First Horizon National Corporation v. Giorgi Charkviani
Claim Number: FA1204001438288
Complainant is First Horizon National Corporation (“Complainant”), represented by Julie R. Baldridge, Tennessee, USA. Respondent is Giorgi Charkviani (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firsttennesseeonlinebanking.net>, registered with UK2 Group LTD.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2012; the National Arbitration Forum received payment on April 5, 2012.
On April 9, 2012, UK2 Group LTD confirmed by e-mail to the National Arbitration Forum that the <firsttennesseeonlinebanking.net> domain name is registered with UK2 Group LTD and that Respondent is the current registrant of the name. UK2 Group LTD has verified that Respondent is bound by the UK2 Group LTD registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@firsttennesseeonlinebanking.net. Also on April 17, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
1) Complainant owns rights in its FIRST TENNESSEE mark through its various registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,348,125 registered May 9, 2000).
2) Complainant does business in the banking and financial service industry using the FIRST TENNESEE mark.
3) Respondent registered the <firsttennesseeonlinebanking.net> domain name to offer banking and financial services online.
4) Respondent’s domain name is confusingly similar to Complainant’s FIRST TENNESSEE mark.
5) Respondent does not have license or consent to use the FIRST TENNESSEE mark in any manner.
6) Respondent had notice of Complainant’s rights in the mark.
7) Respondent benefits financially from its use of the disputed domain name.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant claims to own rights in the FIRST TENNESSEE mark through its multiple trademark registrations with the USPTO (e.g., Reg. No. 2,348,125 registered May 9, 2000). Previous panels have stated that a complainant establishes rights in a mark by registering it with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). The Panel concludes that Complainant effectively established rights in its FIRST TENNESSEE mark under Policy ¶ 4(a)(i) through its registrations of the mark with the USPTO. Further, the Panel finds that Complainant is not required to register its mark in the country of Respondent’s residence and operation for the purposes of Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); 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).
Complainant argues that the <firsttennesseeonlinebanking.net> domain name is confusingly similar to its FIRST TENNESSEE mark, stating that adding two descriptive terms to the mark (“online” and “banking”), as well as a generic top-level domain (“gTLD”) “.net,” do not diminish confusing similarity. The Panel notes that the domain name eliminates the space between the two words in the mark. In Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003), the panel stated that adding a word descriptive of the complainant’s services, such as “bank,” does not alleviate confusing similarity to the mark. Further, the panel in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) held that because spaces in domain names are impermissible, the disputed domain name that removed the spaces in the mark are confusingly similar to the mark. The panel further held that a gTLD such as “.net” is a required element in domain names, and found the respondent’s domain name confusingly similar to the complainant’s mark. The Panel finds that the changes made to the mark do not sufficiently alter the domain name so as to eliminate confusing similarity under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden 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 Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no connection with Complainant’s business or the FIRST TENNESSEE mark, and has not been granted license or consent to use the mark in any way. Complainant provided the WHOIS information for the <firsttennesseeonlinebanking.net> domain name, which identifies the registrant as “Giorgi Charkviani.” The panel in IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), stated that the respondent had no rights and legitimate interests in the domain name because it was not authorized to use the complainant’s mark in any way, and failed to provide evidence showing it was commonly known by the domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that there was no evidence, including in the WHOIS information, that supported a finding that the respondent was commonly known by the disputed domain name. The Panel concludes that as a result of Respondent’s lack of reply, as well as the WHOIS information, there is no evidence demonstrating that Respondent is commonly known by the <firsttennesseeonlinebanking.net> domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s disputed domain name resolves to a website that appears to provide online banking services, with links to “First Tennessee online banking,” which, when clicked on, reloads the page. Complainant alleges that Respondent does not provide actual banking services at its website, and makes references to Complainant’s business. The Panel concludes that use of a domain name to host a webpage that does not provide services is not 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 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).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <firsttennesseeonlinebanking.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 11, 2012
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