First Mariner Bank v. PLUTO DOMAIN SERVICES PVT. LTD.
Claim Number: FA0901001244791
Complainant is First
Mariner Bank (“Complainant”), represented by James B. Astrachan, of Astrachan Gunst & Thomas, PC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <firstmariner.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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:
1. Respondent’s <firstmariner.com> domain name is confusingly similar to Complainant’s 1ST MARINER mark.
2. Respondent does not have any rights or legitimate interests in the <firstmariner.com> domain name.
3. Respondent registered and used the <firstmariner.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, First Mariner Bank, was issued a registration for
the 1ST MARINER mark by the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 3,082,675 issued April 18, 2006, filed May 4, 2005) in connection
with its financial services company. On
the trademark registration, the first use in commerce is listed as
Respondent registered the <firstmariner.com>
domain name on
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
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 must first establish that it has rights to the
mark included in the disputed domain name.
Complainant’s registration of the 1ST MARINER mark with the USPTO
establishes its rights to the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum
Complainant registered the 1ST MARINER mark with the USPTO
in 2006, but has been using the mark since at least 1995, as Complainant shows
as its first use in commerce on its USPTO registration. Complainant also maintains a website
resolving from the <1stmarinerbank.com> domain name. The Panel finds that Complainant has
established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Bob
Jones Univ. v. Kane, FA 324692
(Nat. Arb. Forum
The <firstmariner.com> domain name alters
Complainant’s 1ST MARINER mark only by spelling out “first,” whereas the mark uses
the numerical representation “1ST,” and adding the generic top-level domain
(“gTLD”) “.com.” The Panel finds that
the resulting domain name is confusing similar to Complainant’s 1ST MARINER
mark pursuant to Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman
Web Dev., FA 204063 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to 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. If the Panel finds that
Complainant’s allegations establish such a prima facie case, the burden
shifts to Respondent to show that it does indeed have rights or legitimate
interests in the disputed domain name pursuant to the guidelines in Policy ¶
4(c). Since no Response was submitted in
this case, the Panel may presume that Respondent has no rights or legitimate
interests in the disputed domain name. See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <firstmariner.com> domain
name. Complainant asserts that Respondent
has no license or agreement with Complainant authorizing Respondent to use the
1ST MARINER mark, and the WHOIS information identifies Respondent as “PLUTO
DOMAIN SERVICES PVT. LTD.” Thus,
Respondent has not established rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The <firstmariner.com> domain name is being
used to advertise banking businesses that directly compete with
Complainant. Using a domain name that is
confusingly similar to Complainant’s mark to direct Internet users to a website
containing links to competitors is neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use. Therefore,
the Panel finds Respondent does not have any rights or legitimate interests in
the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <firstmariner.com>
domain name to resolve to a website containing links to third-party websites,
some of which directly compete with Complainant. The Panel finds Respondent is using the <firstmariner.com>
domain name to disrupt Complainant’s business by diverting Internet users to
Complainant’s competitors. This is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Puckett, Individually v. Miller, D2000-0297 (WIPO
The website that resolves from the <firstmariner.com>
domain name displays links to sites that are related to and in direct
competition with Complainant’s business.
The Panel infers that Respondent receives either pay-per-click fees or
advertising fees for these advertisements.
Since the disputed domain name is confusingly similar to Complainant’s
mark, Internet users are likely to become confused as to Complainant’s affiliation
or sponsorship of the disputed domain name and resolving website. The Panel finds this is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firstmariner.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 24, 2009
National
Arbitration Forum
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