First Republic Bank, a division of Merrill Lynch Bank & Trust Co., FSB v. Andrew Miller
Claim Number: FA0808001222534
Complainant is First Republic Bank, a division of Merrill Lynch Bank & Trust Co., FSB (“Complainant”), represented by Barbara L. Friedman, of Hanson Bridgett LLP, California, USA. Respondent is Andrew Miller (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwfirstrepublicbank.net>, registered with Fabulous.com Pty Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 2, 2008.
On August 31, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwfirstrepublicbank.net> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 September 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 23, 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@wwwfirstrepublicbank.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <wwwfirstrepublicbank.net> domain name is confusingly similar to Complainant’s FIRST REPUBLIC BANK mark.
2. Respondent does not have any rights or legitimate interests in the <wwwfirstrepublicbank.net> domain name.
3. Respondent registered and used the <wwwfirstrepublicbank.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
First Republic Bank, a division of Merrill Lynch Bank & Trust Co., FSB, was founded in 1985 and merged with Merrill Lynch & Co. in 2007. Complainant continues to operate under its FIRST REPUBLIC BANK mark (Reg. No. 2,226,121 issued Feb. 23, 1999 by the United States Patent and Trademark Office (“USPTO”). Complainant has over 90,000 clients and $34 billion in total assets. Complainant also owns and operates the <firstrepublicbank.com> domain name.
Respondent registered the disputed <wwwfirstrepublicbank.net> domain name on July 16, 2008. Respondent originally used the disputed domain name to resolve to a website that provided third-party links for Complainant’s competitors. The disputed domain name no longer resolves to any operating website.
Respondent has been the respondent in other UDRP proceedings
wherein the disputed domain names were transferred from Respondent to the
respective complainants in those cases. See Advanta
Corp. v. Miller, FA 1142903 (Nat. Arb. Forum Mar. 24, 2008); see also Advanta Corp. v. Miller, FA
1213436 (Nat. Arb. Forum Aug. 6, 2008).
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.
Complainant has set forth evidence demonstrating that FIRST REPUBLIC BANK mark was registered with the USPTO. Therefore, the Panel finds that Complainant has sufficient rights in its mark in order to achieve UDRP standing under Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <wwwfirstrepublicbank.net> domain
name includes Complainant’s entire FIRST REPUBLIC BANK mark and merely adds the
generic top-level domain “.net” and the prefix “www,” which commonly stands for
“worldwide web.” The Panel finds that
the prefix bears no distinguishing characteristic since it is merely designed
to target those Internet users omitting the period in-between the prefix and
the domain name. Moreover, the addition
of “.net” bears no relevance under Policy ¶ 4(a)(i). The Panel finds that the disputed domain name
is confusingly similar to the mark under Policy ¶ 4(a)(i). See Katadyn
N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005)
(“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant
for purposes of determining whether a domain name is identical to a mark.”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum
Dec. 6, 2002) (holding confusing similarity has been established because the
prefix “www” does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS
mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The Panel finds that Complainant has successfully asserted a sufficient prima facie case supporting its allegations that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Respondent now bears the burden of demonstrating its rights or legitimate interests. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent has failed to submit a response in this
proceeding, leaving the Panel with no information that would suggest that
Respondent is or was commonly known by the <wwwfirstrepublicbank.net>
domain name. In the WHOIS information
the registrant is listed as “Andrew Miller.”
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
Respondent’s disputed domain name formerly resolved to a website that featured third-party links for Complainant’s direct competitors, but now the disputed domain name leads to an inactive website. The Panel infers that Respondent originally received accrued “click-through” fees for the former competitive use of the disputed domain name. The Panel also finds that neither the competitive or inactive uses of the disputed domain 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 Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the passive holding of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Respondent’s disputed domain name includes the common prefix
“www” without the period, which indicates that Respondent intended to register
a typosquatted domain name—that is, a disputed domain name that was designed to
capitalize on the common typographical errors of Internet users. This is further evidence of Respondent’s lack
of rights and legitimate interests under Policy ¶ 4(a)(ii). See Amazon.com, Inc. v. J J Domains,
FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“Respondent lacks rights and
legitimate interests in the <www-amazon.com> domain name because
Respondent's addition of the prefix "www-" to Complainant's
AMAZON.COM mark constitutes typosquatting.”); see also Diners Club Int’l
Ltd. v. Domain Admin******It's all in the name******, FA 156839
(Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
the complainant’s DINERS CLUB mark, was evidence in and of itself that the
respondent lacks rights or legitimate interests in the disputed domain name
vis-à-vis the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in other UDRP proceedings
wherein the disputed domain names were transferred from Respondent to the
respective complainants in those cases. See Advanta
Corp. v. Miller, FA 1142903 (Nat. Arb. Forum Mar. 24, 2008); see also Advanta Corp. v. Miller, FA
1213436 (Nat. Arb. Forum Aug. 6, 2008).
This indicates that Respondent has engaged in a pattern of bad faith
registration and use under Policy ¶ 4(b)(ii).
See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum
Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶
4(b)(ii) where the respondent had been subject to numerous UDRP proceedings
where panels ordered the transfer of disputed domain names containing the
trademarks of the complainants); see also
Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17,
2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering
multiple domain names that infringe upon others’ famous and registered
trademarks).
Respondent’s disputed domain name resolved to a website that
promoted Complainant’s direct competitors with hyperlinks and
advertisements. This use clearly
disrupted Complainant’s business as it encouraged Internet users to conduct
business with Complainant’s competitors.
The Panel therefore finds that Respondent registered and used the
disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA
726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in
bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names); see also S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
that the respondent registered the domain name in question to disrupt the
business of the complainant, a competitor of the respondent).
The Panel also finds that Respondent’s confusingly similar
disputed domain name, which resolved to a commercial website promoting
Complainant’s competitors, created a likelihood of confusion as to
Complainant’s affiliation and endorsement of the disputed domain and
corresponding website, which constituted bad faith registration and use under
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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July
18, 2006) (finding that the respondent engaged in bad faith registration and
use by using a domain name that was confusingly similar to the complainant’s
mark to offer links to third-party websites that offered services similar to
those offered by the complainant).
The Panel finds that Respondent’s current inactive use of
the disputed domain name also constitutes bad faith registration and use under
Policy ¶ 4(a)(iii). See Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001)
(finding no rights or legitimate interests where “Respondent registered the
domain name and did nothing with it”); see
also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (“Merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy.”).
Finally, the Panel finds that Respondent engagement in
typosquatting also evidences Respondent’s bad faith registration and use under
Policy ¶ 4(a)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
the respondent engaged in typosquatting, which is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii)); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127
(Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent
has registered and used the <vangard.com> domain name in bad faith
pursuant to Policy ¶ 4(a)(iii).”).
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 <wwwfirstrepublicbank.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 7, 2008
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