Household International, Inc. v. RaveClub Berlin
Claim Number: FA0110000101507
Complainant is Household International, Inc., Prospect Heights, IL (“Complainant”) represented by Larry L. Saret, of Michael Best & Friedrich LLC. Respondent is RaveClub Berlin, Cherry Hill, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hbcards.com>, registered with Computer Service Langenbach GmbH (CSL).
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.
Judge Ralph Yachnin, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 25, 2001; the Forum received a hard copy of the Complaint on October 26, 2001.
On October 29, 2001, Computer Service Langenbach GmbH (CSL) confirmed by e-mail to the Forum that the domain name <hbcards.com> is registered with Computer Service Langenbach GmbH (CSL) and that Respondent is the current registrant of the name. Computer Service Langenbach GmbH (CSL) has verified that Respondent is bound by the Computer Service Langenbach GmbH (CSL) 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 October 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 19, 2001 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 firstname.lastname@example.org 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 December 6, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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.
1. The Complaint is based on the common law rights to the service mark HBCARD.COM that Complainant has acquired through use of the mark. The mark is used in connection with credit card and various other financial services.
2. Complainant’s services identified by its HBCARD.COM mark have been extensively marketed throughout the United States and in foreign countries. Complainant has expended substantial time, effort and money in advertising, promoting and marketing its services sold under its HBCARD.COM mark. For example, Complainant has distributed millions of copies of over a hundred different promotional and advertising pieces featuring its services under its HBCARD.COM mark to customers and potential customers, and it advertises and promotes its services nationally through television, radio, magazine, newspaper and other national media.
3. Complainant registered the <hbcard.com> domain name on June 5, 2000 and has been using the domain name in the corresponding World Wide Web address, <hbcard.com>, ever since. Complainant uses the website posted at <hbcard.com> to market and sell its credit card services. Complainant regards <hbcard.com> as a significant and valuable service mark and web address.
4. As a result of Complainant’s substantial and extensive advertising and sales, it has acquired valuable goodwill under the common law of the United States, and many other countries worldwide, in the HBCARD.COM service mark. The HBCARD.COM mark has become widely and favorably known throughout the United States and elsewhere throughout the world.
5. The <hbcards.com> domain name is identical and/or confusingly similar to Complainant’s service mark, HBCARD.COM. The second level of the domain name, namely, the “hbcards” portion, is virtually identical to the distinctive portion of Complainant’s service mark, “hbcard,” except for the fact that Respondent’s domain name has been pluralized by adding an “s” after “hbcard.”
6. On information and belief, Respondent does not have any reason to use the letters “HB” and does not provide credit card services or have any business relating to credit cards, greeting cards, postcards or any other type of card. Respondent has no rights or legitimate interests in the domain name and has no reason for registering a domain name comprising a common misspelling of Complaint’s service mark. The domain name has no meaning or significance to the Respondent.
7. On information and belief, Respondent is not commonly known by the disputed domain name and Respondent had not acquired any trademark or service mark rights in the disputed domain name. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
8. Complainant’s actual and potential customers seeking Complainant’s site at <hbcard.com> are likely to access and view Respondent’s loop of linked websites under the mistaken belief that Complainant is the source of, affiliated with, sponsors or endorses these websites. Complainant’s actual and potential customers accessing Respondent’s loop of websites will be frustrated by the infinite loop of websites they have unknowingly entered and will be confused when websites advertising competing credit card services are displayed. In fact, Complainant learned of Respondent’s registration of the <hbcards.com> domain name and operation of the World Wide Web site through actual confusion when customers of Complainant attempted to access Complainant’s website at <hbcard.com> and instead accessed Respondent’s loop of websites originating from the <hbcards.com> website.
No Response was received.
1. Complainant is an $82 billion provider of financial services and is a leading provider of consumer loans and credit cards in the United States, Canada and the United Kingdom.
2. Complainant and its predecessor-in-interest, Household Finance Corporation, have been in the business of providing financial services since at least as early as 1878 and have done business under the Household Bank name and service mark since at least as early as 1983. Among other businesses, Complainant operates a credit card business and issues credit cards under the name Household Bank.
3. Respondent registered the <hbcards.com> domain name on September 6, 2001.
4. Respondent has connected the domain name to an infinite loop of links to websites not associated with Complainant and including pornographic websites and websites offering competing credit card and mortgage services. The only way for Complainant’s actual and potential customers to exit the infinite loop is to turn off the “Java script” function on their Web browsers; otherwise, closing one window displaying a website only opens another window displaying a new website.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the policy.” McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); accord see Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).
Complainant contends to have rights in the HBCARD.COM mark. Since Respondent has provided no evidence to rebut Complainant’s assertion of common law rights, the Panel will assume Complainant’s contention is true. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); 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”)
Respondent’s domain name is merely a pluralized version of Complainant’s Service mark and therefore confusingly similar. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).
Therefore, the Panel finds that Complainant has satisfied its burden under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
There is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a Response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names”).
Respondent’s registration and use of the <hbcards.com> domain name fails to demonstrate any use in connection with a bona fide offering of goods or services pursuant to the Policy ¶ 4(c)(i). Respondent’s use of the disputed domain name is not a bona fide offering of goods nor a legitimate noncommercial or fair use, because Respondent is using Complainant’s mark to lure Internet traffic to advertisements. See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).
There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the disputed <hbcards.com> domain name, pursuant to the Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <hbcards.com> domain name, and that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s use of the <hbcards.com> domain name to lure Internet users to the disputed websites, allegedly for commercial gain, is evidence of bad faith under Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably, the Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <hbcards.com> be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 10, 2001
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