First Place Financial Corp. v.
MustNeed.com
Claim
Number: FA0506000493838
Complainant is First Place Financial Corp. (“Complainant”),
represented by Christopher B. Fagan, of Fay, Sharpe, Fagan, Minnich & McKee, LLP, 1100 Superior Avenue, Seventh Floor, Cleveland, OH 44114-2579. Respondent is MustNeed.com (“Respondent”), P.O. Box 3506 Taipei, Taiwan 100-00.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <firstplacebank.com>, registered with Moniker
Online Services, 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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 13, 2005.
On
June 9, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <firstplacebank.com> is
registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, 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
June 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 5, 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@firstplacebank.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
July 8, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <firstplacebank.com>
domain name is identical to Complainant’s FIRST PLACE mark.
2. Respondent does not have any rights or
legitimate interests in the <firstplacebank.com> domain name.
3. Respondent registered and used the <firstplacebank.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
First Place Financial Corp., offers financial services that include real estate
brokerage services, insurance brokerage services, loan services and mortgage
lending services. Complainant owns
several trademark registrations with the (“USPTO”) for the FIRST PLACE mark
(Reg. No. 992,185 issued August 27, 1974; Reg. No. 2,720,692 issued June 3,
2003 and Reg. No. 2,720,823 issued June 3, 2003).
Complainant has
spent a considerable amount of money and time advertising and promoting its
FIRST PLACE and FIRST PLACE BANK marks.
Complainant has used the FIRST PLACE mark in commerce since as early as
1973.
Respondent
registered the <firstplacebank.com> domain name on October 2,
2001. Respondent’s domain name resolves
to a website featuring a search engine and links to businesses unrelated to
Complainant’s business.
Respondent also
has a history of registering numerous other domain names and has been involved
in four other UDRP proceedings.
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. 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.").
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 through extrinsic proof in this proceeding that it has rights in
the FIRST PLACE mark through registration of the mark with the USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”).
Moreover, Respondent’s <firstplacebank.com> domain
name is confusingly similar to Complainant’s FIRST PLACE mark, as the domain
name fully incorporates the mark in its entirety and merely adds the term
“bank” and the generic top-level domain name “.com.” See Fed’n of Gay Games,
Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the
domain name <gaygames.com> is identical to Complainant's registered
trademark GAY GAMES); see
also Interstellar Starship Servs.
Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (holding that
<epix.com> "is the same mark" as EPIX); see also Snow Fun, Inc. v. O'Connor, FA 96578
(Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com>
is identical to Complainant’s TERMQUOTE mark); see also Am. Int’l Group,
Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding
that the addition of the term “assurance,” to the complainant’s AIG mark failed
to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i)
because the appended term related directly to the complainant’s business).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
submitted a prima facie case to the Panel, thereby shifting the burden
to Respondent. Respondent’s failure to
fulfill its burden means that Respondent has failed to invoke any circumstances
that could demonstrate rights or legitimate interests in the domain names. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once complainant asserts that
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response,
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Furthermore,
Respondent is using the <firstplacebank.com> domain name to
redirect Internet users to a website featuring a search engine. Respondent’s use of a domain name that is identical
to Complainant’s FIRST PLACE mark to redirect Internet users interested in
Complainant’s banking services to a website featuring a search engine and links
to businesses unrelated to Complainant’s business is not in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan,
FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have
rights or legitimate interests in a domain name that used the 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 Trans Global Tours, LLC v. Yong
Li, FA 196166 (Nat. Arb. Forum Nov. 1,
2003) (finding that the respondent was not using the domain name for a bona
fide offering of goods or services or a legitimate noncommercial or fair
use because it was diverting Internet users to a search engine with pop-up
advertisements).
Moreover,
Respondent has offered no evidence, and there is no proof in the record
indicating that Respondent is commonly known by the <firstplacebank.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com,
Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent
has no rights or legitimate interests in domain names because it is not
commonly known by the complainant’s marks and the respondent has not used the
domain names in connection with a bona fide offering of goods and services or
for a legitimate noncommercial or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent does not have rights in a
domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because the
respondent was not commonly known by the disputed domain name nor was the
respondent using the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
capitalizing on the goodwill of the FIRST PLACE mark by using the disputed
domain name to divert Internet users to a website featuring a search engine and
links to businesses unrelated to those of Complainant. The Panel infers that Respondent receives
click-through fees for diverting Internet users to a search engine featuring
links to other businesses. Since Respondent’s
domain name is confusingly similar to Complainant’s FIRST PLACE mark, Internet
users accessing Respondent’s domain name may become confused as to
Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the <firstplacebank.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Bank of Am. Corp. v. Out
Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003)
(stating that “[s]ince the disputed domain names contain entire versions of
Complainant’s marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names were registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003):
Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be mislead
to Respondent’s website at the <century21realty.biz> domain name, which
features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s
website, but who end up at Respondent’s website, will be confused as to the
source, sponsorship, affiliation or endorsement of Respondent’s website.
Id.
Furthermore,
Respondent registered and used the <firstplacebank.com> domain
name in bad faith as Respondent has established a pattern of bad faith
registration as evidenced through four other UDRP proceedings. See Sony
Kabushiki Kaisha v. Anderson, FA 198809
(Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names
in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered
domain names incorporating well-known third party trademarks); see also Société
Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of
“numerous other domain names” by the respondent); see also Stevens
v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent
Complainant from reflecting its mark in a corresponding domain name through a
pattern of such conduct evidences bad faith registration and use of a domain
name pursuant to 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 <firstplacebank.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
July 20, 2005
National Arbitration Forum
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