Irwin Financial Corporation v.
Claim Number: FA0707001028759
Complainant is Irwin Financial Corporation (“Complainant”), represented by David
A.W. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <irwinhomemortgage.com> and <irwinunionbank.org>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 10, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <irwinhomemortgage.com> and <irwinunionbank.org> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 July
16, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 6, 2007
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@irwinhomemortgage.com and
postmaster@irwinunionbank.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <irwinhomemortgage.com> and <irwinunionbank.org> domain names are confusingly similar to Complainant’s IRWIN mark.
2. Respondent does not have any rights or legitimate interests in the <irwinhomemortgage.com> and <irwinunionbank.org> domain names.
3. Respondent registered and used the <irwinhomemortgage.com> and <irwinunionbank.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Irwin Financial Corporation, is a bank holding
company that provides a wide range of personalized financial services for the
owner-operated business, entrepreneurial, and professional markets. Complainant provides these services to select
markets in the
Respondent registered the <irwinhomemortgage.com> domain name on
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. 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 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.
The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Complainant alleges that Respondent’s <irwinhomemortgage.com> and <irwinunionbank.org> domain names are confusingly similar to Complainant’s IRWIN mark. The Panel agrees, as the <irwinhomemortgage.com> domain name simply adds the terms “home” and “mortgage” to the mark, and the <irwinunionbank.org> domain name adds the terms “union” and “bank” to the mark. All of these added terms are descriptive of Complainant or Complainant’s business, and therefore do not negate any confusing similarity between the disputed domain names and Complainant’s IRWIN mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Furthermore, the addition of the generic top-level domains
“.com” and “.org” to the disputed domain names is irrelevant to the Policy ¶
4(a)(i) analysis, as a top-level domain is a required
element of all domain names. Thus, the
Panel finds that Respondent’s <irwinhomemortgage.com> and <irwinunionbank.org>
domain names are confusingly similar to Complainant’s IRWIN mark pursuant to
Policy ¶ 4(a)(i).
See Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum
The Panel thus finds that Policy ¶ 4(a)(i)
has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the <irwinhomemortgage.com> and <irwinunionbank.org> domain names. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Based on Respondent’s failure to answer the Complaint, the Panel infers that Respondent lacks rights and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will still examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <irwinhomemortgage.com> and <irwinunionbank.org> domain names, which, under Policy ¶ 4(c)(ii), indicates that Respondent lacks rights and legitimate interests in the disputed domain names. There is nothing in the record to suggest, and Respondent’s WHOIS information does not indicate, that Respondent is commonly known by the disputed domain names. Moreover, Respondent is not authorized or licensed by Complainant to use the IRWIN mark in any way. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <irwinhomemortgage.com> and <irwinunionbank.org>
domain names both resolve to websites featuring generic search
engines and links to third-party websites in direct competition with
Complainant. The Panel presumes that
Respondent receives click-through fees from the search engines and the
links. Such use does not constitute 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), which further indicates that Respondent
lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Ameritrade Holdings Corp.
v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002)
(finding that the respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with the
complainant, was not a bona fide offering of goods or services); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that
the respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
As mentioned above, Respondent is using the <irwinhomemortgage.com> and <irwinunionbank.org>
domain names to redirect Internet users to a website containing links to
websites in direct competition with Complainant. This constitutes a disruption of
Complainant’s business and qualifies as bad faith registration and use of the
disputed domain names under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
The Panel presumes that Respondent benefits commercially through the accrual of click-through fees when Internet users click on the links featured on the websites that resolve from the <irwinhomemortgage.com> and <irwinunionbank.org> domain names. Respondent is therefore capitalizing on the likelihood that users, seeking Complainant’s services, will confuse the source of the disputed domain names as being affiliated with Complainant. This is further evidence that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also 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).
The Panel thus finds that Policy ¶ 4(a)(iii)
has been 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 <irwinhomemortgage.com> and <irwinunionbank.org> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 23, 2007
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