Mahopac National Bank v. Wanzhongmedia / Zhong Wan
Claim Number: FA1309001517651
Complainant is Mahopac National Bank (“Complainant”), represented by Neal L. Slifkin of Harris Beach PLLC, New York, USA. Respondent is Wanzhongmedia / Zhong Wan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mahopacbank.com>, registered with EuroDNS S.A.
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 appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2013; the National Arbitration Forum received payment on September 3, 2013.
On September 5, 2013, EuroDNS S.A. confirmed by e-mail to the National Arbitration Forum that the <mahopacbank.com> domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name. EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. 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 September 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@mahopacbank.com. Also on September 16, 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 October 10, 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’s Contentions
1. Complainant has common law rights in the MAHOPAC NATIONAL BANK mark used in connection with banking and financial services.
a. Complainant registered with the United States Department of the Treasury Office of the Comptroller of the Currency (“OCC”) under its Mahopac National Bank name.
b. Complainant has 15 offices all operating under the MAHOPAC NATIONAL BANK service mark.
c. The MAHOPAC NATIONAL BANK mark has acquired a secondary meaning in the banking industry through its continuous and exclusive use of the term.
2. Respondent’s <mahopacbank.com> domain name is confusingly similar to Complainant’s MAHOPAC NATIONAL BANK mark.
a. Respondent eliminates the word “national” from Complainant’s mark.
b. The term “national” is a descriptive term that is likely to be missed.
c. The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant for the purposes of distinguishing Complainant’s mark from Respondent’s disputed domain name.
3. Respondent has no rights or legitimate interests in the disputed domain name.
a. Mahopac is an Algonquin Native American word meaning “Lake of the Great Serpent” and is the name of a municipality in New York State.
b. Respondent’s use of the disputed domain name can be seen as an attempt to hijack traffic intended for Complainant’s business.
c. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
d. Respondent receives click-through fees from the financial services-related advertisements found on the resolving website.
e. The WHOIS information for the disputed domain name lists “Wanzhongmedia/Zhong Wan” as registrant for the disputed domain name.
f. Complainant has never authorized Respondent to use the MAHOPAC name in connection with banking or banking websites.
4. Respondent registered and is using the disputed domain name in bad faith.
a. Respondent’s registration of the disputed domain name is part of a pattern of bad faith registrations.
b. Respondent is redirecting traffic intended for Complainant’s business to Respondent’s site, thus disrupting Complainant’s business.
c. Respondent is attempting to attract for commercial gain, users to Respondent’s site by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
d. Respondent uses the disputed domain name to resolve to a website featuring links for Complainant’s competitors, from which Respondent presumably receives click-through fees.
B. Respondent
Respondent failed to submit a response in this proceeding. However, the Panel notes that Respondent created the <mahopacbank.com> domain name on February 29, 2008.
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 does not present any evidence that it owns trademark registrations with any national trademark agency for the MAHOPAC NATIONAL BANK or MAHOPAC service marks. A complainant need not own a valid trademark registration for its mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Complainant alleges that it has common law rights in the United States in its MAHOPAC NATIONAL BANK service mark as well as the “MAHOPAC” service mark through continuous, widespread use of the mark and trade name long before 2008 in connection with its banking services. Complainant provides evidence of its longstanding use of the MAHOPAC NATIONAL BANK mark in connection with its banking and financial services by providing the Panel, in response to an Interlocutory Order, with advertising brochures predating Respondent’s domain registration date showing the use of the term MAHOPAC NATIONAL BANK as a service mark. Complainant has also provided an affidavit showing substantial marketing expenditures with respect to the MAHOPAC NATIONAL BANK mark in the years 2006 and 2007. Complainant claims that over the 85 years of its continuous and exclusive use of the service mark, the public now associates the words "Mahopac" together with “bank” to identify Complainant. Complainant further argues that if the term MAHOPAC is geographically descriptive, the term has acquired secondary meaning in the banking industry. Previous panels have found that a complainant has acquired secondary meaning in a mark when complainant has continuously used the mark in connection with a business purpose. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years). Based on the evidence that Complainant has provided, the Panel finds that Complainant has common law rights in the MAHOPAC NATIONAL BANK mark predating Respondent’s registration of the disputed domain name pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <mahopacbank.com> domain name is confusingly similar to Complainant’s MAHOPAC NATIONAL BANK mark. Complainant states that the only significant difference is the elimination of the word “national.” Complainant claims that consumers are not likely to notice that the word “national” is missing in the disputed domain name. Previous panels have found that deleting descriptive words is insufficient to differentiate a disputed domain name from a given mark. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). This Panel therefore concludes that Respondent’s <mahopacbank.com> domain name is confusingly similar to Complainant’s MAHOPAC NATIONAL BANK mark within the meaning of Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or legitimate interests in the <mahopacbank.com> domain name because Respondent is not commonly known by it under Policy ¶ 4(c)(ii). Complainant states that there is no indication on the record suggesting that Respondent is commonly known by the disputed domain name, including the WHOIS information. Complainant states that the registrant for the disputed domain name is listed as “Wanzhongmedia/ Zhong Wan” in the WHOIS information. Complainant points out that the word “Mahopac” is an Algonquin Native American word meaning “Lake of the Great Serpent” and is the name of a municipality in New York State. Complainant contends that the word “Mahopac” has no significant meaning in the finance industry, outside the meaning that Complainant has acquired through its continuous and exclusive use. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no indication on the record, including the WHOIS information, showing that respondent is commonly known by it. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel finds that Respondent has no rights or legitimate interests in the <mahopacbank.com> domain name because it is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent has no rights or interests in the <mahopacbank.com> domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Complainant argues that Respondent uses the confusingly similar domain name in order to draw Internet users searching for Complainant’s business to Respondent’s website, so Respondent will receive click-through fees through the links present on the website. The Panel notes that the website resolving from the disputed domain name features links including, “Online Checking account,” “Bank of America Online,” “Online Internet Banking,” “View Today’s CD Rates,” and “Local Banks Directory.” Directing Internet users to a website not affiliated with Complainant for related services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that Respondent has no rights or interests in the <mahopacbank.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). Complainant claims that Respondent uses the disputed domain name to redirect traffic away from Complainant’s business and to Respondent’s competing business. The Panel notes that the links present on the website resolving from the disputed domain name all involve finance-related issues, which is the same industry in which Complainant operates. Previous panels have found that using a confusingly similar domain name in this way disrupts a complainant’s business in violation of Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). This Panel similarly finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant also asserts that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant states that Respondent is creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the services linked to on Respondent’s website. Complainant claims that the links present on the website resolving from the disputed domain name advertise links for competing businesses, from which Respondent collects click-through fees. Previous panels have found that using a confusingly similar domain name to resolve to a website featuring competing links from which the respondent commercially gains indicates bad faith use and registration. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). This Panel similarly concludes that Respondent has also registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
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 <mahopacbank.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 12, 2013
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