IndyMac Bank F.S.B. v. Gunther Veidenberg d/b/a Ou
Computernik
Claim Number: FA0705000976595
Complainant is IndyMac Bank F.S.B. (“Complainant”), represented by B.
Brett Heavner, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <indimacb2b.com>, registered with Internet Service Registrar, Inc.
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.
James A. Crary as panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 4, 2007.
On May 9, 2007, Internet Service Registrar, Inc. confirmed by e-mail to the National Arbitration Forum that the <indimacb2b.com> domain name is registered with Internet Service Registrar, Inc. and that Respondent is the current registrant of the name. Internet Service Registrar, Inc. has verified that Respondent is bound by the Internet Service Registrar, 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 May 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 30, 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@indimacb2b.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <indimacb2b.com> domain name is confusingly similar to Complainant’s INDYMAC mark.
2. Respondent does not have any rights or legitimate interests in the <indimacb2b.com> domain name.
3. Respondent registered and used the <indimacb2b.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, IndyMac Bank F.S.B., is a federally chartered savings bank and a leading mortgage lender. In connection with the provision of these services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”), including the INDYMAC mark (Reg. No. 2,212,512 issued December 22, 1998).
Respondent registered the disputed domain name on June 5, 2006. The disputed domain name resolves to a pay-per-click website featuring links to various competing and commercial websites. Respondent offered to sell the disputed domain name registration to Complainant for amounts between $1,250 and $1,500.
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 asserts rights in the INDYMAC mark through
registration of the mark with the USPTO.
The Panel finds that Complainant’s timely registration and subsequent
use of the INDYMAC mark establishes its rights in the mark pursuant to Policy ¶
4(a)(i). See 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.”); see also 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.”).
Respondent’s <indimacb2b.com> domain name contains a misspelled version of Complainant’s INDYMAC mark, adds the descriptive suffix “b2b,” which relates to Complainant’s <indymacb2b.com> domain name, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a domain name containing a misspelled version of a protected mark, a descriptive suffix and a gTLD leads to a finding of confusing similarity to the mark pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence proving it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). 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 Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s <indimacb2b.com>
domain name resolves to a website that features pay-per-click links to
competing commercial websites. The Panel
finds that Respondent’s use is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial of fair use pursuant to
Policy ¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s
marks to send Internet users to a website which displayed a series of links,
some of which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
A review of Respondent’s WHOIS
information reveals that the registrant of the <indimacb2b.com> domain name is
“Gunther Veidenberg d/b/a Ou Computernik.”
Respondent has not proffered evidence indicating that it is commonly
known by the disputed domain name.
Consequently, the Panel finds that Respondent is not commonly known by
the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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.”); see also Ian Schrager Hotels,
L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003)
(finding that without demonstrable evidence to support the assertion that a
respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent has offered to sell the disputed domain name registration to Complainant for amounts between $1,250 and $1,500. Both amounts are well above the typical highest domain name registration fee and are presumably above any out-of-pocket costs incurred by Respondent. The Panel finds that Respondent’s offers to sell the disputed domain name registration for amounts higher than Respondent’s out-of-pocket costs meet the registration and use in bad faith element of Policy ¶ 4(b)(i). See Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the respondent demonstrated bad faith by registering the domain name with the intent to transfer it to the complainant for $3,000, an amount in excess of its out of pocket costs); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that the respondent registered and used the domain names to profit where the respondent offered to sell the domain names for $2,300 per name).
Complainant alleges that Respondent is disrupting Complainant’s business by using the disputed domain name to provide links to competing financial and banking services websites. The Panel finds that Respondent’s diversionary use of the disputed domain name to veer unsuspecting Internet users to competitng websites suggests registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also 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).
Complainant further alleges that Respondent uses the
disputed domain name to intentionally attract, for commercial gain, Internet
users to its pay-per-click website. The
Panel finds that Respondent’s use suggests registration and use in bad faith
pursuant to Policy ¶ 4(b)(iv). See 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.”); 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 <indimacb2b.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: June 11, 2007
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