Huntington Bancshares Incorporated v. Good Domains
Claim Number: FA0208000123867
Complainant is Huntington Bancshares Incorporated, Columbus, OH (“Complainant”) represented by Karen K. Hammond, of Porter, Wright, Morris & Arthur LLP. Respondent is Good Domains, Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <huntingtonnationalbank.com>, registered with Enom, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 23, 2002; the Forum received a hard copy of the Complaint on August 28, 2002.
On August 29, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain name <huntingtonnationalbank.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 18, 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 email@example.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 October 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <huntingtonnationalbank.com> domain name is identical to Complainant’s HUNTINGTON NATIONAL BANK mark as well as confusingly similar to its registered Huntington Banks mark.
2. Respondent does not have rights to or legitimate interests in the <huntingtonnationalbank.com> domain name.
3. Respondent registered and used the <huntingtonnationalbank.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant is a well-known bank holding company founded in 1866 whose subsidiaries provide a wide range of banking and financial related services throughout the United States. Complainant provides services in its 300+ regional banking offices and through its website at <huntington.com>. Complainant owns registered marks with the United States Trademark and Patent Office (“USTPO”) for HUNTINGTON, Reg. No. 2,413,905; HUNTINGTON BANKS, Reg. No. 2,475,384; and HUNTINGTON BANC SHARE Reg. No. 1,288,158. Complainant is also commonly known by its service mark HUNTINGTON NATIONAL BANK. Through these marks, Complainant has become well known and identifiable as a source of goods and services of a certain distinguished level.
Respondent registered the disputed domain name on November 1, 2001. Respondent is in the business of selling domain names on the Internet for profit. Respondent has redirected Internet traffic from the disputed domain name to no less than five (5) other websites. In November and December 2001, Respondent linked the disputed domain name to <abortionismurder.org>, which resolves to a website that contains graphic and disturbing images of aborted fetuses. In January 2002, Respondent linked the disputed domain name to <ewtn.com>. That domain name resolves to a website that advertises the Eternal World Television Network, a Global Catholic Network. In June 2002, Respondent linked the disputed domain name to <cyberpills.com>. That domain name connects to a website that is an online prescription drug ordering service. In July and August 2002, Respondent linked the disputed domain name to <e-scripts-md.com>. That domain name corresponds with a website that offers online medical consultation and prescription drug services. And finally, at the time this action was commenced, Respondent was linking the disputed domain name to <pillstore.com>, which resolves to an online prescription drug ordering service. Respondent has had a “domain for sale” offer on the WhoIs information since registration and has offered to sell the domain name several times for as much as $5,000.00.
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 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.
Identical and/or Confusingly Similar
Complainant has established rights in both the HUNTINGTON and HUNTINGTON NATIONAL BANK marks through registration with the USTPO as well as continuous use and affiliation with the marks.
Respondent’s <huntingtonnationalbank.com> domain name is identical to the service mark HUNTINGTON NATIONAL BANK used by Complainant. It is not sufficient to add “.com” to make a domain name distinct from Complainant’s mark. State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Complainant has rights in the registered marks, STATE FAIR OF TEXAS and TEXAS STATE FAIR and therefore, Respondent’s domain names <statefairoftexas.com> and <texasstatefair.com> are identical to Complainant’s marks, except for the addition of the domain name level designation ".com"); Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).
Furthermore, Respondent’s <huntingtonnationalbank.com> domain name is confusingly similar to the registered mark HUNTINGTON used by Complainant. The domain name is confusingly similar since Complainant’s entire mark is used within the disputed domain name. Customers may believe that there is an association in fact between both parties when in truth none exists. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has not submitted a reply to Complainant’s allegations, thereby permitting the Panel to conclude that all reasonable inferences made by Complainant are true and accurate unless there is evidence that is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). There is no evidence that contradicts the allegations of Complainant. Complainant has presented evidence that substantiates its claim that Respondent has no legitimate rights or interests in the contested domain name.
Complainant has produced substantial evidence that indicates Respondent has used the disputed domain name to redirect Internet users to various websites, including the “abortion is murder” website, and none of which were affiliated with Complainant. Moreover, Respondent has asked for compensation well beyond its initial registration fee and out-of-pocket expenses. Panels have founds such use fails to demonstrate rights or legitimate interests in similar circumstances. See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (“by linking the confusingly similar domain name to an “Abortion is Murder” website and subsequently asking for compensation beyond out-of-pocket costs to transfer the domain name, Respondent has not demonstrated a right or legitimate interest in the disputed domain name”).
Respondent deliberately registered the disputed domain name to capitalize on Complainant’s commonly known mark. There are no rights or legitimate interests when one tries to benefit from the unauthorized use of another’s mark. See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).
There is no evidence before the Panel that establishes a viable connection between the domain name <huntingtonnationalbank.com> and Respondent’s business. On the contrary, Complainant has produced significant evidence to establish itself as primary holder of all legitimate rights and interests in the HUNTINGTON and HUNTINGTON NATIONAL BANK marks. Since Respondent is not known by, or associated with the HUNTINGTON and HUNTINGTON NATIONAL BANK marks, it is reasonable to conclude that Respondent has no rights to the domain name according 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has thus been satisfied.
Registration and Use in Bad Faith
Based on the fame of Complainant’s HUNTINGTON and HUNTINGTON NATIONAL BANK marks, coupled with its reputation as a national banking institution since 1866 and its listing on the Principal Register of the USPTO, it can be inferred that Respondent had knowledge of Complainant’s rights in the HUNTINGTON and HUNTINGTON NATIONAL BANK marks when it registered the disputed domain name. Registration of a domain name that incorporates Complainant’s marks, despite knowledge to the contrary, is an indication of bad faith pursuant to Policy ¶ 4(a)(iii). Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Respondent’s use of the infringing domain name illustrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). By redirecting unwary Internet users to other websites, and presumably doing it for monetary gain, Respondent is acting in bad faith. Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion as to the sponsorship of its websites. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith).
Finally, a party has registered and used the domain name in bad faith if it utilizes the well known mark of someone else and links the domain name with a website that depicts patently explicit and odious images. Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith). By connecting <huntingtonnationalbank.com> to <abortionismurder.org>, Respondent has deliberately acted in bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel hereby concludes that the requested relief shall be GRANTED.
Accordingly, it is ordered that the domain name <huntingtonnationalbank.com> be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 11, 2002
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