Whitney National Bank v.
Easynet Ltd c/o Customer Services Department
Claim Number: FA0703000944330
PARTIES
Complainant is Whitney National Bank (“Complainant”), represented by Raymond
G. Areaux, of Carver, Darden, Koretzky, Tessier, Finn,
Blossman & Areaux, LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whitneynationalbankers.com>,
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On March 23, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 12, 2007 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@whitneynationalbankers.com by e-mail.
A Response was received electronically before the deadline for Response, but the National Arbitration Forum did not receive a hard copy of the Response. As a result, the Response has been deemed deficient pursuant to Supplemental Rule 5(a).
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <whitneynationalbankers.com> domain name, the domain name at issue, is confusingly similar to Complainant’s mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response which opposed any relief sought by Respondent and would have been deficient for consideration in this proceeding in any event.
FINDINGS
Complainant has used the trademarks and service marks WHITNEY and WHITNEY BANK for over one hundred and twenty (120) years (i.e., since its inception in 1883). Additionally, Complainant has used the term WHITNEY in conjunction with NATIONAL BANK as part of its name for at least ninety-four (94) years.
Complainant
is the oldest continuously operating bank in
Provided by Complainant is proof of USPTO registration of WHITNEY in connection with banking and other financial services.
Complainant has not licensed Respondent to use its marks in connection with the domain name at issue and Respondent is not commonly known by the domain name at issue.
Respondent does not operate a bank in connection with the domain name at issue. Respondent’s use of the term “bank” in the <whitneynationalbankers.com> domain name creates the false and misleading impression that Respondent operates a bank. Respondent’s use of this domain name is calculated to mislead, confuse, and divert consumers who are seeking the goods and services provided by Complainant. A use calculated to mislead, confuse, and divert consumers does not constitute a bona fide offering of goods or services.
Respondent
has provided a Response that was deficient because the National Arbitration Forum has determined that a hard copy
of the Response was not received by the Response
deadline. The Panel determined not to
consider Respondent’s submission because
it did not oppose the granting of any relief requested by Complainant and is
not in compliance with ICANN Rule 5(a)
(no hard copy timely received by the National Arbitration
Forum). See Telstra Corp. v. Chu, D2000-0423 (WIPO
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 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;
(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 rights
in the WHITNEY mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 1,311,441 issued
Respondent’s
<whitneynationalbankers.com> domain name includes Complainant’s WHITNEY
mark in its entirety and adds the generic terms “national” and “bankers” as well as the generic top-level domain (“gTLD”)
“.com.” The additions of generic words with an obvious relationship to
Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Space Imaging LLC v. Brownell, AF-0298 (eResolution
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under
Policy ¶ 4(a)(ii); the burden now shifts to Respondent to show it does have rights or
legitimate interests. See Hanna-Barbera Prods.,
Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Respondent
is not commonly known by the domain name at
issue. The WHOIS information identifies Respondent as “Easynet Ltd,” and
Respondent is not licensed or authorized
to use the WHITNEY mark. Therefore,
Respondent is not commonly known by
the <whitneynationalbankers.com>
domain name pursuant to Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat.
Arb. Forum
Respondent is not making any use of the <whitneynationalbankers.com> domain name.
Respondent’s failure to use the disputed domain name does not
constitute a bona fide offering of
goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See State
Fair of
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
is not making any use of the <whitneynationalbankers.com> domain name.
Respondent’s failure to make
use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group
Ltd. v. Clericalmedical.com, D2000-1228 (WIPO
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <whitneynationalbankers.com> domain
name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 30, 2007
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