MidFirst Bank v. Adam Smith
Claim Number: FA0907001274302
Complainant is MidFirst Bank (“Complainant”), represented by Andrew
B. Peterson, of McAfee & Taft A Professional
Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <emidfirstbank.com>, registered with Name.com 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 20, 2009.
On July 17, 2009, Name.Com LLC confirmed by e-mail to the National Arbitration Forum that the <emidfirstbank.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.Com LLC has verified that Respondent is bound by the Name.com 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 July 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 12, 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@emidfirstbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant has used the MIDFIRST mark in connection with its banking products and services since 1982.
Complainant owns a trademark registration for the MIDFIRST service mark, on file with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,425,140, issued January 13, 1987).
Respondent registered the <emidfirstbank.com> domain name on April 27,
2009.
Respondent uses the disputed domain name to resolve to a parked web page, and to send fraudulent e-mails to Internet users by which it attempts to pass itself off as Complainant, and to gain personal information from such users by communicating that the e-mail recipient had won a lottery.
Respondent’s <emidfirstbank.com> domain name is confusingly similar to Complainant’s MIDFIRST mark.
Respondent does not have any rights to or legitimate interests in the domain name <emidfirstbank.com>.
Respondent registered and uses the <emidfirstbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant owns a trademark registration with the USPTO for the MIDFIRST mark (Reg. No. 1,425,140, issued January 13, 1987). Complainant has thus established rights in the MIDFIRST mark for purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007):
Complainant’s
trademark registrations with the USPTO adequately demonstrate its rights in the
mark pursuant to Policy ¶ 4(a)(i).
See also Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO).
Complainant argues that Respondent’s <emidfirstbank.com> domain name is confusingly similar to Complainant’s MIDFIRST mark test of Policy ¶ 4(a)(i). Respondent’s domain name contains Complainant’s mark in its entirety, adds the term “bank” and the letter “e,” and adds the generic top-level domain (“gTLD”) “.com.” The addition of the term “bank” to the <emidfirstbank.com> domain name creates a confusing similarity between the disputed domain name and Complainant’s registered mark because the term has an obvious relationship with Complainant’s banking business. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where the disputed domain name<kohlerbaths.com> contained a complainant’s mark in its entirety, adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of the word “advisors” and the gTLD “.com” did not sufficiently alter a disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
Similarly, a disputed domain name that contains a complainant’s registered mark and adds the letter “e” fails to create a distinguishing characteristic between the domain name and the registered mark. See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <ecanadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also Int’l Data Group, Inc. v. Maruyama & Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain name <ecomputerworld.com> is confusingly similar to a complainant’s COMPUTERWORLD mark).
Finally, the addition of a gTLD to Complainant’s mark in forming the contested domain is irrelevant in distinguishing the domain from the mark. See 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.
Therefore, the Panel finds that Respondent’s <emidfirstbank.com> domain name is confusingly
similar to Complainant’s MIDFIRST mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <emidfirstbank.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):
Complainant
must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and then the burden
shifts to Respondent to show it does have rights or legitimate interests.
Complainant has established a prima facie case in support of its contentions. Respondent, for its part, has failed to respond to the allegations of the Complaint. We are therefore free to presume that Respondent lacks rights or interests in the disputed domain name sufficient to satisfy the requirements of the Policy. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate its rights to or legitimate interests in a disputed domain name). We will nonetheless examine the record to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name under the criteria set out in Policy ¶ 4(c).
We begin by noting that Respondent’s WHOIS registration is evidence that Respondent is not commonly known by the <emidfirstbank.com> domain name, in that the registrant is listed as “Adam Smith.” No evidence to the contrary appearing in the record, we conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We also observe that there is no dispute as to the allegation of the Complaint that Respondent registered the <emidfirstbank.com> domain name on April 27, 2009 and is using it to operate what is commonly referred to as a phishing scheme, in which it attempts to pass itself off as Complainant and uses the goodwill and trust which Complainant has earned in the marketplace to lure unsuspecting Internet users into surrendering their personal information by telling them that they have won a lottery. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004):
‘Phishing’
involves the use of e-mails, pop-ups or other methods to trick Internet users
into revealing credit cards, passwords, social security numbers and other
personal information to the ‘phishers’ who intend to use such information for
fraudulent purposes.
Respondent’s phishing activities are neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that a respondent’s use of the <allianzcorp.biz> domain name fraudulently to acquire the personal and financial information of Internet users seeking a complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent uses the <emidfirstbank.com> domain name to pass itself off as Complainant. Respondent does not deny this allegation. Such a use constitutes bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that a respondent’s bad faith use of the title “Dodgeviper.com Official Home Page” gave consumers the misimpression that a complainant endorsed and sponsored a respondent’s website).
In addition, Respondent’s undenied use of the <emidfirstbank.com> domain name to operate a phishing scheme by creating a likelihood of confusion in order to perpetrate fraud upon Internet users is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004): “The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.” See also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that a respondent demonstrated bad faith registration and use of a domain name where it fraudently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a competing mark).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <emidfirstbank.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 31, 2009
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