MB Financial Bank N.A. v. MB Mortgage Corp.
Claim Number: FA0805001195131
Complainant is MB Financial Bank N.A. (“Complainant”), represented by Mark
W.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mbmortgage.com>, registered with Network Solutions, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 4, 2008.
On May 27, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <mbmortgage.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 June
11, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 1, 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@mbmortgage.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mbmortgage.com> domain name is confusingly similar to Complainant’s MB mark.
2. Respondent does not have any rights or legitimate interests in the <mbmortgage.com> domain name.
3. Respondent registered and used the <mbmortgage.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a national banking association in the business of providing full selection of banking and financial services. It currently holds multiple valid registrations of the MB mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,393,663 issued October 10, 2000) in connection with the sale and promotion of banking services, including real estate lending products such as mortgages. Complainant and its predecessor-in-interest have been using the MB mark in commerce since at least 1997.
The <mbmortgage.com>
domain name was registered on March 30, 2002.
It currently resolves to a financial services website purporting to
offer mortgage and lending services and information in the state of
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 sufficiently
established its rights in the MG mark through registration with the USPTO
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
The <mbmortgage.com>
domain name contains Complainant’s MB mark in its entirety followed by the
descriptive term “mortgage,” describing a type of service offered under the MB
mark, and the generic top-level domain (“gTLD”) “.com.” Further, it is well-established that the
inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i)
analysis, and that the inclusion of a word that has an obvious connection with
Complainant’s business will not distinguish a disputed domain name. Accordingly, the Panel finds that the <mbmortgage.com> domain name is
confusingly similar to Complainant’s MB mark pursuant to Policy ¶ 4(a)(i). See Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc.,
FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of
confusion is further increased by the fact that the Respondent and
[Complainant] operate within the same industry”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev.,
FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the
addition of a generic top-level domain is irrelevant when considering whether a
domain name is identical or confusingly similar under the 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 concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Complainant has no rights or legitimate interests in the
disputed domain name. See VeriSign Inc. v. VeneSign
Respondent has failed to submit a response to the
Complaint. Therefore, the Panel may
presume that Respondent has no rights or legitimate interests in the disputed
domain name, but will nonetheless examine the record in consideration of the
elements established under Policy ¶ 4(c).
See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertions
in this regard.”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
The WHOIS information for the disputed domain name lists Respondent as “MB Mortgage Corporation.” However, without any additional evidence in the record, the Panel fails to find that Respondent is or ever was commonly known by the <mbmortgage.com> domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Hewlett-Packard Co. v. HP Supplies, FA 282387 (Nat. Arb. Forum July 22, 2004) (“The Panel finds, because of the prominence of the HP mark, that Respondent’s registration under the ‘HP Supplies’ name does not establish that Respondent is commonly known by the <hpsupplies.com> domain name.”).
The <mbmortgage.com> domain name resolves to a website offering lending and mortgage services in direct competition with those offered under Complainant’s mark. The Panel finds that this does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommerical or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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 also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
Respondent’s
<mbmortgage.com> domain name resolves to a website offering
services identical and thus in direct competition with those offered under
Complainant’s MB mark. The Panel finds that this is
a disruptive use and establishes Respondent’s bad faith registration and use of
the disputed domain name pursuant to Policy ¶ 4(b)(iii). See
Spark Networks PLC v. Houlihan, FA 653476
(Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of
a domain name substantially similar to Complainant’s AMERICAN SINGLES mark in
order to operate a competing online dating website supported a finding that
respondent registered and used the domain name to disrupt the complainant’s
business under Policy ¶ 4(b)(iii)); see
also Surface Prot. Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between the complainant and the respondent, the
respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion).
Respondent seemingly is operating a commerical website resolving from the disputed domain name that directly competes with Complainant. A website unrelated to Complainant’s MB mark but offering similar goods or services is likely to confuse Internet users as to the affiliation of the disputed domain name with Complainant. Consequently, the Panel finds this to be further evidence of Respondent’s bad faith registration and use of the <mbmortgage.com> domain name pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel concludes that Complainant has sufficiently established 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 <mbmortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 16, 2008
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