Trustmark National Bank v.
Dariusz Herman c/o Herman DOMCREATE
Claim Number: FA0904001258182
PARTIES
Complainant is Trustmark National Bank,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trustmark.us>, registered with Psi-Usa,
Inc. d/b/a Domain Robot.
PANEL
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.
The Honorable Charles K. McCotter, Jr. (Ret.)
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on April 17, 2009;
the Forum received a hard copy of the Complaint on April 20, 2009.
On April 20, 2009, Psi-Usa, Inc. d/b/a Domain Robot confirmed by
e-mail to the Forum that the <trustmark.us> domain name is registered with Psi-Usa,
Inc. d/ba Domain Robot and that Respondent is the current registrant of
the name. Psi-Usa, Inc. d/b/a Domain Robot has verified that Respondent is
bound by the Psi-Usa, Inc. d/b/a Domain Robot
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On April 30, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 20, 2009 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On May 22, 2009, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <trustmark.us> domain name is identical to Complainant’s TRUSTMARK mark.
2.
Respondent does not have any rights or
legitimate interests in the <trustmark.us>
domain name.
3.
Respondent registered and used the <trustmark.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Trustmark National Bank, is the
owner of the TRUSTMARK mark, registered with the Untied States Patent and
Trademark Office (“USPTO”) (i.e., Reg. No. 2,559,639, issued April 9,
2002). Complainant uses the TRUSTMARK
mark in connection with the advertising and marketing of its financial,
insurance, and investment services.
Respondent registered the <trustmark.us> domain name on February
15, 2009. The disputed domain name
resolves to a website displaying links to Complainant’s competitors’
websites. Respondent also offers the
disputed domain name for sale through a link on the resolving website at <trustmark.us>. After Complainant submitted an initial offer
of $500 to purchase the domain name, Respondent counter-offered with the amount
of $2,644. Complainant responded with a
counter-offer of $1,000, which was again refused by Respondent, who insisted on
the $2,644 price. Complainant then made
a final offer in the amount of $1,500, which was refused by Respondent for the
third time, insisting on the $2,644 price.
DISCUSSION
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(f), 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 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds that Complainant’s
registration of its TRUSTMARK mark with the United States Patent and Trademark
Office (“USPTO”) adequately establishes sufficient rights in its mark pursuant
to Policy ¶ 4(a)(i). See
Expedia,
Inc. v. Tan, FA 991075 (Nat. Arb.
Forum June 29, 2007) (“As the [complainant’s] mark is registered with
the USPTO, [the] complainant has met the requirements of [UDRP] Policy ¶ 4(a)(i).”); see also
Complainant alleges that Respondent’s <trustmark.us> domain name is identical to Complainant’s FIRSTMARK mark. The Panel finds that the addition of the country-code top-level domain (“ccTLD”) “.us” is irrelevant under the Policy ¶ 4(a)(i) analysis. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). Therefore, the Panel concludes that Respondent’s <trustmark.us> domain name is identical to Complainant’s TRUSTMARK mark.
Complainant has satisfied Policy ¶ 4(a)(i).
Rights
or Legitimate Interests
Complainant alleges that Respondent lacks
rights and legitimate interests in the disputed domain name. Initially, Complainant must set out a prima facie case supporting its
contentions, as it has in this case, and the burden then shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). The
Panel finds that Complainant has met the requirements of a prima facie case. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under [UDRP] Policy ¶ 4(a)(ii), and then the burden shifts to
[the] respondent to show it does have rights or legitimate interests.”); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and legitimate
interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name).
There is no evidence in the record to conclude that Respondent owns any
service marks or trademarks that reflect the <trustmark.us>
domain name. Therefore the Panel finds
that Respondent does not have rights and legitimate interests pursuant to
Policy ¶ 4(c)(i). See Meow Media Inc.
v. Basil, FA 113280
(Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that
Respondent was the owner or beneficiary of a mark that is identical to the
<persiankitty.com> domain name); see also Pepsico, Inc. v Becky,
FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did
not own any trademarks or service marks reflecting the <pepsicola.us>
domain name, it had no rights or legitimate interests pursuant to Policy ¶
4(c)(i)).
Moreover, Complainant alleges that nothing in
the record suggests that Respondent is commonly known by the <trustmark.us> domain name. The WHOIS information lists Respondent as “Dariusz Herman c/o Herman DOMCREATE.” Therefore, the Panel finds that Respondent
does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(iii). See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent is using the disputed domain name to resolve to a website displaying links to websites of Complainant’s competitors. Presumably, Respondent is receiving referral fees from such use. Therefore, the Panel concludes that pursuant to Policy ¶¶ 4(c)(ii) and (iv), Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] Policy ¶ 4(c)(iii).”); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
Additionally, Complainant alleges that Respondent’s offer of the domain name for sale does not constitute a bona fide offering of goods and services or a noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). Moreover, since Respondent continuously refused Complainant’s offer to purchase the <trustmark.us> domain name, insistent on a price well above the out-of-pocket registration costs, Respondent lacks rights or legitimate interests. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Thus, Respondent’s use of the disputed domain name does not establish a bona fide offering of goods and service or a legitimate noncommercial or fair use pursuant to UDRP ¶¶ 4(c)(ii) and (iv).
Complainant has
satisfied Policy ¶ 4(a)(ii).
Registration
and/or Use in Bad Faith
Complainant alleges that Respondent has
engaged in bad faith use of the disputed domain name based on Respondent’s
offering of the domain name for sale.
Complainant asserts that since Respondent insists on a price that is
above the out-of-pocket costs associated with registering the disputed domain
name, and has continuously refused Complainant’s counter-offers, Respondent has
engaged in bad faith pursuant to Policy ¶ 4(b)(i). The Panel finds that such use of the disputed domain name constitutes bad faith use under
Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276
(Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and
was using the <gwbakeries.mobi> domain name in bad faith according to UDRP
¶ 4(b)(i) where it offered it for sale for far more than its estimated
out-of-pocket costs it incurred in initially registering the disputed domain
name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under UDRP ¶ 4(b)(i)).
Complainant further alleges that Respondent has engaged in
bad faith use of the disputed domain name based on the general intent to
disrupt Complainant’s business and diverting Internet users to Respondent’s
resolving website. The disputed domain
name contains multiple links which resolve to websites of Complainant’s
competitors. The Panel finds that
Respondent engaged in bad faith use pursuant to Policy ¶ 4(b)(iii) by diverting
Internet users to websites of Complainant’s competitors, thereby disrupting
Complainant’s business. See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under UDRP ¶ 4(b)(iii)); see also St. Lawrence Univ.
v. Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet
users seeking information on Complainant’s educational institution to competing
websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP]
Policy ¶ 4(b)(iii).”).
Respondent is presumably generating revenue from the
click-through links on the website resolving from the <trustmark.us> domain name. Complainant asserts that Respondent is attempting
to attract Internet users who are seeking out Complainant’s website, diverting
them to resolving websites of Complainant’s competitors, and profiting from
this diversion. The Panel finds that
such use constitutes bad faith 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 UDRP ¶ 4(b)(iv) where the respondent was diverting
Internet users searching for the complainant to its own website and likely profiting);
see also Univ. of
Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trustmark.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Panelist
Dated: June 5, 2009
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