DECISION

 

American Bank v. First Virtual Banks Names a/k/a All Over Land

Claim Number: FA0203000106114

 

PARTIES

Complainant is American Bank, Allentown, PA (“Complainant”) represented by Nancy Rubner Frandsen, of Drinker, Biddle & Reath LLP.  Respondent is First Virtual Banks Names a/k/a All Over Land, Beirut, LEBANON (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <pcbanker.info> and <pcbanker.biz>, registered with DotRegistrar.com.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 26, 2002; the Forum received a hard copy of the Complaint on April 1, 2002.

 

On April 1, 2002, DotRegistrar.com confirmed by e-mail to the Forum that the domain names <pcbanker.info> and <pcbanker.biz> are registered with DotRegistrar.com and that Respondent is the current registrant of the name.  DotRegistrar.com has verified that Respondent is bound by the DotRegistrar.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 April 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 22, 2002 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@pcbanker.info, and postmaster@pcbanker.biz 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 May 1, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to omplainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <pcbanker.info> and <pcbanker.biz> domain names are confusingly similar to Complainant's PCBANKER.COM mark.

 

Respondent has no rights or legitimate interests in the disputed domain names.

 

Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

No Response was received.

 

FINDINGS

Since 1997, Complainant has used the PCBANKER.COM mark in relation to its online banking services.  Complainant has registered PCBANKER.COM mark with the United States Patent and Trademark Office, Registration Number 2,484,044.

 

Complainant currently holds registrations for <pcbanker.com>, <pcbanker.org>, <pcbanker.net>, <pcbanker.bz>, and <pcbanker.tv>.  All of Complainant’s domain names are used to direct Internet users to Complainant’s online banking website. 

 

Respondent registered the disputed domain names on December 6, 2001.  Currently, both disputed domain names display “Under Construction” pages.

 

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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

Complainant has established that it has rights to is PCBANKER.COM mark through registration and continuous use.  Furthermore, Respondent’s domain names <pcbanker.info> and <pcbanker.biz> are confusingly similar to Complainant’s PCBANKER.COM mark because they incorporate the entirety of Complainant’s mark and merely change the generic top-level domain.  It has been established that the addition or change of a generic top-level domain name does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name.  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).

 

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See 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”).

 

The disputed domain names are confusingly similar to Complainant’s mark.  Complainant’s business is centered around recognition of its domain names because it is an online banking service, therefore Respondent’s registration of two confusingly similar domain names can be seen as an attempt to cause confusion and attract Complainant’s customers to Respondent’s website.  Therefore Respondent cannot be engaging in a bona fide offering of goods and services at the disputed domain names pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).

 

Respondent is known to the Panel as “First Virtual Banks Names” and “All Over Land,” no evidence has been presented that Respondent is commonly known as PCBANKER.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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 finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent registered more than one infringing domain name in the same instance.  This is considered to be evidence of bad faith registration pursuant to Policy ¶ 4(b)(ii).  See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).

 

Furthermore, the disputed domain names are practically identical to Complainant’s mark and domain names and therefore it is likely that Internet users will believe that there is an affiliation between Complainant and Respondent.  The registration of confusingly similar domain names are likely to cause Internet user confusion and is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

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 <pcbanker.info> and <pcbanker.biz> be transferred from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated: May 7, 2002