American Chartered Bancorp Inc. v. Domain Administration Limited c/o David Halstead
Claim Number: FA0710001088009
Complainant is American Chartered Bancorp Inc. (“Complainant”), represented by David
J. Fish, of The Fish Law Firm P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americancharteredbank.com>, registered with Enom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On October 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 5, 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 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 <americancharteredbank.com> domain name is identical to Complainant’s AMERICAN CHARTERED BANK mark.
2. Respondent does not have any rights or legitimate interests in the <americancharteredbank.com> domain name.
3. Respondent registered and used the <americancharteredbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Chartered Bancorp Inc., is a
full-service commercial and retail bank.
Complainant currently ranks as the 13th largest bank
Respondent registered the <americancharteredbank.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.
Complainant attempts to establish rights in the AMERICAN
CHARTERED BANK mark through registration of the mark with the USPTO. The Panel finds that Complainant’s timely
registration and subsequent use of the mark adequately establishes rights in
the mark pursuant to Policy ¶ 4(a)(i). See Mothers
Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25,
2003) (finding that the complainant’s registration of the MADD mark with the
United States Patent and Trademark Office established the complainant’s rights
in the mark for purposes of Policy ¶ 4(a)(i)); see also Ameridream, Inc. v.
Russell, FA 677782 (Nat. Arb. Forum
domain name contains Complainant’s AMERICAN CHARTERED BANK mark in its
entirety, eliminates the spaces between the words of the mark and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that the mere elimination of spaces between words of a
protected mark and the addition of a gTLD to an otherwise identical mark fails
to sufficiently distinguish the domain name from the mark pursuant to Policy ¶
4(a)(i). See Isleworth Land Co. v. Lost
in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been satisfactorily met.
In instances where Complainant has made a prima facie case in support of its
allegations, the burden shifts to Respondent to set forth concrete evidence
indicating that it has rights or legitimate interests in accordance with Policy
¶ 4(a)(ii). See SEMCO Prods., LLC v. dmg world media (
The disputed domain name resolves to a website that offers links to third-party commercial websites, some of which offer services and products that directly compete with Complainant’s business. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
A thorough perlustration of Respondent’s WHOIS registration
information reveals that the registrant of the <americancharteredbank.com> domain name is “Domain
Administration Limited c/o David Halstead.”
In light of the aforementioned evidence and Respondent’s failure to
proffer any evidence to the contrary, the Panel finds that Respondent is not
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been satisfactorily met.
As indicated above, Respondent’s disputed domain name resolves to a website that offers, inter alia, links to competing websites. The Panel finds that Respondent’s use amounts to a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of the complainant’s competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent’s use of the
disputed domain name presumably results in monetary gain for Respondent through
the procurement of click-through advertising fees. Additionally, Complainant alleges that
Respondent’s use is likely to engender confusion among Internet users expecting
to view information regarding Complainant’s business as to the source and
affiliation of the resulting material.
The Panel finds that such use evinces registration and use in bad faith
pursuant to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been satisfactorily met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americancharteredbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 22, 2007
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