Woodforest National Bank v. Nevis Domains
Claim Number: FA0606000728791
Complainant is Woodforest National Bank (“Complainant”), represented by Christopher D. Keirs, 20333 State Hwy. 249, Suite 600, Houston, TX 77070. Respondent is Nevis Domains (“Respondent”), P.O. Box 626, Charlestown, Nevis 00000, KN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <woodforestbank.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 12, 2006.
On June 15, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <woodforestbank.com> domain name 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 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 11, 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@woodforestbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <woodforestbank.com> domain name is confusingly similar to Complainant’s WOODFOREST NATIONAL BANK mark.
2. Respondent does not have any rights or legitimate interests in the <woodforestbank.com> domain name.
3. Respondent registered and used the <woodforestbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Woodforest National Bank, provides numerous banking services, including in interstate commerce. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its WOODFOREST NATIONAL BANK mark (Reg. 2,935,976 issued March 29, 2005). According to official USPTO registration, the mark has been used in commerce since March 2, 1995.
Respondent registered the <woodforestbank.com> domain name on April 30, 2003. The disputed domain name resolves to a website that contains links to other financial institutions which are in direct competition with 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. 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.
Before examining whether Respondent’s <woodforestbank.com> domain name is identical or confusingly similar to Complainant’s mark, Complainant must first establish applicable trademark rights in the WOODFOREST NATIONAL BANK name under Policy ¶ 4(a)(i). Complainant’s official trademark rights in the mark do not pre-date the registration of the domain name. In order to therefore have standing, Complainant must assert common law rights that pre-date the registration of the disputed domain name. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Despite Complainant’s failure to assert common law rights in the mark that pre-date registration of the disputed domain name, the Panel finds that the trademark registration with the USPTO that lists the mark’s first use in commerce as March 2, 1995 is sufficient evidence to establish the required secondary meaning in order for Complainant to possess common law rights. See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
The Panel finds that Respondent’s disputed domain name is
confusingly similar to Complainant’s WOODFOREST NATIONAL BANK mark as it
incorporates the dominant features of Complainant’s mark, omitting only
“national” from the disputed domain name.
Such an omission is not enough to negate the confusing similarity
between the disputed domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Am. Eagle
Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005)
(finding the <americaneaglestores.com> domain name to be confusingly
similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also
WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20,
2001) (finding that the <westjets.com> domain name is confusingly similar
to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER
mark).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <woodforestbank.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to respond to the Complaint presents a rebuttable presumption that Respondent lacks rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s WOODFOREST NATIONAL BANK and that Respondent is not associated
with Complainant in any way. Moreover,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the disputed domain name.
There is also no evidence in the record to suggest that Respondent is or
has ever been known by the disputed domain name. In Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found
that the respondent did not have rights in a domain name when the respondent
was not known by the mark. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’
in any derivation.”). Consequently, the
Panel finds that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4(c)(ii).
The evidence on record indicates that Respondent is using the disputed domain name to divert Internet users attempting to find Complainant’s website to a website which displays links to Complainant’s competitors. The Panel finds that such use of Respondent’s disputed domain name does not constitute 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 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 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the disputed domain name that contains the dominant
portions of Complainant’s mark.
Respondent is using the <woodforestbank.com> domain name to
redirect Internet users to a website that features links to third-party
websites which are in direct competition with Complainant. Such competing use of the Complainant’s mark
is evidence of the Respondent’s knowledge of Complainant’s use of the mark prior
to the official registration by Complainant of the WOODFOREST NATIONAL BANK
mark. The Panel finds that such a
competing use constitutes disruption and is evidence of bad faith registration
and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com,
Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding
bad faith where the respondent’s sites pass users through to the respondent’s
competing business); see also EBAY,
Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites).
Based on the uncontested evidence presented by Complainant, the Panel infers that Respondent receives click-through fees for diverting Internet users to third-party websites. Furthermore, Respondent’s disputed domain name is capable of creating confusion as to Complainant’s affiliation with the <woodforestbank.com> domain name. In Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003), the panel found that the respondent used the <land-cruiser.com> domain name to advertise its business, which sold goods in competition with the complainant, and that such use established bad faith as defined in Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). The Panel thus concludes that Respondent’s use of the disputed domain name for commercial gain is equivalent to bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
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 <woodforestbank.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 27, 2006
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