MB Financial Bank, N.A. v. Digi Real
Estate Foundation
Claim
Number: FA0504000451104
Complainant is MB Financial Bank, N.A. (“Complainant”),
represented by Salvador K. Karottki of Goldberg, Kohn, Bell, Black, Rosenbloom and Moritz, Ltd., 55 East Monroe Street, Suite 3700,
Chicago, IL 60603. Respondent is Digi Real Estate Foundation (“Respondent”),
P.O. Box 7-5324, Panama City, N7 8DJ, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwmbfinancial.com>, registered with Enom,
Inc.
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 electronically on April
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 5, 2005.
On
April 6, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <wwwmbfinancial.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, Inc. 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
April 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 26, 2005 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@wwwmbfinancial.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 2, 2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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." 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 makes the following assertions:
1. Respondent’s <wwwmbfinancial.com>
domain name is confusingly similar to Complainant’s MB FINANCIAL mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwmbfinancial.com> domain name.
3. Respondent registered and used the <wwwmbfinancial.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, MB Financial Bank, N.A., is a national banking
association in the business of providing a wide range of banking and financial
services, including lending and financial planning.
Complainant holds a registration with the United States Patent and
Trademark Office for the MB FINANCIAL mark (Reg. No. 2,467,873 issued July 10,
2001). Complainant or its predecessor,
Manufacturers Bank, has used the MB FINANCIAL mark extensively and continuously
in commerce since at least as early as 1999.
Complainant has spent tens of millions of dollars advertising and
promoting its financial services under its MB FINANCIAL mark in interstate
commerce via various media outlets, including print, radio, billboard and
television advertising. Additionally,
Complainant promotes its services via its websites at the <mbfinancial.com>
and <mbfinancialbank.com> domain names.
Respondent registered the <wwwmbfinancial.com> domain name on July 14, 2004, at least
five years after Complainant began using the MB FINANCIAL mark to identify its
financial products and services. The domain
name resolves to a website that contains a generic search engine and displays
links to various third-party companies that compete with Complainant in the
financial services business.
Complainant has not authorized Respondent to use the MB FINANCIAL mark
for any purpose.
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 presumptive rights in the MB FINANCIAL mark through registration
with the United States Patent and Trademark Office. Since Respondent has not disputed Complainant’s prima facie
case of rights, the Panel finds that Complainant has rights in the MB FINANCIAL
mark for purposes of Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The <wwwmbfinancial.com>
domain name registered by Respondent includes Complainant’s MB FINANCIAL mark
in its entirety, differing only with the addition of the letters “www” at the
beginning of the domain name and the generic top-level domain (“gTLD”)
“.com.” It has been widely held under
the Policy that the addition of the letters “www” at the beginning of a
complainant’s registered mark constitutes an attempt to take advantage of a
common typographical error made by Internet users and does nothing to
distinguish the domain name from the 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
the 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 Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002)
(holding that the letters "www" are not distinct in the
"Internet world" and thus the respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to the
complainant's MARIE CLAIRE trademark).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent’s
failure in this instance to submit a response to the allegations of the
Complaint entitles the Panel to accept all reasonable allegations and
inferences in the Complaint as true unless clearly contradicted by the
evidence. See 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.”); see also Bayerische
Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17,
2002) (finding that in the absence of a response a panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do).
Complainant
asserts that Respondent has no rights or legitimate interests in the <wwwmbfinancial.com>
domain name that contains Complainant’s MB FINANCIAL mark in its entirety. Complainant has made a prima facie
case in support of its allegations, which shifts the burden to Respondent to
make a showing that it does have rights or legitimate interests pursuant to Policy
¶ 4(a)(ii). However, Respondent has
failed to respond to Complainant’s allegations and to provide evidence of
rights or legitimate interests.
Respondent has, therefore, failed to meet its burden and the Panel
concludes that Respondent lacks rights and legitimate interests in the disputed
domain name. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that,
once a complainant asserts that a respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to that respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere
assertion by a complainant that a respondent has no rights or legitimate
interests is sufficient to shift the burden of proof to that respondent to
demonstrate that such rights or legitimate interests do exist); see also
Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or
legitimate interests in the domain name because the respondent never submitted
a response or provided the panel with evidence to suggest otherwise).
Complainant
argues that the <wwwmbfinancial.com> domain name redirects
Internet users searching for Complainant’s MB FINANCIAL products and services
to Respondent’s website by taking advantage of the common typographical error
that involves eliminating the period when entering a domain name. Furthermore, Complainant avers that the
disputed domain name resolves to a website that features a generic search
engine and links to products and services of third party companies that compete
with Complainant. This practice is
known as typosquatting and has been held under the Policy not to be a use in
connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). 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 the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
the complainant’s DINERS CLUB mark, was evidence in and of itself that the
respondent lacked rights or legitimate interests in the disputed domain name
vis-à-vis the complainant); see also Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a
means of redirecting consumers against their will to another site, does not
qualify as a bona fide offering of goods or services, whatever may be the goods
or services offered at that site.”); see also Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where
the respondent used the typosquatted <wwwdewalt.com> domain name to
divert Internet users to a search engine webpage, and failed to respond to the
complaint).
Complainant
claims that Respondent is not commonly known by the <wwwmbfinancial.com>
domain name or Complainant’s MB FINANCIAL mark. Furthermore, Complainant contends that Respondent is not licensed
or authorized to use Complainant’s MB FINANCIAL mark for any purpose. Without any response from Respondent, the
Panel is left with no evidence to rebut Complainant’s assertions. Thus, the Panel determines that Respondent
has failed to establish rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s rights in the mark precede the
respondent’s registration; (3) the respondent is not commonly known by the
domain name in question).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It is
Complainant’s contention that Respondent is using the <wwwmbfinancial.com>
domain name in an attempt to profit through consumer confusion by intentionally
attracting Internet users interested in locating Complainant’s MB FINANCIAL
products and services. Complainant
further claims that Respondent profits from these intentional diversions
through click-through fees earned by diverting Internet users to third-party
websites through Respondent’s site.
Thus, the Panel determines that Respondent’s attempts to divert Internet
users for commercial gain by attracting Internet users to Respondent’s website
through a likelihood of confusion with Complainant’s MB FINANCIAL mark is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where the respondent registered and used an infringing
domain name to attract users to a website sponsored by the respondent); see
also eBay, Inc v. Progressive Life
Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
the respondent is taking advantage of the recognition that eBay has created for
its mark and therefore profiting by diverting users seeking the eBay website to
the respondent’s site).
The Policy lists
four circumstances under Policy ¶ 4(b), which constitute evidence of bad faith
registration and use. However, this
list is not intended to be comprehensive, and the Panel has, therefore, chosen
to consider additional factors which support its finding of bad faith
registration and use. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent is
engaging in the practice of “typosquatting” by taking advantage of a common
typographical error made by Internauts intending to reach Complainant’s website
at the <mbfinancial.com> domain name.
When typing in a domain name, it is common to add the “www.” prefix to
the domain name, and Respondent is attempting to benefit from its <wwwmbfinancial.com>
domain name via Internet users who miss the period when typing in
Complainant’s domain name. Under the
Policy, typosquatting is itself evidence of bad faith registration and use of
the disputed domain name and the Panel finds no reason to distinguish
Respondent’s use of the practice in this instance. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”); see also RE/MAX Int’l, Inc. v. Seocho,
FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that the respondent’s
registration of the <wwwremax.com> domain name, incorporating the
complainant’s entire mark, was done with actual notice of the complainant’s
rights in the mark prior to registering the infringing domain name, evidencing
bad faith); 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).
The Panel finds
that Complainant has 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 <wwwmbfinancial.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
May 12, 2005
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