Whitney National Bank v. Spiral Matrix
Claim Number: FA0603000657206
Complainant is Whitney National Bank (“Complainant”), represented by Raymond G. Areaux, of Carver, Darden, Koretzky, Tessier, Finn, Blossman & Areaux, LLC, 1100 Poydras Street, Suite 2700, New Orleans, 70163, LA. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, KE 30100, KE.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <whitmeybank.com> and <whotneybank.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 13, 2006.
On March 13, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <whitmeybank.com> and <whotneybank.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 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@whitmeybank.com and postmaster@whotneybank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <whitmeybank.com> and <whotneybank.com> domain names are confusingly similar to Complainant’s WHITNEY mark.
2. Respondent does not have any rights or legitimate interests in the <whitmeybank.com> and <whotneybank.com> domain names.
3. Respondent registered and used the <whitmeybank.com> and <whotneybank.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Whitney National Bank, is the oldest continuously operating bank in New Orleans, LA, and has used the WHITNEY and WHITNEY BANK marks in conjunction with its banking operations since its inception in 1883. Complainant is now a multi-billion dollar financial institution and a banking industry leader in the five-state Gulf Coast region, and also operates a branch in Grand Cayman in the British West Indies. Complainant has registered the WHITNEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,032,935; issued January 21, 1997). Complainant also operates a website under the <whitneybank.com> domain name.
Respondent registered the <whitmeybank.com> and <whotneybank.com> domain names on January 17, 2006. Internet users who access these domain names are directed to generic search-engine websites, which feature links to products and services both unrelated to and in competition with Complainant’s business.
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 registered the WHITNEY mark with the USPTO and has, therefore, established rights in this mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s domain names consist of misspellings of Complainant’s WHITNEY mark along with the descriptive term “bank” and the top-level domain “.com.” Misspelling Complainant’s mark does not negate the confusing similarity between the disputed domain names and Complainant’s mark. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark). Moreover, the additions of the term “bank” and the top-level domain “.com” do not adequately distinguish Respondent’s domain names from Complainant’s mark, because the term “bank” clearly relates to Complainant’s business and because all domain names require top-level domains. See 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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .")
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain names, the burden shifts to Respondent to prove that it does have rights or legitimate interests in them. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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 the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Complainant has presented a prima facie case, and despite Respondent’s failure to respond, the Panel will consider whether the evaluation of the evidence on record demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent uses domain names that are confusingly similar to Complainant’s mark to redirect Internet users to generic search-engine websites, which feature links to other websites offering both competing and unrelated services. The Panel infers that Respondent receives payment in exchange for directing users to these other websites. Such use is not 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The WHOIS database entries for the <whitmeybank.com> and <whotneybank.com> domain names contain no information implying that Respondent is commonly known by these names. Complainant asserts that Respondent is not commonly known by these domain names, and Respondent has not answered the Compliant with any evidence establishing that Respondent is commonly known by them. Complainant also asserts that it has never licensed or otherwise authorized Respondent to use any of its marks. The Panel determines that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because Respondent’s <whitmeybank.com> and <whotneybank.com>
domain names include Complainant’s WHITNEY mark, Internet users may mistakenly
believe that the resulting websites are affiliated with Complainant. The Panel assumes that Respondent receives
click-through fees in exchange for diverting Internet users to other websites,
including those of Complainant’s competitors.
Use of the disputed domain names to take advantage of this existence of
confusion constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Am. Univ. v. Cook,
FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain
name that incorporates another's mark with the intent to deceive Internet users
in regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19,
2003) (“Respondent's prior use of the <mailonsunday.com> domain name is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
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 <whitmeybank.com> and <whotneybank.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 27, 2006
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