Guaranty Bank v. PabloPalermao
Claim Number: FA0708001059472
Complainant is Guaranty Bank (“Complainant”), represented by Sherri
L. Eastley, of Wong Cabello, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <guaranteegroup.com>, registered with Moniker Online Services, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 24, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 13, 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <guaranteegroup.com> domain name is confusingly similar to Complainant’s GUARANTY mark.
2. Respondent does not have any rights or legitimate interests in the <guaranteegroup.com> domain name.
3. Respondent registered and used the <guaranteegroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Guaranty Bank, is a nationwide provider of
banking and financial services. Since
1921, Complainant, its related companies, and its predecessors-in-interest have
offered quality banking services throughout the
Respondent registered the <guaranteegroup.com> domain name on November 26, 2002, more than ten years after Complainant’s registration of its GUARANTY mark. Respondent’s disputed domain name resolves to a website that displays Complainant’s GUARANTY mark and contains links to third party websites offering financial services in direct competition with Complainant.
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 asserts its rights in the GUARANTY mark through its registration of the mark with the USPTO. The Panel finds that this is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the 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.").
domain name is confusingly similar to Complainant’s GUARANTY mark. The disputed domain name merely substitutes
the letters “ee” in the word “guarantee” for the letter “y” in Complainant’s
mark and adds the generic term “group” onto the mark. Since “guarantee” is an alternate spelling of
“guaranty” and the two words are phonetically identical, this alteration does
not negate any confusing similarity between the <guranteegroup.com> domain name and Complainant’s GUARANTY
mark. In the same way, the addition of
the generic term “group,” which is also descriptive of Complainant, does not
render the disputed domain name distinct from Complainant’s mark. Moreover, the disputed domain name adds the
generic top-level domain “.com,” which is irrelevant to Policy ¶ 4(a)(i), as a
top-level domain is required of all domain names. Therefore, the Panel finds that Respondent’s <guaranteegroup.com> domain name
is confusingly similar to Complainant’s GUARANTY mark pursuant to Policy ¶
4(a)(i). See Hewlett-Packard Co. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of making a prima facie showing that Respondent lacks rights and legitimate interests in the <guaranteegroup.com> domain name, and then the burden shifts to Respondent to refute this showing. In the present case, 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).
As Respondent has failed to submit a response to the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also 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.”). However, the Panel will still examine all evidence in 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 <guranteegroup.com> domain name, which indicates a lack of rights and legitimate interests under Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name indicates that Respondent is “PabloPalermao,” and there is no further evidence in the record to suggest that Respondent is known by the <guaranteegroup.com> domain name. Along with this, Complainant has not permitted Respondent to use its GUARANTY mark for any purpose, and the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); 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 <guaranteegroup.com> domain name resolves to a website featuring links to third-party websites that offer competing financial services, and the Panel infers that Respondent accrues click-through fees when Internet users follow these links. The Panel finds that this does not constitute either 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), and further supports Respondent’s lack of rights and legitimate interests in the <guaranteegroup.com> domain name. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant further alleges that Respondent registered and
is using the <guaranteegroup.com> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). As the disputed domain name resolves to a
website featuring links to Complainant’s competitors, the Panel finds such use
to be a disruption of Complainant’s business and an indication of bad faith
registration and use under Policy ¶ 4(b)(iii).
See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum
The Panel presumes that Respondent benefits commercially
through its use of the <guaranteegroup.com>
domain name, which is confusingly similar to Complainant’s GUARANTY
mark. As such, Respondent is
intentionally attracting Internet users, for commercial gain, to the website
located at the <guaranteegroup.com>
domain name by creating a likelihood that users will confuse the source of the
disputed domain name as being affiliated with Complainant. This is further evidence of Respondent’s bad
faith registration and use under Policy ¶ 4(b)(iv). See
State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <guaranteegroup.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 4, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum