MBNA America Bank, N.A. v. Peter Carrington a/k/a Party Night, Inc.
Claim Number: FA0207000115040
Complainant is MBNA America Bank, N.A., Wilmington, DE, USA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam, NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mbanetaccess.com>, registered with Key-Systems GmbH.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 9, 2002; the Forum received a hard copy of the Complaint on July 10, 2002.
On July 11, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the domain name <mbanetaccess.com> is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 July 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 1, 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 firstname.lastname@example.org 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 August 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <mbanetaccess.com> domain name is confusingly similar to Complainant’s registered MBNA mark.
2. Respondent does not have any rights or legitimate interests in the <mbanetaccess.com> domain name.
3. Respondent registered and used the <mbanetaccess.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of numerous trademark registrations for the MBNA mark. More specifically, Complainant holds U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,362,384 for the MBNA mark registered on the Principal Register on September 24, 1985, which denotes Complainant’s banking and related services.
Complainant uses several of its MBNA marks in connection with domain names to provide various services over the Internet. For example, Complainant operates websites connected to the <mbna.com> and <mbnanetaccess.com> domain names. Complainant’s MBNA marks, including Complainant’s pending MBNA NET ACCESS mark, are used extensively at these websites to promote Complainant’s services.
Since Complainant’s adoption of the MBNA marks in 1983, they have been continuously and extensively used in interstate commerce in connection with the advertising and sale of Complainant’s MBNA services. Each year, millions of MBNA customers obtain services offered under the MBNA marks; millions more are exposed to Complainant’s marks through advertising and promotion. Complainant’s MBNA marks have been, and continue to be, widely publicized through substantial advertising throughout the U.S. and the world. Many millions of dollars have been spent in connection with such advertising, which has been disseminated through different broadcasting mediums.
Because of Complainant’s significant advertising campaign and sales, Complainant’s MBNA marks have become famous and well known among members of the consuming public.
Respondent registered the <mbanetaccess.com> domain name on March 10, 2002. Respondent’s domain name resolves to pornographic and gambling websites.
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.
Complainant has established rights in the MBNA mark through registration with the USPTO and subsequent continuous use of the mark.
Complainant also asserts rights in the MBNA NET ACCESS mark. However, Complainant’s evidence consists of a pending trademark application with the USPTO, which is filed as an Intent To Use (“ITU”) application, and the registration for the <mbnanetaccess.com> domain name. In considering the circumstances of the present dispute, the Panel determines that establishing common law rights in Complainant’s MBNA NET ACCESS mark is unnecessary, and Complainant’s rights in the MBNA registered mark will suffice.
Respondent’s <mbanetaccess.com> domain name is confusingly similar to Complainant’s MBNA mark. The subject domain name contains a common typographical error of Complainant’s MBNA mark with the addition of industry related words that have an obvious relationship to Complainant. In fact, Complainant offers services from the nearly identical <mbnanetaccess.com> domain name. The similarities are not coincidental; Respondent intentionally uses a slight misspelling of Complainant’s established MBNA mark, which reflects a method common to typosquatters. The deliberate introduction of errors into a famous mark and the addition of industry related words have been held to be inconsequential when conducting a Policy ¶ 4(a)(i) “confusingly similar” analysis. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to dispute Complainant’s allegations and contentions; thus, the Panel is permitted to make all reasonable 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”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Additionally, when Respondent’s rights and legitimate interests in the domain name are not apparent to the Panel and Respondent fails to corroborate its registration of the domain name with evidence, it is presumed that Respondent lacks rights and legitimate interests in the domain name. Respondent has effectively failed to satisfy its burden of proving legitimate registration of the domain name in the face of Complainant’s unrefuted evidence. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent’s infringing domain name resolves to a website containing pornographic and gambling content. Respondent’s objectives are clear: divert Internet users interested in Complainant’s established marks to its commercially driven website. Such use tarnishes the goodwill associated with Complainant’s MBNA mark and frustrates Internet users searching for Complainant’s services by confronting them with explicit and unanticipated content. Respondent’s opportunistic registration of Complainant’s established mark is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website).
There is no evidence that suggests a legitimate connection between Respondent and its use of the domain name with the <mbanetaccess.com> registration, which implies that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). Because Complainant’s MBNA mark enjoys a significant amount of notoriety among the consuming public, and Respondent’s use of the domain name is not in connection with a legitimate interest, it is presumed that Respondent does not have any rights in the domain name under Policy ¶ 4(a)(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 Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was a misspelling of a famous mark); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that Respondent has no rights or legitimate interests in the <nokiagirls.com> domain name because there was no element on the website that would justify use of the word NOKIA within the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The circumstances surrounding Respondent’s registration of the infringing domain name indicate that Respondent was at least constructively aware of Complainant’s rights in the MBNA mark, more specifically: (1) Respondent’s domain name is confusingly similar to Complainant’s MBNA mark and is nearly identical to Complainant’s <mbnanetaccess.com> domain name, but for a common typographical error; (2) as stated, Complainant’s domain name is famous and enjoys worldwide recognition; and, (3) Respondent failed to demonstrate any rights or legitimate interests in the domain name, illustrated by the fact that the content on its website has no connection with the <mbanetaccess.com> domain name. Respondent’s registration of an infringing domain name, despite knowledge of Complainant’s preexisting rights, represents bad faith registration under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Respondent’s bad faith registration and use of the infringing domain name is also demonstrated by the fact that Respondent’s domain name resolves to pornographic and gambling websites. Besides the disparaging effect the content of the websites have on Complainant’s established mark, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Thus, Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. 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); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website).
Accordingly, 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 hereby GRANTED.
Accordingly, it is Ordered that the <mbanetaccess.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: August 13, 2002
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