentional act to divert Internet users looking for information on Complainant’s financial services to third party web sites unaffiliated with Complainant and creates a likelihood of confusion as to the possible relationship of Complainant’s financial and banking centers to the third party links. See Dell Inc. v. Steve Kerry d/b/a North West Enterprise Inc., FA0605000705267 (Nat. Arb. Forum Jun. 21, 2006) (where Respondent registered domain names incorporating Complainant’s DELL trademark and the resulting web sites featured links to other web sites offering products that were in competition with DELL products, the Panel concluded that “Respondent’s domain names, incorporating the dominant features of Complainant’s marks, are capable of creating confusion as to Complainant’s affiliation with the disputed domain names and resulting websites….[and] the Respondent’s use of the disputed domain names is equivalent to bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Similarly, the Respondent’s domain name alpinebankingcorp.com, which comprises Complainant’s registered service mark for “ALPINE BANK,” as well as the dominant feature of Complainant’s family of ALPINE service marks, and resolves to a web site featuring links to other web sites in competition with Complainant, is evidence of Respondent’s bad faith use and registration of its domain name.
As discussed above, it is presumed that Respondent receives
commissions or referral fees from the links that appear on the site, and the
presumed receipt of such commissions and referral fees is evidence of Respondent’s
bad faith registration and use of the domain name. See Associated Newspapers
Ltd. v. Domain Manager, FA201976 (Nat. Arb. Forum Nov. 19, 2003)
(“Respondent's prior use of the ‘mailonsunday.com’ domain name is evidence of
bad faith pursuant to Policy ¶4(b)(iv) because Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also Hewlett-Packard Company and
Hewlett-Packard Development Company, L.P. v. Bing Glu, FA0605000714965
(Nat. Arb. Forum Jun. 30, 2006) (Respondent’s use of the disputed domain name
for commercial gain is equivalent to bad faith registration and use pursuant to
Policy ¶4(b)(iv)).
In Daddy’s Junky Music Stores, Inc. v. Amjad Kausar, FA0301000140598 (Nat. Arb. Forum Feb. 11, 2003), the Panel inferred that the domain name owner, who was using an infringing domain name to divert Internet users to his own site, was making a profit from the Internet traffic that was being diverted, which was therefore considered evidence of bad faith registration and use of the domain name. Similarly, in Am. Online, Inc. v. Tencent Comm. Corp., FA93668 (Nat. Arb. Forum Mar. 21, 2000), bad faith was found where the domain name owner registered and used an infringing domain name to attract users to a web site sponsored by Respondent. Thus, it can also be inferred in this case that Respondent is making a profit from this Internet traffic, and the registration and use of this domain name should be considered in bad faith.
(iii.) Registration of a domain name that is identical or confusingly similar to a trademark, despite knowledge of the trademark holder’s rights, is evidence of bad faith use and registration under ICANN Policy 4(a)(iii).
"Registration
of a domain name that is confusingly similar to a mark, despite knowledge of
the mark holder's rights, is evidence of bad faith registration pursuant to
Policy ¶4(a)(iii)." Hugh Jackman v. Peter Sun, FA0403000248716
(Nat. Arb. Forum May 10, 2004); see Digi Int'l v. DDI Sys., FA124506
(Nat. Arb. Forum Oct. 24, 2002) ("there is a legal presumption of bad
faith when Respondent reasonably should have been aware of Complainant's
trademarks, actually or constructively.").
In the instant case, the registration of alpinebankingcorp.com was in
bad faith because the Respondent had at least constructive, if not actual,
knowledge of Complainant’s rights in the “ALPINE BANK” and “ALPINE” family of
marks. As shown in the WHOIS record for
the domain name, this name was registered on November 5, 2007. Complainant’s incontestable service mark
registration for "ALPINE BANK” was filed and registered prior to January
1, 1990, more than fifteen years prior to the date the domain was
registered. Further, the first use dates
of most of the Complainant’s ALPINE containing service marks range from
1983-1999, and thus pre-date Respondent’s domain name registration date by at
least eight years. Since there is no
question that the domain name was registered after Complainant's registration
of the eight ALPINE banking marks and well after Complainant’s first use of its
service marks, this is evidence of Respondent's bad faith registration and use
of the domain name. See Printingforless.com v. Printing Source Inc., FA0512000616764
(Nat. Arb. Forum Feb. 8, 2006)
("[T]he Panel finds that Respondent’s registration of the
printing-for-less.com domain name, incorporating Complainant’s mark,
after Complainant’s registration of authority for rights to exist.”).
(iv.) There is evidence that Respondent has
registered or has 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
Respondent’s documented out-of-pocket costs directly related to the domain
name.
The www.alpinebankingcorp.com site provides a link on
both the top and bottom of page to “inquire about this domain.” This link allows the user to place an offer for
the domain name. When there is no
legitimate use of a domain name, the mere fact that a domain name is available
for sale is evidence that the domain name was registered and is being used in
bad faith. See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a
general offer of sale combined with no legitimate use of the domain name
constitutes registration and use in bad faith); see also Diners Club
Int’l Ltd. v. Domain Admin******It’s all in the name******, FA0305000156839 (Nat. Arb. Forum June 23, 2003)
(finding that evidence of registration and use in bad faith may be inferred
when the domain name notes that it is “available for lease or sale,” and “the
sole value of the [www.dinerslub.com]
domain name is dictated by its relation to Complainant’s registered DINERS CLUB
mark”).
Thus, the fact that an offer to purchase this domain
may be made on the alpinebankingcorp.com site is clear evidence that the
disputed domain name was registered and is being used in bad faith pursuant to
ICANN Policy ¶4(b)(i). See Disney
Enterprises, Inc. v. Jimmy Parfait,
FA08000310575 (Nat. Arb. Forum Sept. 20, 2004).
In sum, Complainant has proven that proven that (1) the domain name alpinebankingcorp.com is virtually identical and confusingly similar to registered service marks owned by Complainant; (2) Respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alpine Banks of Colorado, is the owner of a trademark registration for the ALPINE BANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,542,864 June 6, 1989), inter alia:
|
MARK |
STATUS |
GOODS/SERVICES |
|||
|
ALPINE
BANK |
REGISTERED Filed: February 16, 1988 Registered: June 6, 1989 First
Use Date: January 1, 1983 |
Class
36: Banking services. |
|||
|
ALPINE
BANK and Design
|
REGISTERED Filed: April 24, 2000 Registered:
December 3, 2002 First
Use Date: November, 1999 |
Class
36: Financial services, namely, banking services, mortgage lending services,
mortgage banking services, mortgage brokerage services, loan financing
services. |
|||
|
ALPINE E-LINE |
REGISTERED Filed:
February 17, 2005 Registered:
July 25, 2006 First
Use Date: July 1, 2004 |
Class
41: Providing on-line newsletters in
the field of general information and news, provided via e-mail and the
Internet. |
|||
|
ALPINE ANYTIME |
REGISTERED Filed: February 17, 2005 Registered: January 31, 2006 First
Use Date: April 7, 2004 |
Class
36: Financial services, namely,
banking services, mortgage lending services, mortgage banking services,
mortgage brokerage services, loan financing services; automatic teller
machine services; online financial services, namely, providing account
holders with account information, account balances, available cash, financial
holdings, financial transaction history and financial numeric calculations;
providing information via the Internet featuring market data, news and
securities quotes; providing computerized on-line financial transaction
services, namely, banking, funds transfer and payment of bills; providing
ability to download financial information from the Internet. |
|||
|
ALPINE
ACCESS |
REGISTERED Filed: January 17, 2001 Registered: July 30, 2002 First
Use Date: July, 1992 |
Class
36: Financial services, namely,
banking services, mortgage lending services, mortgage banking services,
mortgage brokerage services, loan financing services. |
|||
|
ALPINE
PAYMENT EXPRESS |
REGISTERED Filed: January 17, 2001 Registered:
July 30, 2002 First
Use Date: April, 1998 |
Class
36: Online financial services, namely,
providing account holders with account information, account balances,
available cash, financial holdings, financial transaction history and
financial numeric calculations; providing information via the Internet
featuring financial market data, news and securities quotes; providing
computerized on-line financial transaction services, namely, banking, funds
transfer and payment of bills; providing ability to download financial
information from the Internet. |
|||
|
ALPINE
FAX |
REGISTERED Filed: January 17, 2001 Registered: September 3, 2002 First
Use Date: May, 1993 for Class 16; May, 1998 for Class 42 |
Class 16: Newsletters featuring general information and news delivered in print form. Class 42:
Computer services, namely, providing on-line newsletters in the field
of general information and news, provided via e-mail and the Internet. |
|||
|
ALPINE
ONLINE |
REGISTERED Filed: January 17, 2001 Registered: May 6, 2003 First
Use Date: April, 1998 |
Class
36: Online financial services, namely,
providing account holders with account information, account balances,
available cash, financial holdings, financial transaction history and
financial numeric calculations; providing computerized on-line financial
transaction services, namely, banking, funds transfer and payment of bills;
providing ability to download financial information from the Internet. |
The disputed domain name was created on November 5, 2007. The <alpinebankingcorp.com> domain name currently resolves to a website, which includes links to and advertising for a variety of third-party websites, some of which compete with Complainant. Respondent is offering the disputed domain name for sale through a link labeled, “inquire about this domain.”
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has submitted ample evidence to prove its
registration of the ALPINE BANK mark with the USPTO. As such, the Panel finds Complainant has
rights in the ALPINE BANK mark sufficient to satisfy Policy ¶4(a)(i). See Miller Brewing
Additionally, Complainant has successfully demonstrated the
disputed domain name is confusingly similar to Complainant’s mark. The <alpinebankingcorp.com> domain name includes
Complainant’s mark in its entirety, adding the suffix “ing,” the generic term
“banking” and the term “corp.,” which is an abbreviation for the generic term
“corporation.” Both of the generic
terms relate to Complainant’s business and add no distinction to the disputed
domain name. Therefore, the Panel finds
Respondent’s <alpinebankingcorp.com>
domain name is confusingly similar to Complainant’s mark for the purposes of
Policy ¶4(a)(i). See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum
June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be
confusingly similar to Complainant’s DISNEY mark because it incorporated
Complainant’s entire famous mark and merely added two terms to it); see also Modern Props, Inc. v. Wallis,
FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by
Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’
cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the
names are substantially similar in meaning.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶4(a)(i) analysis).
The Panel concludes Complainant has satisfied Policy ¶4(a)(i).
Complainant contends Respondent
lacks any rights or legitimate interests in the disputed domain name. Under Policy ¶4(a)(ii), Complainant must
first establish a prima facie case
that Respondent has no rights or legitimate interests in the disputed domain
name. See Lush LTD v. Lush Environs,
FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent
does file a response, the complainant must allege facts, which if true, would
establish that the respondent does not have any rights or legitimate interests
in the disputed domain name). The Panel
finds Complainant has established a prima
facie case and the burden of going forward is shifted to Respondent to show
it has rights or a legitimate interest in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the 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”).
Respondent has not replied to the
Complaint. Therefore, the Panel presumes
Respondent has no rights or legitimate interests in the <alpinebankingcorp.com> domain name. However, the Panel will examine the record to consider the
factors listed under Policy ¶4(c). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation
supports a finding for the complainant); see
also Law Soc’y of Hong Kong v. Domain
Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is
not obligated to participate in a domain name dispute . . . but the failure to
participate leaves a respondent vulnerable to the inferences that flow
naturally from the assertions of the complainant and the tribunal will accept
as established assertions by the complainant that are not unreasonable.”).
Nowhere in Respondent’s WHOIS
information does it indicate Respondent is or ever was commonly known by the <alpinebankingcorp.com> domain
name. Further, Complainant has not
granted permission to Respondent to use the ALPINE BANK mark in any way. As a result, the Panel finds Respondent is
not commonly known by the <alpinebankingcorp.com>
domain name pursuant to Policy ¶4(c)(ii).
See Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name);
see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the domain name precede
the respondent’s registration; (3) the respondent is not commonly known by the
domain name in question).
Respondent’s <alpinebankingcorp.com> domain name contains Complainant’s mark in its entirety and resolves to a website that advertises for and provides links to third-party websites, which compete with the products offered under Complainant’s mark. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Complainant contends Respondent has
offered the disputed domain name for sale through a link on the resulting
webpage. The Panel finds such an offer
to further evidence Respondent’s lack of rights and legitimate interests in the
<alpinebankingcorp.com> domain
name under the facts and circumstances of this case. See
Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007)
(concluding that a respondent’s willingness to sell a domain name to the
complainant suggests that a respondent has no rights or legitimate interests in
that domain name under Policy ¶4(a)(ii)); see
also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name suggests
it has no legitimate use).
The Panel concludes Complainant has satisfied Policy ¶4(a)(ii).
Respondent is using the disputed domain name to resolve to a website, which displays links to and advertising for a variety of third-party websites, some of which compete with Complainant. The Panel presumes Respondent is profiting from click-through fees and taking advantage of the confusing similarity between the <alpinebankingcorp.com> domain name and Complainant’s ALPINE BANK mark in order to profit from the goodwill associated with the mark. Therefore, the Panel finds Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶4(b)(iv).”).
Complainant has also alleged Respondent has registered the
disputed domain name primarily for the purpose of offering it for sale to the
rightful trademark owner or competitor of the rightful trademark owner for
valuable consideration. Complainant has
provided evidence showing Respondent provides a link to “inquire about this
domain” on the website that resolves from the disputed domain name. Complainant contends that when there is no
legitimate use of the domain name, the fact that the domain name is offered for
sale can be evidence that the domain name was registered and is being used in
bad faith. The Panel agrees and finds
Respondent’s use suggests bad faith registration and use pursuant to Policy
¶4(b)(i) under the facts and circumstances of this case. See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶4(b)(i).”); see
also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding
that a general offer of sale combined with no legitimate use of the domain name
constitutes registration and use in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alpinebankingcorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: Tuesday, March 17, 2008
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