Cathay Bank and Cathay Bancorp, Inc. v.
Klikrz
Claim Number: FA0207000115046
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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
postmaster@cathay-bank.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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