Whitney National Bank v. Monika Ryan
Claim Number: FA0712001118843
Complainant is Whitney National Bank (“Complainant”), represented by Raymond
G. Areaux, Esq., of Carver, Darden, Koretzky, Tessier, Finn,
Blossman & Areaux, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <whitneynational-bank.com>,
registered with Cronon Ag
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 11, 2007.
On December
21, 2007, Cronon Ag Berlin, Niederlassung
Regensburg confirmed by e-mail to the National Arbitration Forum that
the <whitneynational-bank.com>
domain name is registered with Cronon Ag Berlin,
Niederlassung Regensburg and that Respondent is the current registrant
of the name. Cronon Ag
On December 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 10, 2008 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@whitneynational-bank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
On January 23, 2008, the Forum received a letter from “Monika Ryan” claiming her name and contact information were used in the Whois, but that she did not register or control the domain name and did not object to a panel order to transfer. The Panel does not consider this a valid Response; the submission does not affect the Panel’s decision.
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 <whitneynational-bank.com> domain name is confusingly similar to Complainant’s WHITNEY NATIONAL BANK mark.
2. Respondent does not have any rights or legitimate interests in the <whitneynational-bank.com> domain name.
3. Respondent registered and used the <whitneynational-bank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Whitney National Bank, is a multi-billion
dollar financial institution, and is also the oldest continuously operating bank
in
Respondent registered the <whitneynational-bank.com> domain name on October 30, 2007. Respondent is currently using the disputed domain name to resolve to an inactive website that purports to be under construction.
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.
To assert rights in a mark, Complainant need not demonstrate
that the WHITNEY NATIONAL BANK mark was registered with a national body such as
the United States Patent and Trademark Office (“USPTO”). Rather, Complainant can establish sufficient
rights in the mark through common law rights under the UDRP. See
Complainant has asserted sufficient evidence to establish common law rights in the mark under the UDRP pursuant to Policy ¶ 4(a)(i). Complainant alleges that the mark has become famous and distinct due to its long-standing usage in connection with its banking and financial operations. Moreover, Complainant has expended significant sums of money by consistently and prominently displaying the mark in its business operations for almost a century. The Panel therefore finds that Complainant’s use of the mark adequately establishes its rights for the purposes of Policy ¶ 4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
Respondent’s <whitneynational-bank.com>
domain name incorporates Complainant’s entire WHITNEY NATIONAL BANK mark while
adding a hyphen and the generic top-level domain “.com.” Generally, the additions of hyphens and generic
top-level domains are not relevant to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <whitneynational-bank.com> domain name. Once Complainant sets forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent has failed to respond to the Complaint, thus the Panel may conclude that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). However, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent’s <whitneynational-bank.com>
domain name currently resolves to a non-active website that claims to be under
construction. The Panel therefore finds
that Respondent has made no demonstrable preparations to use the disputed
domain name in connection with 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 Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's
passive holding of the <aolfact.com> domain name for over six months is
evidence that Respondent lacks rights and legitimate interests in the domain
name.”); see also State Fair of
Respondent offers no evidence in the record, including the
WHOIS domain name registration information, to conclude that it is commonly
known by the disputed domain name. Moreover,
Respondent has offered no evidence to suggest that it has demonstrable plans to
develop a website under the disputed domain name. Such evidence is significant in light of the
fact that Complainant has operated using its WHITNEY NATIONAL BANK for almost a
century. The Panel therefore finds that
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that
the “under construction” page, hosted at the disputed domain name, did not
support a claim of right or legitimate interest under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s inactive use of the
disputed domain name is itself evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See DCI
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 <whitneynational-bank.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 29, 2008
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