Old National Bancorp v. WatchMyDomain c/o Nick M.
Claim Number: FA0509000563651
Complainant is Old National Bancorp (“Complainant”), represented by Carrie L. Johnson, 2100 IDS Center, 80 S. Eighth Street, Minneapolis, MN, 55402. Respondent is WatchMyDomain c/o Nick M. (“Respondent”), B-304 Florida, Y-11 Shastri Nager, Lokhandwala Complex, Andheri (w), Mumbai, Mahaeashtra 400053, INDIA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwoldnational.com>, registered with Retail Studio, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 16, 2005; the National Arbitration Forum received a hard copy of the Complaint September 19, 2005.
On September 23, 2005, Retail Studio, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwoldnational.com> domain name is registered with Retail Studio, Inc. and that Respondent is the current registrant of the name. Retail Studio, Inc. verified that Respondent is bound by the Retail Studio, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 27, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 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@wwwoldnational.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 21, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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. The domain name that Respondent registered, <wwwoldnational.com>, is confusingly similar to Complainant’s OLD NATIONAL mark.
2. Respondent has no rights to or legitimate interests in the <wwwoldnational.com> domain name.
3. Respondent registered and used the <wwwoldnational.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Old National Bancorp, provides a variety of
banking services under its OLD NATIONAL and OLD NATIONAL BANK marks, including
credit cards, financial and investment consultation, financial planning,
investment brokerage, computerized banking, money management and numerous other
services.
Complainant is the owner of multiple registrations with the
United States Patent and Trademark Office (“USPTO”) for its OLD NATIONAL (Reg.
No. 2,695,267 issued March 11, 2003) and OLD NATIONAL BANK (Reg. No. 1,287,233
issued July 24, 1984 and Reg. No. 1,954,327 issued February 6, 1996) marks.
Respondent registered the <wwwoldnational.com> domain name August 15, 2005. The domain name resolves to a website that displays hyperlinks to numerous third-party websites, some of which directly compete with Complainant’s banking and financial services.
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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 provided extrinsic proof of its registration of the OLD NATIONAL mark with the USPTO. Complainant’s registration of its mark with a governmental authority establishes a prima facie case of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also 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 [or] have acquired secondary meaning”).
The <wwwoldnational.com> domain name registered by Respondent differs from Complainant’s OLD NATIONAL mark with the addition of the letters “www” and the generic top-level domain (“gTLD”) “.com.” The addition of “www” does not distinguish the disputed domain name from the mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the 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). Furthermore, the use of the gTLD “.com” is not pertinent to a consideration of confusing similarity under Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Complainant satisfied requirements under Policy ¶ 4(a)(i).
Complainant has the initial burden of proving it has rights to and legitimate interests in the mark contained within the disputed domain name and that Respondent lacks such rights to and legitimate interests in the disputed domain name. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held:
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
Id.; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Thus, having found that Complainant met its initial burden by establishing a prima facie case, the Panel analyzes whether Respondent met the burden to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is using the <wwwoldnational.com> domain name to redirect Complainant’s potential customers to a search engine website that displays hyperlinks to numerous websites related to banking and loan services. Several of these links lead Internet users directly to the websites of some of Complainant’s competitors; the Panel infers that Respondent earns referral fees for diverting Internet users to these third-party websites. The Panel does not find a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) where Respondent is using Complainant’s mark in a domain name to operate a commercial website and advertise competing products and services. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Nothing in the record suggests that Respondent is commonly known by the disputed domain name. Furthermore, Respondent has failed to respond and, consequently, has not offered any evidence to show that it is commonly known by the <wwwoldnational.com> domain name. The Panel finds that Respondent has not established 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds that Complainant satisfied requirements under Policy ¶ 4(a)(ii).
Complainant argues that Respondent is using the <wwwoldnational.com> domain name for a website that links to products and services that compete with those of Complainant. The Panel infers that Respondent receives referral fees for forwarding Internet users interested in Complainant’s products and services to competitors’ websites. Respondent’s use of Complainant’s OLD NATIONAL mark in the domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s commercial website. The Panel finds this to be sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also 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 <wwwoldnational.com> domain name registered by Respondent consists of a version of Complainant’s OLD NATIONAL mark that includes the letters “www.” Thus, Respondent is engaging in the practice of “typosquatting” by taking advantage of potential typographical errors made by Internauts intending to reach a website corresponding to Complainant’s OLD NATIONAL mark. Under the Policy, typosquatting is sufficient evidence of bad faith registration and use of the disputed domain names. The Panel, therefore, finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] 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.”).
The Panel finds that Complainant satisfied requirements under 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 <wwwoldnational.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 3, 2005.
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