Whitney National Bank v. Henry Tsung
Claim
Number: FA0401000227652
Complainant is Whitney National Bank (“Complainant”), represented
by Raymond G. Areaux, of Carver Darden Koretzky Tessier Finn Blossman & Areauz LLC, 1100 Poydras Street, Suite 2700, New
Orleans, LA, USA 70163. Respondent is Henry
Tsung (“Respondent”), No. 2, Alley 4, Lane 177, Swei Road, Taipei, Taiwan
356021.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwwhitneybank.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.com (hereinafter “Dotregistrar.com”).
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 19, 2004; the Forum received a hard copy of the
Complaint on January 19, 2004.
On
January 21, 2004, Dotregistrar.com confirmed by e-mail to the Forum that the
domain name <wwwwhitneybank.com> is registered with Dotregistrar.com
and that Respondent is the current registrant of the name. Dotregistrar.com has
verified that Respondent is bound by the Dotregistrar.com 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
January 22, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 11, 2004 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@wwwwhitneybank.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
February 20, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following
assertions:
1. Respondent’s <wwwwhitneybank.com>
domain name is confusingly similar to Complainant’s WHITNEY BANK mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwwhitneybank.com> domain name.
3. Respondent registered and used the <wwwwhitneybank.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Whitney National Bank, has operated under the WHITNEY BANK mark for over 120
years in connection with banking and financial services. Through its bank and
affiliates Complainant offers commercial, retail and international banking
services thoughout the Gulf South region of the United States. In addition to
its widespread use of the WHITNEY BANK mark in commerce, Complainant has
obtained numerous registrations for the WHITNEY mark, also for use in
connection with banking services. Complainant’s registrations for the WHITNEY
mark, such as U.S. Reg. No. 2,032,935, predate Respondent’s registration of the
disputed domain name. Complainant also registered and used the
<whitneybank.com> domain name prior to Respondent’s registration and use
of the disputed domain name.
Respondent,
Henry Tsung, registered the <wwwwhitneybank.com> domain name on
October 28, 2003. The website associated with the disputed domain name contains
a series of hyperlinks to online coupons, with titles such as “Free Brand Name
Coupons” and “Free Local Store Coupons.”
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 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 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.
Complainant has
established common-law rights in the WHITNEY BANK mark through use of the mark
in commerce for over 120 years. Additionally, Complainant’s rights in the
WHITNEY mark (for banking services) are established through registration of the
mark on the Principal Register of the U.S. Patent and Trademark Office.
Respondent’s <wwwwhitneybank.com>
domain name is confusingly similar to Complainant’s common-law WHITNEY
BANK mark. Adding the prefix for the world-wide web to Complainant’s mark does
not diguise the fact that the dominant feature of the domain name is
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”); see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$,
FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's
<wwwdana.com> domain name confusingly similar to Complainant's registered
DANA mark because Complainant's mark remains the dominant feature).
Accordingly, the
Panel finds that the <wwwwhitneybank.com> domain name is confusingly similar to Complainant’s WHITNEY BANK mark
under Policy ¶ 4(a)(i).
Previous Panels
have held that a respondent’s use of the “www” prefix in front of a valid
trademark for use in a domain name operates as prima facie evidence that
respondent has no rights and legitimate interests in the domain name. See
Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA
156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis á vis
Complainant). Respondent has not filed a Response rebutting Complainant’s case,
but even if it had, its use of the disputed domain name as a hook to draw
Internet users to a commercial coupon website, a website bearing no relation to
the term “Whitney Bank,” bolsters Complainant’s unrebutted claim that
Respondent lacks rights and legitimate interests in the disputed domain name. See
RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003)
(finding that Respondent has no rights or legitimate interests in the
<wwwremax.com> domain name as it is merely using Complainant’s mark to
earn profit from pop-up advertisements).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<wwwwhitneybank.com> domain
name under Policy ¶ 4(a)(ii).
Respondent is
using the disputed domain name in an attempt to ensnare Internet users seeking
Complainant’s <whitneybank.com> domain name. Respondent’s typosquatting
activities lead unsuspecting Internet users into accessing Respondent’s
commercial coupon website, from which it presumably profits. By registering a
domain name that uses Complainant’s mark to attract Internet users to its own
website for commerical gain, Respondent registered and used the disputed domain
name in bad faith. See Canadian Tire Corp., Ltd. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003)
(holding that the absence of a dot between the “www”and “canadiantire.com” in
the <wwwcanadiantire.com> domain name was likely to confuse Internet
users and evidences bad faith registration and use of the domain name); see
also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding
the <wwwdewalt.com> domain name was registered to “ensnare those
individuals who forget to type the period after the “www” portion of [a]
web-address,” evidence that the domain name was registered and used in bad
faith); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28,
2003) (finding that Respondent’s registration of an infringing domain name to
redirect Internet users to banner advertisements constituted bad faith use of
the domain name); see also Bama
Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding
bad faith where Respondent attracted users to advertisements).
The Panel thus
finds that Respondent registered and used the <wwwwhitneybank.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwwhitneybank.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
March 3, 2004
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