Sovereign Bank v. Domain Administration Limited c/o David Halstead
Claim Number: FA0803001163471
Complainant is Sovereign Bank (“Complainant”), represented by John
L. Welch of Lowrie, Lando & Anastasi, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sovereignbank.org>, registered with eNom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 13, 2008; the National Arbitration Forum received a hard copy of the Complaint March 14, 2008.
On March 14, 2008, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <sovereignbank.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 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@sovereignbank.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <sovereignbank.org>, is identical to Complainant’s SOVEREIGN BANK mark.
2. Respondent has no rights to or legitimate interests in the <sovereignbank.org> domain name.
3. Respondent registered and used the <sovereignbank.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sovereign Bank, is a federally-chartered bank with 750 offices in eight states. Complainant is the largest subsidiary of Sovereign Bancorp whose assets have grown from $15.3 billion in 1996 to approximately $89.6 billion in 2006. Deposits at Sovereign Bank have grown from $8.7 billion in 1996 to more than $52.4 billion in 2006.
Complainant has used the SOVEREIGN BANK mark in accordance with its banking and financial services since 1992. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) on May 23, 2006 (Reg. No. 3,094,970). Additionally, Complainant operates websites at the <sovereignbank.com>, <sovereignbank.net>, <sovereignbank.us> and <sovereignbank.biz> domain names registered in 1996, 2002, 2006 and 2006 respectively.
The disputed domain name, <sovereignbank.org>, which Respondent
registered May 6, 2004, resolves to a parked page featuring links of
Complainant’s competitors. Additionally,
Respondent has been the respondent in several UDRP proceedings in which the
disputed domain names were transferred from Respondent to the complainants in
those cases. See Enterprise Rent-A-Car Co. v. Domain Admin Ltd., FA 1126287
(Nat. Arb. Forum Feb. 25, 2008) (transferring the <enterprizerent.com> domain
name to the complainant); see also Am.
Chartered Bancorp Inc. v. Domain Admin Ltd., FA 1088009 (Nat. Arb.
Forum Nov. 22, 2007) (transferring the <americancharteredbank.com> domain
name to the complainant).
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant possesses a trademark registration for the
SOVEREIGN BANK mark; however, neither the registration date, nor the
application date of the trademark registration, predate the registration
of the disputed domain name by Respondent. However, if Complainant
demonstrates sufficient common law rights in the mark that predate the
registration of the disputed domain name, Complainant satisfies Policy ¶
4(a)(i). See SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also
Complainant contends that it began using the mark in January 1992, and that since that time it has used its mark extensively to promote its business. Complainant is the largest subsidiary of Sovereign Bancorp whose assets have grown from $15.3 billion in 1996 to approximately $89.6 billion in 2006. Deposits at Sovereign Bank have grown from $8.7 billion in 1996 to more than $52.4 billion in 2006. Thus the Panel finds that Complainant established common law rights in the SOVEREIGN BANK mark sufficient to convey rights that predate the registration of the disputed domain name under Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also 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.”).
The Panel finds that Respondent’s <sovereignbank.org> domain name is identical to
Complainant’s SOVEREIGN BANK mark under Policy ¶ 4(a)(i) because it contains
Complaint’s entire mark without the space.
When evaluating if the disputed domain name is identical, the addition
of a generic top-level domain “.org” is irrelevant. Accordingly, Respondent’s disputed
domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Koninklijke Philips Elecs. NV v. Goktas,
D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name
<philips.org> is identical to the complainant’s PHILIPS mark); see also 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.”); see also
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant initially must establish that Respondent lacks rights and legitimate interests with respect to the <sovereignbank.org> domain name under Policy ¶ 4(a)(ii). However, once Complainant makes a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. The failure of the Respondent to respond permits the presumption that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that Complainant established a prima facie case; but, this Panel examine all the evidence before making a final determination under Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).”); see also 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.”).
Respondent is using the <sovereignbank.org>
domain name to display hyperlinks to a parked page with a list of
third-party websites, some of which are in direct competition with
Complainant. The Panel infers that
Respondent is using the disputed domain name to earn click-through fees, and
thus finds that Respondent has not made a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see also Wells
Fargo & Co. v. Lin Shun Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to
direct Internet traffic to a website featuring pop-up advertisements and links
to various third-party websites is neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user).
Additionally, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <sovereignbank.org> domain name and no other evidence in the record suggests that Respondent is commonly known by the disputed domain name. Moreover, Complainant asserts that Respondent is not authorized to use Complainant’s SOVEREIGN BANK mark and that Respondent is not associated with Complainant in any way. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) the panel found that the respondent did not have rights in a domain name when the respondent was not known by the mark. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Based on the uncontested evidence presented by Complainant,
the Panel finds that Respondent receives click-through fees for the hyperlinks
displayed on the website that resolves from the <sovereignbank.org> domain name. The Panel also finds that Respondent’s
disputed domain name is capable of creating a likelihood of confusion as to
Complainant’s sponsorship and affiliation with the disputed domain name and
corresponding website. Such commercial
benefit constitutes bad faith registration and use under Policy ¶
4(b)(iv). See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003) (“Registration and use of a domain name that incorporates another's mark
with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”); 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.’”).
Moreover, the Panel finds that
Respondent is using the <sovereignbank.org>
domain name to redirect Internet users to
a website that contains third-party hyperlinks, some of which are in direct
competition with Complainant. Such use
constitutes a disruption of Complainant’s business and qualifies as bad faith
registration and use under Policy ¶ 4(b)(iii).
See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000)
(finding that the respondent registered and used the domain name
<eebay.com> in bad faith where the respondent has used the domain name to
promote competing auction sites).
The Panel finds that
Respondent has a pattern of “cybersquatting.”
Respondent has been a party to seventeen other proceedings under the
UDRP all resulting in a transfer of the disputed domain names. See Enterprise Rent-A-Car
Co. v. Domain Admin Ltd. c/o David Halstead, FA 1126287 (Nat. Arb. Forum Feb. 25, 2008)
(transferring the <enterprizerent.com> domain name to the complainant); see also American Chartered Bancorp Inc. v.
Domain Admin Ltd. c/o David Halstead, FA 1088009 (Nat. Arb. Forum Nov.
22, 2007) (transferring the <americancharteredbank.com> domain name to
the complainant). Respondent has shown a history of preventing
trademark owners from reflecting their marks in domain names and such conduct
support findings of bad faith registration and use of disputed domain names
pursuant to Policy ¶ 4(b)(ii). See Nat’l
Wildlife Fed’n v. Kang, FA 170519 (Nat.
Arb. Forum Sept. 9, 2003) (“Respondent has a history of registering domain
names that infringe on other trademark holders' rights; therefore, Respondent's
registration and use of the <yourbigbackyard.com> domain name constitutes
bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to
Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting
its mark on-line.”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc.,
FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy
¶ 4(b)(ii) because the domain name prevented the complainant from reflecting
its mark in a domain name and the respondent had several adverse decisions
against it in previous UDRP proceedings, which established a pattern of
cybersquatting).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sovereignbank.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 1, 2008.
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