MB Financial Bank, N.A. v. MBBANK
Claim Number: FA0602000644517
PARTIES
Complainant is MB Financial Bank, N.A. (“Complainant”), represented by Salvador K. Karottki, 55 East Monroe Street, Suite 3700, Chicago, IL 60603. Respondent is MBBANK (“Respondent”), 4018 Sungnam-dong, Jungwon-gu, Sungnam-si, Kyungkido 462-130, KR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mbbank.com>
(the “Domain Name”), registered with Tucows
Inc.
PANEL
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.
Christopher Gibson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 13, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 15, 2006.
On February 14, 2006, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the Domain Name is registered with Tucows Inc. and that
the Respondent is the current registrant of the name. 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 February 23, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 15, 2006 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@mbbank.com by e-mail.
A timely Response was received and determined to be complete on March
13, 2006.
A timely Additional Submission was received from Complainant on March
15, 2006 in accordance with The National Arbitration Forum’s Supplemental Rule
#7.
On March 20, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Christopher Gibson as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Confusing Similarity: Complainant contends that confusing similarity exists between Complainant's Mark and the Domain Name. Respondent registered the Domain Name on May 9, 2000—after Complainant began using the Mark and had filed an application for the Mark with the U.S. Patent and Trademark Office (USPTO). Complainant states that the Domain Name incorporates its MB Mark, except adding the generic word "bank," which describes Complainant and its services and therefore only heightens the confusion. Complainant emphasizes that it has used the Mark for years in connection with banking services.
Complainant further contends that the confusion between the Domain Name and Complainant's Mark is magnified by the fact that Respondent is using the Domain Name in order to promote the sale or offering of services by third party companies that compete with Complainant's services. Respondent's website, located at the disputed Domain Name, consisted solely of links to third-party websites and goods and services such as "Online Banking," "Checking," and "Personal Loans," as demonstrated by the screen shots of Respondent's website which the Complainant attached as Exhibit E to its Complaint. Respondent's website contained links to <HSBCdirect.com>, <www.wachovia.com> and <bank.etrade.com>, all websites operated by Complainant's competitors.
2. No Legitimate
Interest: Complainant contends that
Respondent has no legitimate interest in the Domain Name, that neither
Respondent nor any business operated by it, nor any product or service offered
by it, has been commonly known by the Domain Name. Respondent is not a licensee
of Complainant nor is Respondent authorized to use Complainant's marks for any
purpose.
Complainant filed its Complaint
against Respondent on February 13, 2006.
Prior to that date, Respondent's WHOIS information listed the registrant
as “iContents,” and the e-mail for Respondent was listed as “icontentscom@yahoo.com.” However, after Complainant had filed the
Complaint and sent it to Respondent via e-mail at “icontentscom@yahoo.com,”
Respondent modified the Domain Name's WHOIS information. Respondent changed the name of the registrant
from “iContents” to “MBBANK” and altered the address information. Complainant alleges that changing the
registrant information in the registrar's WHOIS database to MBBANK was a
transparent attempt to show a use of "MB BANK" but does not reflect a
legitimate use of the term and should, in fact, negate any finding of a
legitimate interest in the Domain Name.
To the extent that Respondent
transferred the domain name to a new entity after receiving notice of the
Complaint, this is proof that the Respondent does not have legitimate rights in
the Domain Name.
Complainant further argues that the sole purpose behind Respondent's registration and operation of the Domain Name is to make money by redirecting Internet traffic to Complainant's competitors. Respondent's website has no content specific to the Domain Name, and the only content that was there were links to websites of Complainant's competitors. Further, after receiving notice of Complainant's Complaint via e-mail on February 13, 2006, Respondent removed the entire contents of the website at the Domain Name, which should negate any claim of a right or legitimate interest in the Domain Name.
3. Bad Faith Conduct: Complainant contends that Respondent is using the Domain Name in order to channel Internet users to companies and/or websites that compete directly with Complainant's services. Respondent has registered and is using the Domain Name in order to profit from Complainant's Mark, in order to profit from consumer confusion regarding Complainant's Mark, and in order to disrupt Complainant's business. Respondent's design to confuse Complainant's customers and redirect them to Complainant's competitors' websites in order to make per-click revenue is evidenced by Respondent's inclusion of the link "MB BANK LOCATIONS IN CHICAGO" on its website, even though Respondent is located in Seoul, South Korea and has no apparent connection to Chicago.
Respondent is also offering to sell the Domain Name, as demonstrated by
the screen shots of Respondent's website in Exhibit E. Respondent's website at the Domain Name <mbbank.com>
clearly stated "This domain is for sale!" Complainant argues that Respondent's registration and use of the
Domain Name thus also meet the bad faith element set forth in Section 4(b)(i)
of the ICANN Policy, because Respondent registered the Domain Name primarily to
sell, rent, or otherwise transfer it for valuable consideration in excess of
Respondent's out-of-pocket expenses.
Finally, Complainant states that Respondent's modification of its WHOIS registrant information from iContents to MBBANK, and removal of the website at the Domain Name after receiving the Complaint, constitutes bad faith and evidences intent to hide Respondent's use and initial registration of the Domain Name. Such after-notice modification of WHOIS information, transfer of the Domain Name to a new entity, and removal of the contents of the website at the Domain Name, are indications of bad faith registration and use of the Domain Name by Respondent.
B. Respondent
Respondent’s Response contains the following points:
1. Similarity to
Trademark: Respondent claims that
MB is merely an abbreviation of generic words.
Respondent contends that MB Financial Bank in the United States is not
well-known in Korea, does not make out an infringement case under trademark
law, and that its Complaint reveals, at best, an intent to “rob” the Domain
Name from Respondent on the ground of Complainant’s corporate name.
2. Rights to Domain
Name
Respondent claims that Complainant does not have rights to
“MBBANK.” Respondent claims that it
bought the Domain Name on January 30, 2006 from “Icontents” and that its web
site at the Domain Name <mbbank.com> refers to “MotherBoard Bank,”
which offers information on motherboards in Korean and answers consumers’
questions about motherboards at the e-mail address “info@mbbank.com.” Respondent provides a listing of other
domains containing “MBBANK” (e.g., mbbank.net, mbbank.org, mbbank.biz,
mbbank.info, mbbank.co.uk, and mbbank.ru) and asks, if Complainant were
globally well-known and famous, why would it not also assert that it holds
rights to all these other domain names.
Respondent observes that Complainant has not even acquired
<mbbank.us>, a domain name intended for use in the United States.
3. Good-Faith
Registration of Domain Name
Respondent repeats some of the same contentions made above, asserting
that Complainant is not very well-known, that its bringing of the Complaint
against Respondent “is a bad-faith absurdity at best,” and questioning why
Complainant has not sought to assert its rights against other third-party
domain names. Respondent alleges that
domain names using “BANK” are very popular in Korea (e.g., wrestlebank.com,
wood-bank.co.kr, human-bank.co.kr, foodbank.co.kr). Finally, Respondent urges that the Panel should prevent any
unfair deprivation of the Domain Name resulting from the Respondent’s having to
respond in a foreign language.
C. Additional Submissions
Complainant’s responses in its Additional Written Statement can be summarized as follows:
(i)
Respondent has failed to show that the Domain Name is
not confusingly similar to the MB Mark, instead raising several irrelevant
points which are, in essence, inappropriate collateral attacks on Complainant's
MB Mark (e.g., claiming that the Mark is generic and that it is not well-known
in South Korea). Complainant responds
that, to the contrary, an arbitrary arrangement of letters qualifies for
trademark protection as an arbitrary or fanciful mark, and that Respondent's
argument that the Mark is generic is irrelevant, because issues concerning
trademark invalidity are not within the purview of an ICANN proceeding. Respondent's argument that Complainant's
Mark is not famous in South Korea is similarly unavailing – there is no
requirement that a mark be deemed famous
in Respondent's home country.
(ii)
regarding the issue of legitimate interest in the
Domain Name, Complainant asserts that the proper record for review of this
dispute should be based on the website at the Domain Name as it existed on the
date the Complaint was filed, not on the post
hoc website that the Respondent created after the fact. Complainant observes that the Respondent in
its Response failed to address that his website with information on
motherboards was not placed on the Internet until after he received
notification of the Complaint.
Complainant asserts that Respondent makes only conclusory assertions
while providing no documentary evidence in response to the Complainant’s
evidence. Complainant contends that the
Response shows Respondent is not commonly known by the Domain Name, and that
the information provided as to third-party domain name registrations is
irrelevant to this proceeding.
(iii) Respondent does not deny that the Domain Name was for sale, that it was registered and used in order to profit from Complainant's Mark, in order to profit from consumer confusion regarding Complainant's Mark, and in order to disrupt Complainant's business. Complainant contends that failure to deny these matters should be deemed an admission. Finally, even if Respondent only recently acquired the Domain Name and coincidentally received transfer of the Domain Name just after it received the Complaint, then Respondent was on notice of Complainant's Mark and acquiring the Domain Name with such constructive notice is evidence of bad faith.
FINDINGS
Complainant is in the business of providing banking and financial services under, inter alia, the service mark MB (the "Mark"). In addition to the Mark, Complainant also provides its services in connection with the marks MB FINANCIAL and MB FINANCIAL BANK. Complainant has provided documentary evidence in support of its trademarks. Complainant or its predecessor, Manufacturers Bank, has been using the Mark in commerce since at least 1997 in connection with its sale and promotion of banking and financial services. Complainant also promotes and advertises its services using its marks on websites located at, inter alia, <www.mbfinancial.com>, <www.mbbanker.com>, <www.mbfinancialbank.com> and <www.mbfinancialmortgage.com>.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 Complainant has established rights in its MB Mark by registering it
with the USPTO (Reg. No. 2,393,663 issued October 10, 2000; filed December 3,
1999). See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18,
2001) (finding that successful trademark registration creates a presumption of
rights in a mark). Respondent’s
attempted collateral attack on Complainant’s Mark by asserting that it is generic
and by references to domain names held by third parties does not undermine
Complainant’s established rights.
Indeed, "ICANN panels cannot and hence do not assess
the validity of any federally registered trademark." Register.com v. Reile, FA 208576
(Nat. Arb. Forum Jan. 27, 2004); United States Office of Personnel Mgmt. v.
MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003). Moreover, "[i]t has been held that a
party to a domain name dispute proceeding cannot assert the rights of a third
party to satisfy the requirement which the party must establish to prevail in a
domain name dispute proceeding." Seagate
Tech. LLC v. TC Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002)
The Panel also finds that the Domain Name is confusingly similar to Complainant’s MB
Mark, because the domain name incorporates Complainant’s mark in its entirety
and adds the generic term “bank,” which describes Complainant’s business. Such additions to Complainant’s registered
mark are insufficient to negate the confusingly similar aspects of the Domain
Name pursuant to Policy ¶ 4(a)(i). See
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); 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).
The Panel determines that the Respondent has
no rights or legitimate interests in the Domain Name. First, the Respondent is not authorized or licensed to use the
Complainant’s Mark. Second, the
Respondent has provided no evidence to show that it is commonly known by the Domain
Name, or that it operates a business or offers a service that is commonly known
by the Domain Name. Third, and most
importantly, the Complainant submitted evidence to show that after it
had filed the Complaint and sent notification to Respondent, Respondent then
(i) modified the Domain Name's WHOIS information and changed the name of the
registrant from “iContents” to “MBBANK” and altered the address information,
and (ii) took down the original content of the web site associated with the
Domain Name and put up different content.
In the face of these allegations, which Complainant supported with
documentary evidence, Respondent did not provide any detailed explanation but
made only the unsupported assertion that the Domain Name had already been sold
on January 30, 2006 prior to the dispute (but Respondent does not explain why it
was not then immediately transferred). See
e.g., G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that the respondent does not
have rights or legitimate interests with respect to the domain name, it is
incumbent on the respondent to come forward with concrete evidence rebutting
this assertion because this information is “uniquely within the knowledge and
control of the respondent”).
The Panel determines
that Respondent has not adequately responded to the allegations raised by
Complainant and, to the extent it did respond, the Panel does not find
Respondent’s answer to be credible. The
Panel finds that the proper record for review of this dispute should be based
on the website at the Domain Name as it existed on the date the Complaint was
filed, not on the post hoc website
that the Respondent created after the fact.
See IslandAir, Inc. v. Flanders,
FA 96098 (Nat. Arb. Forum Feb. 8, 2001)
("[M]aking changes to a web site after notice of a dispute may negate a
finding of rights or legitimate interest."); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150
(WIPO, May 2, 2000) (finding that the respondent had no rights or legitimate
interests where he changed website after receiving complainant's "cease
and desist" notice); Krone Studios
Pty, Ltd. v. LaPorte Holdings, Inc., D2004-0707 (WIPO, Dec. 12, 2004)
("[T]he transfer of the disputed domain name to the current registrant is
merely an attempt to avoid the proceeding and proof that the [r]espondent does
not have rights or legitimate interests in the disputed domain
name.").
Prior to receiving notice of the dispute, Respondent was using the Domain Name to redirect Internet users to Respondent’s website featuring financial services that compete with Complainant. Respondent again does not even address this point, other than the assertion that the Domain Name had been sold. Such use of the Domain Name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that the Domain Name has been registered and used in bad faith, where Respondent used the Domain Name for Respondent’s commercial gain by diverting Internet users interested in Complainant’s MB products and services to Respondent’s website featuring financial services that competed directly with Complainant. Respondent’s use of a domain name that includes Complainant’s mark to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Respondent's changing of the registrant information and purported transfer of the Domain Name is also an example of cyberflight, a tactic employed by bad faith cybersquatters. See Krone Studios Pty, Ltd. v. LaPorte Holdings, Inc., D2004-0707 (WIPO, Dec. 12, 2004) ("The Panel agrees . . . that the transfer of the disputed domain name . . . was an example of bad faith (cyberflight).").
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Domain
Name <mbbank.com> be TRANSFERRED from Respondent to
Complainant.
Christopher Gibson, Panelist
Dated: April 4, 2006
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