TierOne Bank v. James Cosmas
Claim Number: FA0707001028848
Complainant is TierOne Bank (“Complainant”), represented by Cathleen
F. Baraloto, of Faegre & Benson, LLP, 2200
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tier1creditnow.com> and <tier1creditscore.com>, registered with Go Daddy Software, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 17, 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 email@example.com and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <tier1creditnow.com> and <tier1creditscore.com> domain names are confusingly similar to Complainant’s TIERONE mark.
2. Respondent does not have any rights or legitimate interests in the <tier1creditnow.com> and <tier1creditscore.com> domain names.
3. Respondent registered and used the <tier1creditnow.com> and <tier1creditscore.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has continuously used the TIERONE mark in
connection with consumer, commercial and agricultural banking products and
services across the
Respondent registered the <tier1creditnow.com>
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.
Complainant has sufficiently established its rights in the
TIERONE mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with
the USPTO. See
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out
a prima facie case that Respondent
has no rights or legitimate interests in the domain name at issue. See
Inc. v. VeneSign
Respondent has failed to submit a Response to the
Complaint. The Panel thus presumes that
Respondent has no rights or legitimate interests in the <tier1creditnow.com> nor <tier1creditscore.com>
domain names, but will still consider
all the available evidence with respect to the factors listed in Policy ¶ 4(c)
before making this determination. See Am. Express Co. v. Fang
129120 (Nat. Arb. Forum
Nowhere in the record, including Respondent’s WHOIS information, does it indicate that Respondent is or ever has been commonly known by the <tier1creditnow.com> or <tier1creditscore.com> domain names. Further, Respondent has not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); 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 prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Moreover, Respondent’s disputed domain names both resolve to websites that offer services that compete with those offered under Complainant’s TIERONE mark and display links to competitors of Complainant. As a result, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair way pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) respectively. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also 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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Upon being asked to “cease and desist” use of the <tier1creditnow.com> and <tier1creditscore.com>
domain names, Respondent offered to sell the disputed domain names, as well as
other domain names with similar lettering, to Complainant for $250,000. The Panel concludes that Respondent registered
and is using the disputed domain names in bad faith pursuant to Policy ¶
4(b)(i). See World Wrestling Fed’n
Entm’t., Inc. v. Bosman,
Respondent is using the <tier1creditnow.com> and <tier1creditscore.com>
domain names to offer services
in competition with those under Complainant’s TIERONE mark and additionally
provides links to third-party websites that offer banking services that compete
with those offered under Complainant’s mark.
Therefore, the Panel finds that Respondent registered and is now using
the disputed domain names in bad faith, primarily for the purpose of disrupting
Complainant’s business pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Furthermore, since the disputed domain names feature sponsored links to competitors of Complainant, it can be inferred that Respondent is financially benefiting from such use. Consequently, the Panel finds further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the 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)).
The Panel concludes 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 <tier1creditnow.com> and <tier1creditscore.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 22, 2007
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