OneWest Bank, FSB v. ICS INC.
Claim Number: FA1308001515044
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 ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indymacmortgagesrvices.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2013; the National Arbitration Forum received payment on August 15, 2013.
On August 16, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <indymacmortgagesrvices.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 August 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@indymacmortgagesrvices.com. Also on August 20, 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 September 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <indymacmortgagesrvices.com> domain name, the domain name at issue, is confusingly similar to Complainant’s INDYMAC mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a Federal Deposit Insurance Corporation-insured bank focused on delivering personalized, relationship-based banking to its customers. Complainant owns registrations for the INDY MAC and INDYMAC marks with the United States Patent and Trademark Office (“USPTO”), and has used the marks in commerce dating back to at least as early as June 1997. They are INDY MAC: Reg. No. 2,357,857 registered June 13, 2000 and INDYMAC: Reg. No. 2,522,907 registered December 25, 2001
Respondent’s <indymacmortgagesrvices.com> domain name features Complainant’s complete INDYMAC mark with the addition of the terms “mortgage” and “srvices" and further adds the generic top-level domain (“gTLD”) “.com” to Complainant’s registered mark. Respondent is not commonly known by the disputed domain name. Nothing in the WHOIS information indicates that Respondent is commonly known by the disputed domain name. Respondent is using the disputed domain name for commercial pay-per-click websites featuring links that compete with Complainant. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Respondent has a pattern of bad faith registrations evidenced by four prior UDRP decisions that held against Respondent. In this case, Respondent uses the disputed domain name to disrupt Complainant’s business by using a confusingly similar domain name to resolve to a website featuring links directly competing with Complainant and registered, and is using, the disputed domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s INDYMAC mark. Respondent’s activity indicates typosquatting behavior. Respondent was aware of Complainant and its use and registration of the INDYMAC mark when it registered the <indymacmortgagesrvices.com> domain name on February 18, 2013.
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 is a banking company offering products and services including checking, savings, and certificate of deposit accounts; credit, debit, and prepaid cards; mortgage-lending services including refinancing; and other financial services. Complainant has rights in the INDYMAC mark dating back to at least as early as June 1997 and has provided the Panel with evidence of its registrations with the USPTO:
INDY MAC: Reg. No. 2,357,857 registered June 13, 2000;
INDYMAC: Reg. No. 2,522,907 registered December 25, 2001.
A complainant may establish rights in a given mark when it provides evidence of a registration with a recognized authority such as the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel therefore finds that Complainant has established rights in the INDYMAC mark pursuant to Policy ¶ 4(a)(i), regardless of the fact that Respondent resides in the Cayman Islands. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that Respondent’s <indymacmortgagesrvices.com> domain name features Complainant’s entire INDYMAC mark with the addition of the terms “mortgage” and “srvices" and further adds the gTLD “.com.” Complainant asserts that the terms “mortgages” and the misspelled version of the word “services” are descriptive of Complainant’s business. Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Accordingly, Respondent’s <indymacmortgagesrvices.com> domain name is confusingly similar to Complainant’s INDYMAC mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has no rights or legitimate interests in the <indymacmortgagesrvices.com> domain name because Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). Nothing in Respondent’s WHOIS information or anywhere else in the record indicates that Respondent is commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “ICS INC.” as registrant. Complainant has not authorized Respondent to use its INDYMAC mark in any way. A respondent has no rights or legitimate interests in a disputed domain name where it was not authorized to use the given mark and there is nothing in the record providing any evidence that respondent is commonly known by the domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds that Respondent is not commonly known by the <indymacmortgagesrvices.com> domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to feature pay-per-click links on a website offering links and advertisements for third-parties, some of which directly compete with Complainant. The disputed domain name resolves to a website featuring links such as “Low Mortgage Rates,” “Poor Credit Mortgage Loan,” “Mortgage Loan Guidelines,” “Find a Mortgage,” “Today’s Low Mortgage Rates,” “Cheap Bankruptcy,” “Apply for Mortgage Loan,” and “U.S. Bank Home Mortgage.” Previous panels have found that offering third-party links and advertisements for presumed commercial gain is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)). Accordingly, Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii), respectively.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has established a pattern of registering trademark-related domain names in bad faith. Complainant provides examples of four UDRP decisions that held against Respondent. See ER Marks, Inc. and QVC, Inc. v. ICS INC., FA 1428474 (Nat. Arb. Forum Mar. 20, 2012); see also ER Marks, Inc. and QVC, Inc. v. ICS INC., FA 1431846 (Nat. Arb. Forum Apr. 17, 2012); see also Regions Asset Co. v. ICS INC., FA 1436598 (Nat. Arb. Forum Apr. 26, 2012); see also Sizzler USA Franchise, Inc., Sizzler Int’l Marks, LLC, and Sizzler Rests. Group Pty Ltd v. ICS INC., FA 1439294 (Nat. Arb. Forum May 16, 2012). The Panel finds that, in this case also, Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent’s use of the disputed domain name disrupts Complainant’s business by resolving to a website featuring sponsored link advertisements from services competing with Complainant. Some of the links featured on the website resolving from Respondent’s <indymacmortgagesrvices.com> domain name include: “Quicken Loans Mortgage,” “U.S. Bank Home Mortgage,” “Best Mortgage Calculator,” and “3.25 % APR Mortgage Refi.” Previous panels have found that using a confusingly similar domain name to resolve to a website featuring links that compete with a complainant indicates bad faith use and registration under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel additionally finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent’s activity constitutes typosquatting behavior under Policy ¶ 4(a)(iii). Respondent has registered and is using the <indymacmortgagesrvices.com> domain name to take advantage of the likelihood that Internet users will mistype Complainant’s official domain name <indymacmortgageservices.com>. Previous panels have consistently found typosquatting behavior to indicate bad faith use and registration. See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel concludes that Respondent has engaged in typosquatting behavior and thus has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent must have had notice of Complainant's rights in the INDYMAC mark prior to registration of the <indymacmortgagesrvices.com> domain name because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indymacmortgagesrvices.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 18, 2013
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