One West Bank, FSB v. Above.com Domain Privacy
Claim Number: FA1301001481420
Complainant is OneWest Bank, FSB (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indymacbanck.com>, registered with Above.com Pty 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2013; the National Arbitration Forum received payment on January 22, 2013.
On January 22, 2013, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <indymacbanck.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@indymacbanck.com. Also on January 23, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2913, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
a) Complainant is an FDIC-insured bank offering a wide array of banking products and services for individual consumers and business, including checking, savings, and certificate of deposit accounts; credit, debit, and prepaid cards; mortgage-lending services including refinancing; and other financial services. In connection with these goods and services, Complainant registered the INDYMAC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,522,907 registered Dec. 1, 2001). See Complainant’s Exhibit 5.
b) The <indymacbanck.com> domain name is confusingly similar to Complainant’s INDYMAC mark. The domain name is comprised of Complainant’s INDYMAC mark, the descriptive term “bank” misspelled as “banck,” and the generic top-level domain (“gTLD”) “.com.”
c) Respondent has no rights or legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the <indymacbanck.com> domain name. Nothing in the WHOIS record or the case record demonstrates otherwise, and Complainant has not authorized Respondent to use the INDYMAC mark.
b. Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent uses the <indymacbanck.com> domain name for a commercial pay-per-click website featuring search categories that relate to Complainant’s business, including links listed as “Mortgage Payment,” “First Time Home Loan,” and “Mortgage Modification.” See Complainant’s Exhibit 6. Respondent undoubtedly receives click-through commissions when Internet users click on the advertisements displayed on its website.
d) Respondent registered and is using the <indymacbanck.com> domain name in bad faith.
a. Respondent disrupts complainant’s business by using the <indymacbanck.com> domain name for a website featuring links to directly competing services.
b. Respondent registered and uses the <indymacbanck.com> domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s INDYMAC mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website association with Complainant. Respondent likely collects click-through fees from the visits of Internet users to the websites resolving from the links. Thus, Respondent is trying to gain commercially from this confusion.
c. Respondent’s registration of the <indymacbanck.com> domain name despite having knowledge of Complainant’s rights in the INDYMAC mark further demonstrates bad faith. Given Complainant’s federal registrations of the INDYMAC mark, the fame of Complainant’s mark, Complainant’s long-standing use of the mark, and the fact that the <indymacbanck.com> domain name is comprised of the INDYMAC mark and a misspelled descriptive term, Respondent undoubtedly knew of Complainant’s rights in the INDYMAC mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its INDYMAC mark.
2. Respondent’s <indymacbanck.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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."
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.
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.”).
Complainant states that it is an FDIC-insured bank offering a wide array of banking products and services for individual consumers and business, including checking, savings, and certificate of deposit accounts; credit, debit, and prepaid cards; mortgage-lending services including refinancing; and other financial services. Complainant asserts that, in connection with these goods and services, Complainant registered the INDYMAC mark (Reg. No. 2,522,907 registered Dec. 1, 2001) with the USPTO. See Complainant’s Exhibit 5. The panel in Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), held that the registration of a mark with a federal trademark authority satisfies the requirement in Policy ¶ 4(a)(i) that rights be established in a mark. Additionally, the panel in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), found that the registration of the mark satisfies Policy ¶ 4(a)(i) regardless of whether the registration is done in the country in which the respondent resides. Therefore, the Panel finds that Complainant has rights in the INDYMAC mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the <indymacbanck.com> domain name is confusingly similar to Complainant’s INDYMAC mark. Complainant notes that the domain name is comprised of Complainant’s INDYMAC mark, the descriptive term “bank” misspelled as “banck,” and the gTLD “.com.” The Panel determines that the addition of a term does not differentiate a domain name from the mark incorporated within. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel finds that the addition of a gTLD has no substantive effect on the confusing similarity of a domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s <indymacbanck.com> domain name is confusingly similar to Complainant’s INDYMAC mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the <indymacbanck.com> domain name. According to Complainant, nothing in the WHOIS record or the record demonstrates otherwise, and Complainant has not authorized Respondent to use the INDYMAC mark. The Panel notes that the WHOIS record for the <indymacbanck.com> domain name lists “Above.com Domain Privacy” as the domain name registrant. Panels have found that the WHOIS record and other available claims and support, or lack thereof, are often determinative of whether a respondent is commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant claims that Respondent uses the <indymacbanck.com> domain name for a commercial pay-per-click website featuring search categories that relate to Complainant’s business, including links listed as “Mortgage Payment,” “First Time Home Loan,” and “Mortgage Modification.” See Complainant’s Exhibit 6. Complainant argues that Respondent undoubtedly receives click-through commissions when Internet users click on the advertisements displayed on its website. Therefore, the Panel finds that Respondent is not making a use of the <indymacbanck.com> domain name that is either a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant asserts that Respondent registered and is using the <indymacbanck.com> domain name in bad faith. Complainant contends that Respondent disrupts complainant’s business by using the <indymacbanck.com> domain name for a website featuring links to directly competing services. Respondent registered and uses the <indymacbanck.com> domain name for a commercial pay-per-click websites featuring links to various websites that are competitive with Complainant’s offerings. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel held that the display of competitive links on a disputed domain name is disruptive to the complainant’s business. Therefore, the Panel finds that Respondent registered and uses the <indymacbanck.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent registered and uses the <indymacbanck.com> domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s INDYMAC mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website association with Complainant. Complainant notes that Respondent registered and uses the <indymacbanck.com> domain name to display links that compete with the goods and services that Complainant provides. Complainant asserts that Respondent likely collects click-through fees from the visits of Internet users to the websites resolving from the links, and thus Respondent is trying to gain commercially from this confusion. Therefore, the Panel finds that Respondent registered and uses the <indymacbanck.com> domain name in a bad faith attempt to take advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Lastly, Complainant asserts that Respondent’s registration of the <indymacbanck.com> domain name despite having knowledge of Complainant’s rights in the INDYMAC mark further demonstrates bad faith. Complainant contends that, given Complainant’s federal registrations of the INDYMAC mark, the fame of Complainant’s mark, Complainant’s long-standing use of the mark, and the fact that the <indymacbanck.com> domain name is comprised of the INDYMAC mark and a misspelled descriptive term, Respondent undoubtedly knew of Complainant’s rights in the INDYMAC mark prior to registering the disputed domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indymacbanck.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 27, 2013
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