Cathay Bank and Cathay Bancorp, Inc. v. Klikrz
Claim Number: FA0207000115046
Complainant is Cathay Bank and Cathay Bancorp, Inc., Los Angeles, CA, USA (“Complainant”). Respondent is Klikrz, Amsterdam, NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cathay-bank.com>, registered with iHoldings.com 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 11, 2002; the Forum received a hard copy of the Complaint on July 15, 2002.
On July 11, 2002, iHoldings.com Inc. confirmed by e-mail to the Forum that the domain name <cathay-bank.com> is registered with iHoldings.com Inc. and that Respondent is the current registrant of the name. iHoldings.com Inc. has verified that Respondent is bound by the iHoldings.com Inc. 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 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 8, 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
email@example.com 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 27, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
The <cathay-bank.com> domain name is identical to Complainant's CATHAY BANK service mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant has used the CATHY BANK service mark for 40 years in relation to its banking services. Complainant registered the mark with the United States Patent and Trademark Office as Registration Number 2,069,697 on June 10, 1997. Complainant operates a website at <cathaybank.com>, <cathaybank.net>, and <cathaybank.org>. Complainant’s customers are able to access their bank accounts online as well as trade stocks and manage investments.
Complainant is a financial institution with over $2.5 billion in assets. It was incorporated in California in August of 1961. Cathay Bancorp, Inc., the holding company of Cathy Bank, is a publicly traded business corporation listed on Nasdaq, and organized under the laws of Delaware since March 1990.
Respondent registered the disputed domain name in June of 2001. Respondent has not used or made any demonstrable preparations to use the <cathay-bank.com> domain name since its registration over one year ago. Internet users who go to the disputed domain name are diverted to <speedydomains.com>, a website that sells registration, transfer, and parking services for domain names.
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 in the CATHAY BANK mark through registration and continuous use. Respondent’s <cathay-bank.com> domain name is identical to Complainant’s CATHAY BANK mark because it incorporates Complainant’s entire mark and merely replaces the space with a hyphen. The addition of a hyphen to another’s mark in a domain name does not create a distinct mark capable of overcoming a claim of identical or confusing similarity. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response. 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”).
There is no evidence that Respondent is commonly known as CATHAY-BANK or <cathay-bank.com>. Therefore Respondent has not established that it has 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is using the disputed domain name in order to divert Internet users to <speedydomains.com>. It can be inferred that Respondent is making a profit from the Internet traffic that is diverted to this website, and therefore Respondent is commercially benefitting from the confusion created through its use of <cathay-bank.com>. Respondent’s use of an identical or confusingly similar domain name in order to create a likelihood of confusion for the commercial benefit considered to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).
Respondent has made no use of the disputed domain name, other than to divert Internet users to <speedydomains.com> since it registered the domain name. Because Respondent has made no use of the actual domain name, Respondent is passively holding the domain name and it may therefore be inferred that Respondent registered and used <cathay-bank.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <cathay-bank.com> be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 30, 2002
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