Gibraltar Private Bank & Trust Company v. UAB IVL
Claim Number: FA0906001266792
Complainant is Gibraltar
Private Bank & Trust Company (“Complainant”), represented by Jaime S. Rich, of Lott & Friedland,
P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <gibraltarbank.biz> and <gibraltarbank.info>, registered with Moniker Online Services, LLC.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2009.
On June 5, 2009, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <gibraltarbank.biz> and <gibraltarbank.info> domain names are registered with Moniker Online Services, LLC and that Respondent is the current registrant of the names. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC 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 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 2009 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@gibraltarbank.biz and postmaster@gibraltarbank.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 8, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gibraltarbank.biz> and <gibraltarbank.info> domain names are confusingly similar to Complainant’s GIBRALTAR BANK mark.
2. Respondent does not have any rights or legitimate interests in the <gibraltarbank.biz> and <gibraltarbank.info> domain names.
3. Respondent registered and used the <gibraltarbank.biz> and <gibraltarbank.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Gibraltar Private Bank & Trust Company, provides financial services in the field of money lending, loan financing, mortgage lending, and mortgage brokerage services. Complainant holds various trademarks with the United States Patent and Trademark Office (“USPTO”) for its GIBRALTAR BANK mark (i.e., Reg. No. 2,584,624 issued June 25, 2002).
Respondent registered the <gibraltarbank.biz> and <gibraltarbank.info> domain names on August 3, 2005. The disputed domain names resolve to websites containing links to third-party websites offering similar services as to 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 Complainant has established rights under Policy ¶ 4(a)(i) in the GIBRALTAR BANK mark through its registration of the mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <gibraltarbank.biz> and <gibraltarbank.info> domain names are confusingly similar to Complainant’s GIBRALTAR BANK mark. The disputed domain names contain Complainant’s mark with the removal of the space between “gibraltar” and “bank” and the addition of the generic top-level domains “.biz” and “.info.” The Panel finds the removal of a space fails to distinguish the disputed domain names from Complainant’s GIBRALTAR BANK mark. The Panel also finds the addition of a generic top-level domain is irrelevant under a Policy ¶ 4(a)(i) analysis. Therefore, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <gibraltarbank.biz> and <gibraltarbank.info> domain names. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii), when Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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).
Respondent’s <gibraltarbank.biz> and <gibraltarbank.info> domain names resolve to websites featuring links to Complainant’s competitors. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did 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 also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <gibraltarbank.biz> or <gibraltarbank.info> domain names. Complainant asserts that Respondent is not authorized to use the GIBRALTAR BANK mark. The WHOIS information identifies Respondent as “UAB IVL.” Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <gibraltarbank.biz> and <gibraltarbank.info> domain names to redirect Internet users, interested in Complainant’s services, to Respondent’s websites featuring links to competitors of Complainant. Respondent’s use of the disputed domain names that are confusingly similar to Complainant’s GIBRALTAR BANK mark for this purpose constitutes disruption, which evidences bad faith registration and use under Policy ¶ 4(b)(iii). 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 Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Respondent is using the confusingly similar disputed domain
names to resolve to websites offering links to Complainant’s competitors. The Panel infers Respondent received
click-through fees from these links. The
Panel finds Respondent’s use of the disputed domain names constitute bad faith
registration and use under Policy ¶ 4(b)(iv). See
The Panel finds 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 <gibraltarbank.biz> and <gibraltarbank.info> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 22, 2009
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