OneWest Bank, FSB v. Zhichao Yang
Claim Number: FA1301001481432
Complainant is OneWest Bank, FSB (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indymacmorgageservice.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2013; the National Arbitration Forum received payment on January 22, 2013.
On January 23, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <indymacmorgageservice.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2013 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@indymacmorgageservice.com. Also on January 23, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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
a) Complainant is an FDIC-insured bank offering a wide array of financial products and services for individual consumers and business, including mortgage lending services. Complainant promotes its products and services via the <onewestbank.com> and <owb.com> domain names. In connection with these goods and services, Complainant registered the INDYMAC mark (Reg. No. 2,522,907 registered Dec. 25, 2001) with the United States Patent and Trademark Office (“USPTO”).
b) The <indymacmorgageservice.com> domain name is confusingly similar to the INDYMAC mark. The domain name is comprised of Complainant’s INDYMAC mark and the descriptive phrase “mortgageservice” is misspelled as “morgageservice”
c) Respondent is not commonly known by the <indymacmorgageservice.com> domain name. Complainant has not authorized Respondent to use the INDYMAC mark and the WHOIS record does not suggest that Respondent is commonly known by the disputed domain name.
d) The <indymacmorgageservice.com> domain name resolves to a commercial pay-per-click website featuring links that relate directly to Complainant’s business under headings such as “Adjustable Rate Mortgage” and “Mortgage Calculator.”
e) Respondent’s registration and use of trademark-related domain names has been the subject of at least three adverse UDRP decisions. See Nationstar Mort. LLC v. Zhichao Yang, FA 1450754 (Nat. Arb. Forum Oct. 10, 2012); see also State Farm Mut. Auto. Ins. Co. v. Zhichao Yang, FA 1461251 (Nat. Arb. Forum Oct. 16, 2012); see also Redcats USA v. Zhichao Yang, FA 1462454 (Nat. Arb. Forum Oct. 10, 2012).
f) Respondent disrupts complainant’s business by using the disputed domain name for a website featuring links to directly competing services.
g) Respondent registered and uses the <indymacmorgageservice.com> domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s INDYMAC mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website association with Complainant. The <indymacmorgageservice.com> domain name is used to display links to websites that offer competing goods and services in the mortgage services industry.
h) Respondent’s actions constitute typosquatting in bad faith. Respondent registered the <indymacmorgageservice.com> domain name to take advantage of Internet users’ mistypings.
i) Respondent’s registration of the <indymacbanck.com> domain name despite having knowledge of Complainant’s rights in the INDYMAC mark further demonstrates bad faith. Given Complainant’s federal registrations of the INDYMAC mark, the fame of Complainant’s mark, Complainant’s long-standing use of the mark, and the fact that the <indymacmorgageservice.com> domain name is comprised of the INDYMAC mark and a misspelled descriptive phrase, Respondent undoubtedly knew of Complainant’s rights in the INDYMAC mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Panel notes that Respondent registered the <indymacmorgageservice.com> domain name on July 13, 2012.
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 states that it is an FDIC-insured bank offering a wide array of financial products and services for individual consumers and business, including mortgage lending services. Complainant points out that it promotes its products and services via the <onewestbank.com> and <owb.com> domain names. Complainant explains that, in connection with these goods and services, it registered the INDYMAC mark (Reg. No. 2,522,907 registered Dec. 25, 2001) with the USPTO. Regardless of the location of the parties, the registration of a mark with a trademark authority is evidence of rights in the mark. 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). Therefore, the Panel finds that Complainant has rights in the INDYMAC mark pursuant to Policy ¶ 4(a)(i).
The <indymacmorgageservice.com> domain name is confusingly similar to the INDYMAC mark. The domain name is comprised of Complainant’s INDYMAC mark and the descriptive phrase “mortgageservice” misspelled as “morgageservice”. The panel in Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), held that the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <indymacmorgageservice.com> domain name is confusingly similar to Complainant’s INDYMAC mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by the <indymacmorgageservice.com> domain name. According to Complainant, Complainant has not authorized Respondent to use the INDYMAC mark. Further, the WHOIS record, which the Panel notes lists “Zhichao Yang” as the domain name registrant, does not suggest that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <indymacmorgageservice.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s lack of rights and legitimate interests is further evidenced by Respondent’s use of the disputed domain name. Complainant notes that the <indymacmorgageservice.com> domain name resolves to a commercial pay-per-click website featuring links that relate directly to Complainant’s business under headings such as “Adjustable Rate Mortgage” and “Mortgage Calculator.” Panels have held that the display of links which are competitive with the products of the complainant is not a use of a domain name which is afforded protection from UDRP scrutiny by Policy ¶¶ 4(c)(i) and 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). Therefore, the Panel finds that Respondent’s use of the <indymacmorgageservice.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy 4(c)(iii) legitimate noncommercial or fair use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and uses the disputed domain name in bad faith. Complainant contends that Respondent’s registration and use of trademark-related domain names has been the subject of at least three adverse UDRP decisions. See Nationstar Mort. LLC v. Zhichao Yang, FA 1450754 (Nat. Arb. Forum Oct. 10, 2012); see also State Farm Mut. Auto. Ins. Co. v. Zhichao Yang, FA 1461251 (Nat. Arb. Forum Oct. 16, 2012); see also Redcats USA v. Zhichao Yang, FA 1462454 (Nat. Arb. Forum Oct. 10, 2012). The Panel notes that the Nationstar case cited above ordered the transfer of ten domain names from Respondent to Complainant. Panels have previously held that multiple adverse UDRP decisions establishes a pattern of bad faith that may allow an inference of bad faith in future disputes. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent registered and uses the <indymacmorgageservice.com> domain name in a pattern of bad faith in accordance with Policy ¶ 4(b)(ii).
Complainant next alleges that Respondent’s bad faith is evidenced under Policy ¶ 4(b)(iii). Complainant argues that Respondent disrupts complainant’s business by using the disputed domain name for a website featuring links to directly competing services. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel found that the respondent had acted in bad faith having registered and used a domain name to display links to goods and services that were competitive with those that the complainant provided. Accordingly, the Panel concludes that Respondent registered and uses the <indymacmorgageservice.com> domain name disruptively, which shows bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent registered and uses the <indymacmorgageservice.com> domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s INDYMAC mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website association with Complainant. Complainant notes that the <indymacmorgageservice.com> domain name is used to display commercial links to websites that offer competing goods and services in the mortgage services industry. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel held that the registration and use of a domain name to display competing links takes commercial advantage of Internet users’ mistakes regarding the source of the disputed domain name and thus was done in bad faith. Similarly, the Panel finds that Respondent registered and uses the <indymacmorgageservice.com> domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s INDYMAC mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website association with Complainant pursuant to Policy ¶ 4(b)(iv).
Complainant lastly contends that Respondent’s registration of the <indymacbanck.com> domain name despite having knowledge of Complainant’s rights in the INDYMAC mark further demonstrates bad faith. According to Complainant, given Complainant’s federal registrations of the INDYMAC mark, Complainant’s long-standing use of the mark, and the fact that the <indymacmorgageservice.com> domain name is comprised of the INDYMAC mark and a misspelled descriptive phrase, Respondent undoubtedly knew of Complainant’s rights in the INDYMAC mark prior to registering the disputed domain name. The Panel therefore finds that Respondent had knowledge of Complainant's mark and rights and consequently determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "knowledge of Complainant's mark when registering the disputed domain name").
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indymacmorgageservice.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 4, 2013
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