PlainsCapital Corporation v. Iype Varghese
Claim Number: FA0804001178859
Complainant is PlainsCapital Corporation (“Complainant”), represented by Kay
Lyn Schwartz, of Gardere Wynne Sewell, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <plainscapital.mobi> and <plainscapitalbank.mobi>, registered with Moniker.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 18, 2008.
On April 30, 2008, Moniker confirmed by e-mail to the National Arbitration Forum that the <plainscapital.mobi> and <plainscapitalbank.mobi> domain names are registered with Moniker and that Respondent is the current registrant of the names. Moniker has verified that Respondent is bound by the Moniker 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 May
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 27, 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@plainscapital.mobi and postmaster@plainscapitalbank.mobi by e-mail.
On May 22, 2008, Respondent requested an extension of twenty days to respond to the Complaint pursuant to National Arbitration Forum Supplemental Rule 6, and Complainant consented to the extension. On May 23, 2008, the National Arbitration Forum granted an extension setting a new deadline of June 16, 2008 by which Respondent could file a response to the Complaint.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.
On June 30, 2008, Panelist Crary granted the parties’ request to Stay the Administrative Proceeding, thereby setting a deadline of July 31, 2008 by which either party could request an Order to Lift the Stay under the National Arbitration Forum’s Supplemental Rule 6.
On August 1, 2008, the National Arbitration Forum granted Complainant’s request to Lift the Stay of Arbitration.
On August 4, 2008 the Parties notified the National Arbitration Forum that they were still attempting settlement. The Panel decided to hold its decision until Friday, August 8, 2008. The Forum and the Panel did not receive notice of settlement by Friday and thus the Panel’s decision will be issued by the National Arbitration Forum.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <plainscapital.mobi> domain name is identical and Respondent’s <plainscapitalbank.mobi> domain name is confusingly similar to Complainant’s PLAINSCAPITAL mark.
2. Respondent does not have any rights or legitimate interests in the <plainscapital.mobi> and <plainscapitalbank.mobi> domain names.
3. Respondent registered and used the <plainscapital.mobi> and <plainscapitalbank.mobi> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PlainsCapital
Corporation, is one of the largest privately held banks in
Respondent, Iype Varghese, registered both the <plainscapital.mobi> and <plainscapitalbank.mobi> domain names on December 22, 2007, which resolve to websites displaying slogans incorporating the disputed domain names, and third-party hyperlinks for financial services in direct competition with 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.”
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 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 that 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 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.
The Panel finds that Complainant has established sufficient rights in its PLAINSCAPITAL mark through its trademark registration with the USPTO to bring forth this Complaint pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <plainscapital.mobi> domain name incorporates Complainant’s PLAINSCAPITAL mark completely, adding only the generic top-level domain (“gTLD”) “.mobi.” The addition of a gTLD is irrelevant when determining if a domain name is identical or confusingly similar to another party’s mark. Therefore, the Panel finds that Respondent’s <plainscapital.mobi> domain name is identical to Complainant’s PLAINSCAPITAL mark under Policy ¶ 4(a)(i). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent’s <plainscapitalbank.mobi> domain name also incorporates Complainant’s entire PLAINSCAPITAL mark adding the generic word “bank” and the gTLD “.mobi.” The generic word “bank” has an obvious connection to Complainant in addition to describing Complainant, thus it does not avoid the issue of being confusingly similar to Complainant’s PLAINSCAPITAL mark. The Panel finds that Respondent’s <plainscapitalbank.mobi> domain name is confusingly similar to Complainant’s PLAINSCAPITAL mark pursuant to Policy ¶ 4(a)(i). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Space Imaging LLC v. Brownell, 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).
The Panel finds that Complainant has sufficiently satisfied
Policy ¶ 4(a)(i).
Complainant successfully alleges a prima facie case that Respondent lacks rights and legitimate interests in the <plainscapital.mobi> and <plainscapitalbank.mobi> domain names, thus shifting the burden of proof to Respondent to prove that it has rights or legitimate interests in the disputed domain names. In G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), the panel found that “[b]ecause 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).” Respondent’s failure to respond furthers the presumption that it lacks rights and legitimate interests. The Panel chooses to evaluate the allegations pursuant to 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.”).
Complainant asserts that Respondent is not authorized to use
its PLAINSCAPITAL mark and that Respondent has not attempted to register rights
in the PLAINSCAPITAL mark. Based on the
WHOIS registration information for Respondent being “Iype Varghese” and the
uncontested evidence in the record, the Panel finds that Respondent is not
commonly known by the <plainscapital.mobi> and <plainscapitalbank.mobi>
domain names. In American West Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), the panel held
that “Respondent has registered the domain name under the name ‘Ilyoup
Paik a/k/a David Sanders.’ Given the
WHOIS domain name registration information, Respondent is not commonly known by
the [<awvacations.com>] domain name.”
Similarly, the Panel finds that Respondent is not commonly known by the
disputed domain names pursuant to Policy ¶ 4(c)(ii) and that Respondent lacks
rights and legitimate interests in the disputed domain names pursuant to Policy
¶ 4(a)(ii). See Wells Fargo
& Co. v. Onlyne Corp. Services11, Inc.,
FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain name
when the respondent is not known by the mark).
Respondent’s disputed domain names resolve to websites displaying third-party links for services in direct competition with Complainant. The Panel infers that Respondent is receiving click-through fees for the displayed hyperlinks. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel found 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. Additionally, the panel in eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001), stated that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use. Therefore, the Panel finds that Respondent’s disputed domain names do not represent 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Respondent is attempting to attract Internet users searching for Complainant to the domain names at issue, which are identical and confusingly similar to Complainant’s PLAINSCAPITAL mark. After Respondent attracts Internet users, Respondent attempts to divert the users to websites of competing businesses of Complainant. In Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000), the panel found that the respondent had diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii). The Panel finds Respondent’s diversion of business from Complainant to competing websites as evidence of bad faith registration and use, thus constituting a violation of Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent is utilizing domain names that are identical and confusingly similar to Complainant’s PLAINSCAPITAL mark to display hyperlinks directly competing with Complainant’s business, thus creating a likelihood of confusion as to Complainant’s affiliation with the resolving websites. In Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003), the panel stated that “[a]s Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).” Additionally, Respondent is presumably receiving click-through fees for the displayed hyperlinks on the resolving websites of the <plainscapital.mobi> and <plainscapitalbank.mobi> domain names. In Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003), the panel found that “Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).” Therefore, the Panel finds that Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv) through its attempt to commercially gain from the competing corresponding websites. 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
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 GRANTED.
Accordingly, it is Ordered that the <plainscapital.mobi> and <plainscapitalbank.mobi> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: August 8, 2008
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