IndyMac Bank F.S.B. v. Justin Butler
Claim Number: FA0802001143720
Complainant is IndyMac Bank F.S.B. (“Complainant”), represented by B.
Brett Heavner, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <indymacreos.com>, registered with Go Daddy Software.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2008.
On February 11, 2008, Go Daddy Software confirmed by e-mail to the National Arbitration Forum that the <indymacreos.com> domain name is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 February 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 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@indymacreos.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a mortgage lender who offers a variety of mortgage products and services under its INDYMAC mark.
As part of its business, Complainant operates a members-only online networking database for real estate brokers and attorneys who specialize in real-estate owned (“REO”) properties.
Complainant offers links to these networking services under its <indymac.com> and <indymacreo.com> domain names.
Complainant first registered its INDYMAC service mark with the United States Patent and Trademark Office (“USPTO”) on December 22, 1998 (Reg. No. 2,212,512).
In addition, Complainant holds several other registrations for its INDYMAC mark with the USPTO.
Complainant has never authorized Respondent to use its INDYMAC mark.
Respondent registered the <indymacreos.com> domain name on October 2, 2007.
Respondent’s disputed domain name resolves to a parked website which offers links to lending products and services that directly compete with Complainant’s business.
Respondent’s <indymacreos.com> domain name is confusingly similar to Complainant’s INDYMAC mark.
Respondent does not have any rights to or legitimate interests in the <indymacreos.com> domain name.
Respondent registered and uses the <indymacreos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant holds several registrations for its INDYMAC mark
with the USPTO. This is adequate evidence
that Complainant has rights in its INDYMAC mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA
1118154 (Nat. Arb. Forum Jan. 18,
2008):
Complainant asserts rights
in the mark through its registration of the mark with the
Respondent’s <indymacreos.com> domain name fully incorporates Complainant’s INDYMAC mark, with the mere addition of the abbreviation “reo” and the letter “s.” The abbreviation is descriptive of Complainant’s business. We conclude therefore that Respondent’s domain name is confusingly similar to the competing mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> is confusingly similar to a complainant’s NATIONAL GEOGRAPHIC mark);
The addition of a generic top-level domain (“gTLDs”) such as “.com” to a mark in forming a domain name is irrelevant when determining whether the domain name is identical or confusingly similar. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name.
The Panel therefore finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges Respondent does not have rights to or legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these allegations, the burden shifts to Respondent to establish that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
Complainant has presented a sufficient prima facie case to support its allegations. Respondent, for its part, has failed to
submit a response to these proceedings.
Therefore, we may presume that Respondent does not have rights to or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See 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, we
will nonetheless inspect the record to determine if there is any basis for
concluding that Respondent has rights to or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
We begin by noting that there is no dispute that Respondent’s
<indymacreos.com> domain
name resolves to a parked website which displays links to lending products and
services that compete with Complainant’s business. Respondent presumably receives click-through
fees for displaying these links. This
diversionary use of the disputed domain name is not a use in connection with 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). See Lockheed Martin Corp. v. Extraordinary
Things LLC, FA 1117826 (Nat. Arb. Forum Jan. 23, 2008):
Respondent’s…domain names
all resolve to parked websites featuring links to third-party venture capital
and financial websites that offer services in competition with Complainant, and
Respondent accrues click-through fees from these links. The Panel finds that such use 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).
See also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links to that complainant’s competitors, was not a bona fide offering of goods or services).
Also, we observe that the pertinent
WHOIS information indicates that Respondent’s name is “Justin Butler.” And Complainant alleges, and Respondent does
not deny, that Complainant has never authorized Respondent to use its INDYMAC
mark. Therefore, we conclude that
Respondent is not commonly known by the <indymacreos.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact
that “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” is a factor in determining that
Policy ¶ 4(c)(ii) does not apply); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where a respondent was not commonly
known by a mark and never applied for a license or permission from a
complainant to use a trademarked name).
The
Panel thus finds Policy ¶ 4(a)(ii) has been
satisfied.
Respondent presumably receives click-through fees for
displaying links to Complainant’s competitors on the parked website which
resolves from the confusingly similar <indymacreos.com>
domain name. Thus, Respondent is
attempting to profit from the goodwill and customer loyalty associated with
Complainant’s mark, which is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its
diversionary use of a complainant's mark when a domain name resolves to
commercial websites and that respondent fails to contest a complaint, it may be
concluded that that respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd.
v. Domain Manager, FA 201976 (Nat. Arb.
Forum Nov. 19, 2003): “Respondent's prior use of the <mailonsunday.com>
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the
domain name provided links to Complainant's competitors and Respondent
presumably commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <indymacreos.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 24, 2008
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