Bank of the Sierra, a California corporation v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED
Claim Number: FA1411001589763
Complainant is Bank of the Sierra, a California corporation (“Complainant”), represented by Vonn R. Christenson of Christenson Law Firm, LLP, California, USA. Respondent is LAKSH INTERNET SOLUTIONS PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofthesiera.com>, registered with Tirupati Domains and Hosting Private Limited.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2014; the National Arbitration Forum received payment on November 12, 2014.
On November 14, 2014, Tirupati Domains and Hosting Private Limited confirmed by email to the National Arbitration Forum that the <bankofthesiera.com> domain name is registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the names. Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited 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 November 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bankofthesiera.com. Also on November 19, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 December 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant is a community bank located in California, founded in 1977. Complainant uses the service mark BANK OF THE SIERRA in connection with banking and related financial services. This mark was registered with the U.S. Patent & Trademark Office in 2009; the registration reflects a date of first use of 1978. Complainant registered its domain name <bankofthesierra.com> in 1996.
Complainant contends that the disputed domain name <bankofthesiera.com> is confusingly similar to its mark. The Whois record for the disputed domain name states that it was registered in 2005. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name, and that the domain name was registered and is being used in bad faith. In support thereof, Complainant states that Respondent is not commonly known by the domain name, and has not been licensed or otherwise permitted to use Complainant’s mark. Complainant states that the website to which the domain name resolves includes links to other banking services in competition with Complainant. Complainant alleges that Respondent is using the confusing similarity between the domain name and Complainant’s mark to attract Internet users and redirect them to competing services, presumably profiting thereby. Complainant asserts that the long time span between Complainant’s adoption of its mark and registration of its domain name and Respondent’s registration of the disputed domain name suggests that Respondent had actual knowledge of Complainant’s mark and intentionally attempted to create and exploit confusion with the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.”).
The disputed domain name <bankofthesiera.com> is identical to Complainant’s registered trademark BANK OF THE SIERRA, but for the omission of spaces and a single letter “R”, and the addition of the “.com” top-level domain. These changes are insufficient to distinguish the domain name from Complainant’s mark. See, e.g., Sierra Trading Post, Inc. v. Zuccarini, D2002-0263 (WIPO May 24, 2002) (finding <sieratradingpost.com> confusingly similar to SIERRA TRADING POST). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name is confusingly similar to Complainant’s mark, and its only apparent use is for a website comprised of pay-per-click links to banking related services, including services that compete with those offered by Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Capital One Financial Corp. v. Zhichao Yang, FA 1583407 (Nat. Arb. Forum Nov. 10, 2014). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s registration of a domain name that is nearly identical to Complainant’s mark, together with the use of that domain name to link to commercial websites that compete with Complainant, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). See, e.g., Capital One Financial Corp., supra. The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofthesiera.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 17, 2014
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