Bremer Financial v. Whois Service c/o
Claim Number: FA0903001250484
Complainant is Bremer Financial Corporation (“Complainant”), represented by Michael
T. Olson, of Winthrop & Weinstine, P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bremerbank.org>, registered with DirectNIC, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 4, 2009.
On March 4, 2009, DirectNIC, LTD confirmed by e-mail to the National Arbitration Forum that the <bremerbank.org> domain name is registered with DirectNIC, LTD and that Respondent is the current registrant of the name. DirectNIC, LTD has verified that Respondent is bound by the DirectNIC, LTD 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 March 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 25, 2009 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@bremerbank.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <bremerbank.org> domain name is identical to Complainant’s BREMER BANK mark.
2. Respondent does not have any rights or legitimate interests in the <bremerbank.org> domain name.
3. Respondent registered and used the <bremerbank.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bremer Financial, is a privately-held regional
financial services company that was founded in 1943, and now operates
throughout the
Respondent registered the disputed <bremerbank.org> domain name on February 3, 2006. The disputed domain name resolves to a website that features click-through advertising for Complainant’s direct competitors.
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.
The Panel finds that Complainant has sufficient rights in the
BREMER BANK mark through its registration of the mark with the USPTO under
Policy ¶ 4(a)(i).
See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)); see also Reebok Int’l Ltd.
v.
The disputed <bremerbank.org>
domain name contains the BREMER BANK mark while omitting the space in the mark
and adding the generic top-level domain “.org.”
The Panel finds that neither alteration carries any relevant weight
under the Policy, and that the disputed domain name is therefore identical to
the mark under Policy ¶ 4(a)(i). See
Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that
the domain name <microsoft.org> is identical to the complainant’s mark); see also Bond
& Co. Jewelers, Inc. v.
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Because Complainant has hereby set forth an adequate prima facie case supporting its allegations, Respondent receives the burden of demonstrating its rights or legitimate interests under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s disputed domain name diverts Internet users
seeking Complainant’s financial services to Respondent’s website, which solely
features third-party advertisements that compete with Complainant’s
business. Respondent presumably receives
commercial and financial benefit from these displays through the payment of
referral fees. The Panel therefore finds
that Respondent’s use of the disputed domain name in this fashion fails to
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit is
not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
There is no evidence in the record to conclude or suggest that Respondent is commonly known by the disputed domain name, or even has license or permission from Complainant to reflect Complainant’s marks in such a fashion. In fact, the WHOIS domain name registration information lists the registrant of the disputed domain name as “Whois Service c/o Belize Domain WHOIS Service Lt,” which fails to connote any resemblance between Respondent and the disputed domain name. The Panel therefore finds that Complainant lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Given that the majority of the third-party advertisements
placed on Respondent’s resolving website correspond to Complainant’s direct
competitors, the Panel finds that such evidence indicates Respondent’s intent
to disrupt Complainant’s business and take advantage of Complainant’s goodwill
surrounding its mark. The Panel
therefore finds that Respondent engaged in bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”); see
also
Respondent’s disputed domain name diverts Internet users to
its website, wherein Complainant’s competitors are advertised. Respondent has created a very substantial
likelihood of confusion as to the source and affiliation of the disputed domain
name and corresponding website.
Respondent benefits from such a likelihood of confusion, as it receives
referral fees for these advertisements that are subjected to the diverted
Internet users. The Panel finds this to
be clear evidence of Respondent’s bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website
is <century21.com>, many Internet users are likely to use search engines
to find Complainant’s website, only to be mislead to Respondent’s website at
the <century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (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 the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bremerbank.org> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 15, 2009
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