IndyMac Bank, F.S.B. v. Jason U Carpenter
d/b/a Jason U Internet Inc
Claim
Number: FA0505000474818
Complainant, IndyMac Bank, F.S.B. (“Complainant”), is
represented by B. Brett Heavner, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 901 New York Avenue NW, Washington,
DC 20001. Respondent is Jason U Carpenter d/b/a Jason U Internet Inc (“Respondent”), 000 Jackson Ave., Sysosset
NY, New York 11791.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <indymak.com> and <indimacloan.com>,
registered with Tucows Inc.
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.
James
A, Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 12, 2005.
On
May 12, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum
that the domain names <indymak.com> and <indimacloan.com>
are registered with Tucows Inc. and that Respondent is the current registrant
of the names. Tucows Inc. has verified
that Respondent is bound by the Tucows 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
May 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 2, 2005 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@indymak.com and postmaster@indimacloan.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 10, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Crary
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <indymak.com> and
<indimacloan.com> domain names are confusingly similar to
Complainant’s INDYMAC mark.
2. Respondent does not have any rights or
legitimate interests in the <indymak.com> and <indimacloan.com>
domain names.
3. Respondent registered and used the <indymak.com>
and <indimacloan.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
IndyMac Bank, F.S.B., is a wholly-owned subsidiary of IndyMac Bancorp, Inc., a
public company traded on the New York Stock Exchange. Complainant is a leading mortgage lender that generated over
$37.9 billion in loan production last year and is the largest savings and loan
in Los Angeles County and the tenth largest in the nation.
Complainant
is also a leading technology-based mortgage bank with proprietary,
award-winning systems to facilitate automated underwriting and risk-based
pricing on a nationwide basis through the Internet. Complainant’s mortgage banking group offers multi-channel
distribution of its mortgage products and services through a nationwide network
of mortgage brokers, mortgage bankers, community financial institutions,
realtors and homebuilders in addition to offering its products directly to
consumers through the Internet.
Complainant’s full array of web-enhanced banking services include
deposits, competitive CD and money market accounts, and online bill payment
services. Complainant showcases its
products and services on its main website located at the <indymac.com>
and <indymacbank.com> domain names.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the INDYMAC mark (Reg. No. 2,212,512, issued December 22,
1998). Complainant also owns a family
of INDYMAC formative marks, including the INDYMAC BANK and INDYMAC BANK EQUITY
CARD marks (Reg. No. 2,518,498, issued December 11, 2001 and Reg. No.
2,698,505, issued March 18, 2003).
Complainant has used the INDYMAC mark continuously in connection with
its financial and mortgage banking services since as early as June 26, 1997.
Respondent
registered the <indymak.com> and <indimacloan.com> domain
names on December 1, 2004 and March 20, 2005, respectively. Respondent is using the disputed domain
names to redirect Internet users to a revenue generating search engine website
at the <domainsponsor.com> domain where Respondent is presumed to receive
pay-per-click compensation based on the advertisements of numerous links to
Complainant and Complainant’s 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.
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.
Complainant has
established that it has rights in the INDYMAC mark through registration with
the United States Patent and Trademark Office and through continued use of of
its mark in commerce for the last seven years.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption).
The <indymak.com> domain name
registered by Respondent is confusingly similar to Complainant’s INDYMAC mark
because the domain name is phonetically identical to Complainant’s mark and
comprises a misspelling of Complainant’s mark where Respondent has replaced the
letter “c” with the letter “k.” The
Panel finds that a domain name that is phonetically identical to Complainant’s
mark and incorporates a simple misspelling does not negate the confusing
similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr.
7, 2000) (finding that a domain name which is phonetically identical to
Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO
Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly
similar to Complainant’s YAHOO mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks).
Respondent’s <indimacloan.com>
domain name is also confusingly similar to Complainant’s INDYMAC mark because
not only does it include a phonetically misspelled version of Complainant’s
mark, but it merely adds the word “loan,” which describes Complainant’s
business. The Panel finds that
combining a misspelled version of Complainant’s mark with the addition of a
generic term that describes Complainant’s business is insufficient to
distinguish the disputed domain name from Complainant’s INDYMAC mark. See VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000)
(finding that the pronunciation and spelling between the domain name
<venesign.com> and Complainant’s VERISIGN mark are so close that
confusion can arise in the mind of the consumer); see also Victoria's Secret v. Internet Inv. Firm
Trust, FA 94344 (Nat. Arb. Forum May 9, 2000)
(finding the domain name <victoriasecret.com> to be confusingly similar
to Complainant’s VICTORIA’S SECRET mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which Complainant is engaged,
does not take the disputed domain name out of the realm of confusing
similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights in the INDYMAC mark and alleges that Respondent has no
such rights or legitimate interests in the disputed domain name. The burden shifts to Respondent to show that
it does have rights or legitimate interests once Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii).
Due to Respondent’s failure to respond to the Complaint, the Panel
assumes that Respondent lacks rights and legitimate interests in the disputed
domain name. See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that, where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); 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 Complainant that Respondent has no
rights or legitimate interests is sufficient to shift the burden of proof to
Respondent to demonstrate that such rights or legitimate interests do exist); see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interests in the domain names).
The Panel also
accepts all reasonable allegations and inferences in the Complaint as true
because Respondent has not submitted a response. See 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.”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of the Complaint to be deemed true); see also Desotec N.V. v. Jacobi
Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent is
using the <indymak.com> and <indimacloan.com> domain
names, which are confusingly similar to Complainant’s INDYMAC mark, to operate
a search engine website that features links to competing mortgage and financial
websites. Such competing use is not a
use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i). See N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests
in a domain name that diverted Internet users to Respondent’s competing website
through the use of Complainant’s mark); see also Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services).
Complainant
asserts that Respondent is not commonly known by the <indymak.com> and <indimacloan.com>
domain names pursuant to paragraph 4(c)(ii) of the Policy. Nothing in the record clearly contradicts
this assertion. Thus, the Panel finds
Respondent did not establish rights or legitimate interests in the disputed
domain name under this element. 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
Respondent is
using the disputed domain names to redirect Internet users to
<domainsponsors.com> where Respondent then receives click-through fees
for redirecting Internet traffic to the numerous advertised commercial
links. The Panel finds that
Respondent’s commercial use of the disputed domain names by receiving
click-through fees from redirecting Internet users to a pay-per-click website,
is not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See FAO Schwarz v. Zuccarini, FA 95828 (Nat.
Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the
domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>,
and <faoswartz.com> where Respondent was using these domain names to link
to an advertising website); see also Pioneer Hi-Bred Int’l Inc. v. Chan,
FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have
rights or legitimate interests in a domain name that used Complainant’s mark
and redirected Internet users to a website that pays domain name registrants
for referring those users to its search engine and pop-up advertisements); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <indymak.com> and <indimacloan.com> domain
names, which are confusingly similar to Complainant’s INDYMAC mark, to redirect
Internet users to a search engine website that features links to mortgage and
financial services-related websites.
The Panel finds that such competing use constitutes disruption and is
evidence that Respondent registered and used the domain names in bad faith pursuant
to Policy ¶ 4(b)(iii). See Puckett 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)); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to the
<domainsponsor.com> website.
Since Respondent’s <indymak.com> and <indimacloan.com>
domain names are confusingly similar to Complainant’s INDYMAC mark,
consumers accessing Respondent’s domain names may become confused as to
Complainant’s affiliation with the resulting search engine website. Thus, the Panel finds that Respondent’s
commercial use of the disputed domain names constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Qwest
Communications Int’l Inc. v. Ling Shun Shing, FA
187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, Respondent registered the <indymak.com> and <indimacloan.com> domain
names with actual or
constructive knowledge of Complainant’s rights in the INDYMAC mark due to
Complainant’s registration of the mark with the USPTO. Moreover, the Panel infers that Respondent
had actual knowledge of Complainant’s mark due to the obvious connection
between the content advertised on Respondent’s website and Complainant’s
business. Registration of
a domain name that is confusingly similar to a mark, despite actual or
constructive knowledge of another’s rights in the mark, is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the link between Complainant’s mark and
the content advertised on Respondent’s website was obvious, Respondent “must
have known about the Complainant’s mark when it registered the subject domain
name”).
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 <indymak.com> and <indimacloan.com>
domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated:
June 24, 2005
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