DECISION

 

Circuit City Stores West Coast, Inc. & First North American National Bank, NA v. Chris Bonner a/k/a CGB Investments, Inc.

Claim Number: FA0212000136297

 

PARTIES

Complainant is Circuit City Stores West Coast, Inc. & First North American National Bank, NA, Greenwood Village, CO (“Complainant”) represented by Robert M. Tyler, of McGuire Woods LLP.  Respondent is Chris Bonner a/k/a CGB Investments, Inc., The Woodlands, TX (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wwwfnanb.com>, registered with Go Daddy Software, 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 6, 2002; the Forum received a hard copy of the Complaint on December 9, 2002.

 

On December 6, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <wwwfnanb.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 December 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2002 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@wwwfnanb.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On January 8, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following assertions:

 

Respondent’s <wwwfnanb.com> domain name is confusingly similar to Complainant’s FNANB mark.

 

Respondent does not have any rights or legitimate interests in the <wwwfnanb.com> domain name.

 

Respondent registered and used the <wwwfnanb.com> domain name in bad faith.

 

B.     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Circuit City Stores West Coast, Inc. & First North American National Bank, NA, bring this dispute to protect its FNANB federal trademark (U.S. Reg. No. 2,192,263). First North American National Bank, NA, is a wholly-owned credit card bank subsidiary of Circuit City Stores, Inc, who is also the parent company of Circuit City Stores West Coast, Inc. Circuit City Stores West Coast, Inc. is the holder of rights in the FNANB mark, and licenses use of this mark to First North American National Bank, NA. For the purpose of this dispute, the Panel will treat each Complainant collectively as “Complainant.”

 

Complainant uses its mark in conjunction with banking services for bank customers offered via a global computer network, and has been doing so since 1990. Complainant has registered a domain name to reflect its mark at <fnanb.com>.

 

Respondent, Chris Bonner a/k/a CGB Investments, Inc., registered the <wwwfnanb.com> domain name on February 20, 2002, and is not licensed or authorized to use the FNANB mark for any purpose. Currently, the disputed domain name posts no original content other than a default “Coming Soon” page provided by the Registrar.

 

DISCUSSION

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 the 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.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the FNANB mark through registration on the Principal Register of the United States Patent and Trademark Office as well as through widespread and continuous use of the mark in commerce for over a decade.

 

Respondent’s <wwwfnanb.com> domain name is confusingly similar to Complainant’s FNANB mark. Respondent’s registration is a perfect example of “typosquatting,” taking advantage of Internet users who, when entering in a Uniform Resource Locator (“URL”), inadvertantly fail to add the period between the “www” and the second-level domain that they are attempting to reach. In this case, Internet users who are hoping to arrive at Complainant’s “www.fnanb.com” domain name but accidently fail to type a period after they have entered “www,” will be unsuspectingly diverted to Respondent’s <wwwfnanb.com> domain name. Typosquatting does not prevent a finding of confusing similarity between Respondent’s domain name and Complainant’s mark, especially as the dominant feature of the domain name remains Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

 

The addition of the top-level domain “.com,” a feature that is required for all domain name registrants, also fails to prevent the Panel from finding Respondent’s domain name to be confusingly similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

 

Accordingly, the Panel finds that the <wwwfnanb.com> domain name is confusingly similar to Complainant’s registered FNANB mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Policy paragraphs 4(c)(i)-(iii) list three circumstances illustrative of situations where Respondent could demonstrate rights or legitimate interests in the <wwwfnanb.com> domain name. As Respondent failed to respond to the Complaint, a showing by Complainant that none of these three circumstances apply to Respondent is sufficient for Complainant to meet its burden under the Policy. At that point, the burden shifts to Respondent to rebut Complainant’s allegations. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

 

In these circumstances, Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

 

Respondent does not use the <wwwfnanb.com> domain name for any purpose, and has not done so since its registration of the domain name over 10 months ago. In not using its domain name, Respondent is not making either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

 

No evidence supports the proposition that Respondent has ever been “commonly known by” the name WWWFNANB or <wwwfnanb.com>. As such, the Panel finds that Complainant has met its burden in showing that Respondent does not fall under the ambit of Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwfnanb.com> domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

While Policy paragraph 4(b) lists four circumstances evidencing bad faith use and registration of a domain name, that list is not meant to be all-inclusive. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

 

One example of bad faith use and registration not directly illustrated in the Policy, yet nevertheless representing bad faith use and registration of a domain name under Policy ¶ 4(a)(iii), is typosquatting. See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants). Respondent’s registration and use of the <wwwfnanb.com> domain name qualifies as typosquatting (simply adding a “www” prefix to a mark in which another has rights exemplifies typosquatting) and therefore evidences bad faith use and registration.

 

Further evidence of Respondent’s bad faith use and registration of the disputed domain name can be inferred from the fact that Respondent had actual knowledge of Complainant’s mark when it registered the infringing domain name, and subsequently used it to redirect Internet users to Complainant’s website. The FNANB mark is unique to Complainant and is an acronym for First North American National Bank. In examining the circumstances surrounding Respondent’s registration of the domain name (e.g., the domain name incorporates Complainant’s mark in its entirety), it becomes evident that Respondent had knowledge of Complainant’s rights in the mark prior to seeking registration of the subject domain name. Such registration and use is another non-enumerated example of bad faith under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

 

Finally, Respondent’s passive holding of the disputed domain name for over ten months evidences bad faith use and registration. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of Complainant).

 

Accordingly, the Panel finds that Respondent registered and used the <wwwfnanb.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

 

Accordingly, it is Ordered that the <wwwfnanb.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

John J. Upchurch, Panelist

Dated: January 13, 2003

 

 

 

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