MB Financial Bank, N.A. v. Thomas Bezas
Claim Number: FA1311001531913
Complainant is MB Financial Bank, N.A. (“Complainant”), represented by Stephanie J. Harris of Goldberg Kohn Ltd., Illinois, USA. Respondent is Thomas Bezas (“Respondent”), New York. USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mandbfinancial.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 appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2013; the National Arbitration Forum received payment on November 26, 2013.
On November 27, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mandbfinancial.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 December 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@mandbfinancial.com. Also on December 5, 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 December 31, 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 is a national banking association that provides a full selection of banking and financial services under the MB FINANCIAL mark.
2. Complainant owns registrations for the MB FINANCIAL BANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,467,873 registered July 10, 2001).
3. Respondent registered the disputed domain name on March 11, 2013.
4. Respondent’s <mandbfinancial.com> disputed domain name is confusingly similar to Complainant’s MB FINANCIAL mark.
a. Respondent adds the word “and” between the letters “M” and “B” in the MB FINANCIAL mark.
b. Respondent adds the generic top-level domain “.com” to Complainant’s mark.
c. Respondent deletes the space between the “MB” and “Financial” in Complainant’s mark.
5. Respondent has no rights or legitimate interests in the <mandbfinancial.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
i. Respondent uses the disputed domain name to market financial services that compete with Complainant’s services and profit from Complainant’s well-known mark.
ii. Respondent lists personal and business financial services that are identical to complainant’s services.
iii. Respondent’s disputed domain name resolves to an apparently fake website and provides nonfunctional information.
6. Respondent has registered and is using the <mandbfinancial.com> domain name in bad faith.
a. Respondent uses the disputed domain name to compete with Complainant and disrupt Complainant’s business.
b. Respondent purports to be a competitor of Complainant’s and uses the disputed domain name to redirect Internet users to a website claiming to offer financial services.
c. Respondent’s disputed domain name resolves to a sham website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 its business is a national banking association that provides a full selection of banking and financial services under the MB FINANCIAL mark. Complainant contends that it has rights in the MB FINANCIAL under Policy ¶ 4(a)(i). To bolster this claim, Complainant provides evidence that it owns registrations for the MB FINANCIAL mark with the USPTO (e.g., Reg. No. 2,467,873 registered July 10, 2001). Complainant alleges that Respondent did not register the disputed domain name until March 11, 2013. Previous panels have frequently concluded that providing evidence of a registration for a trademark with the USPTO is sufficient to indicate rights in a given mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel concludes that Complainant has rights in the MB FINANCIAL mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <mandbfinancial.com> disputed domain name is confusingly similar to Complainant’s MB FINANCIAL mark under Policy ¶ 4(a)(i). The Panel notes that Respondent adds the word “and” between the letters “M” and “B” and that this difference is insufficient to distinguish it from
Complainant's MB Financial mark. See, The Neiman Marcus Group, Inc. v. Domaindeals FA0785521 (Nat. Arb. Forum Oct. 13, 2006) (finding <neimanandmarcus.com confusingly similar to the marks “Neiman Marcus” and “Neiman-Marcus” when it added only the generic word "and" and deleted the hyphen or space between the words); see also, The Royal Bank of Scotland Group plc v. RBS and Associates, FA1238853 (Nat. Arb. Forum Jan. 26, 2009 (finding <rbsandassociates.com> confusingly similar to the mark RBS when it added only the generic words "and associates"); see also, Yarnmarket Inc. v. yarndexforyarn, FA1288402 (Nat Arb. Forum Dec. 8, 2009) (finding that the addition of a "common generic conjunction" did "not diminish the similarity" between complainant's mark and respondent's domain name).
The Panel concludes that Respondent’s <mandbfinancial.com> disputed domain name is confusingly similar to Complainant’s MB FINANCIAL BANK mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or legitimate interests in the <mandbfinancial.com> domain name under Policy ¶ 4(c)(ii). Complainant claims that Respondent is not commonly known by the disputed domain name. Complainant argues that it has not authorized Respondent to use its mark in any way. The Panel notes that the WHOIS information for the disputed domain name lists “Thomas Bezas” as the registrant. Previous panels have routinely concluded that a respondent is not commonly known by a disputed domain name where there is no evidence on the record, including the WHOIS information, suggesting that respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” to be a factor in determining that Policy ¶ 4(c)(ii) did not apply). The Panel determines that Respondent is not commonly known by the <mandbfinancial.com> domain name under Policy ¶ 4(c)(ii), as there is nothing in this record to suggest otherwise.
Complainant claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant asserts that Respondent uses the disputed domain name to market financial services that compete with Complainant’s services and profit from Complainant’s well-known mark. Complainant further claims that Respondent lists personal and business financial services on its resolving website that are identical to complainant’s services. The Panel notes that Respondent’s resolving website features the heading “M and B Financial” with the links “Home Page,” “Services,” and “About Us.” Complainant further contends that Respondent’s disputed domain name resolves to an apparently fake website and provides nonfunctional information. Complainant argues that under the “About Us” section of the website Respondent provides that “Michael Kingsley” is the President and CEO. The Panel notes that Respondent lists the contact phone number as “(347)-820-0168” and email as “michael.kingsley@mandbfinancial.com.” Complainant contends that this contact information is non-functional and that it is not possible to contact Respondent through these avenues. Based on, and accepting the foregoing, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant asserts that Respondent purports to be a competitor of Complainant and uses the disputed domain name to redirect Internet users to a website claiming to offer financial services. Prior UDRP Panels have found that a respondent acts in bad faith under Policy ¶ 4(b)(iv) when it uses a confusingly similar domain name to redirect Internet users to a website apparently offering services similar to complainant’s and thereby commercially gaining. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further alleges that Respondent’s disputed domain name resolves to a website that features false contact information. Accepting this allegation as true since it is uncontested, the Panel finds this to constitute further evidence of Respondent’s intent to confuse Internet users as to the legitimacy of Respondent’s website and Complainant’s involvement with Respondent’s website.
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 <mandbfinancial.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 10, 2014
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