Domain Bank, Inc. v. John Smith
Claim
Number: FA0402000239687
Complainant is Domain Bank, Inc. (“Complainant”) represented
by Bret A. Fausett, of Hancock, Rothert & Bunshoft, LLP, 515 So. Figueroa Street, 17th Floor, Los Angeles, CA 90071-3334. Respondent is John Smith (“Respondent”), Strada Gazduirii numarul 99 Bucaresti,
Bucaresti 7000, Romania.
The
domain name at issue is <bestdomainbank.com>, registered with Wild
West Domains, 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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 24, 2004; the Forum received a hard copy of the
Complaint on February 23, 2004.
On
February 24, 2004, Wild West Domains, Inc. confirmed by e-mail to the Forum
that the domain name <bestdomainbank.com> is registered with Wild
West Domains, Inc. and that Respondent is the current registrant of the name. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West
Domains, Inc. 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 1, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 22, 2004 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@bestdomainbank.com by e-mail.
Subsequently,
the Panel received information from Respondent which was not submitted in
accordance with the rules and did not consider that material.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 25, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <bestdomainbank.com>
domain name is confusingly similar to Complainant’s DOMAIN BANK mark.
2. Respondent does not have any rights or
legitimate interests in the <bestdomainbank.com> domain name.
3. Respondent registered and used the <bestdomainbank.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Domain Bank, Inc., is an ICANN-accredited domain name registrar founded in
1997. Complainant is one of the oldest domain name registrars in the world.
Complainant provides online domain name recovery, domain appraisal services,
and online telephone customer support.
Complainant holds
a trademark registration with the United States Patent and Trademark Office for
the DOMAIN BANK mark (Reg. No. 2238699, issued April 13, 1999).
Complainant’s
main website is located at the <domainbank.com> domain name where
customers can conduct their business online with Complainant.
Respondent
registered the disputed domain name on August 5, 2001. Respondent is also in
the business of providing domain name registration services. Respondent is
using the website to divert Internet users to Respondent’s website which offers
nearly identical services to those offered by Complainant.
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.
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 Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the domain name to benefit from Complainant’s goodwill and to intercept
Internet traffic intended for Complainant. The use of a domain name confusingly
similar to Complainant’s mark to redirect Internet users interested in
Complainant’s services to a directly competing website that offers domain name
registration services identical to Complainant’s services is not 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). See Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum
Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in
a domain name that used Complainant’s mark to redirect Internet users to a
competitor’s website); see also Clear Channel Communications, Inc. v.
Beaty Enters., FA 135008
(Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of
Complainant, had no rights or legitimate interests in a domain name that
utilized Complainant’s mark for its competing website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide
offering of services in a respondent’s operation of web-site using a domain
name which is confusingly similar to the Complainant’s mark and for the same
business.”).
Moreover,
Respondent has offered no proof and no evidence in the record suggests that
Respondent is commonly known by <bestdomainbank>. Thus,
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain name for its own commercial gain. Respondent’s domain
name diverts Internet users who intend to search under Complainant’s mark to a
website sponsored by Respondent that directly competes with Complainant’s business
through the use of a domain name confusingly similar to Complainant’s mark.
This practice of diversion for commercial gain evidences bad faith registration
of and use of a domain name pursuant to Policy ¶ 4(b)(iv). See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site to its own
website for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site).
Respondent
registered the domain name for the primary purpose of disrupting Complainant’s
business by diverting Internet traffic intended for Complainant to Respondent’s
website which offers directly competing domain name registration services.
Registration of a domain name for the primary purpose of disrupting the
business of a competitor is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See
Lubbock
Radio Paging v. Venture Tele-Messaging,
FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were
registered and used in bad faith where Respondent and Complainant were in the
same line of business in the same market area); see also EthnicGrocer.com,
Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding
bad faith where Respondent’s sites pass users through to Respondent’s competing
business); see also Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from Complainant to a competitor’s website in
violation of Policy 4(b)(iii)).
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 <bestdomainbank.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: April 7, 2004
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