MidFirst Bank v. SMS c/o jjang
Claim Number: FA0909001285648
Complainant is MidFirst Bank (“Complainant”), represented by Andrew
B. Peterson, of McAfee & Taft,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwmidfirstbank.com>, registered with Fabulous.com Pty Ltd.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 23, 2009.
On September 22, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwmidfirstbank.com> 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 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwmidfirstbank.com> domain name is confusingly similar to Complainant’s MIDFIRST BANK mark.
2. Respondent does not have any rights or legitimate interests in the <wwwmidfirstbank.com> domain name.
3. Respondent registered and used the <wwwmidfirstbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MidFirst Bank, is in the business of providing financial products and services to its customers under its MIDFIRST BANK mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,593,714 issued March 24, 2009).
Respondent, SMS c/o jjang, registered the disputed domain name on August 19, 2009. Respondent’s disputed domain name resolves to a website displaying links to third-party websites offering competing banking services.
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 provided evidence of the registration of its
MIDFIRST BANK mark with the USPTO (Reg. No. 3,593,714 issued March 24,
2009). The Panel finds Complainant’s
registration of its mark with the USPTO meets the requirements of Policy ¶
4(a)(i), and thus finds Complainant has rights in its MIDFIRST BANK mark under
the Policy. See Microsoft Corp. v. Burkes, FA 652743 (Nat.
Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT
mark through registration of the mark with the USPTO.”); see also Reebok Int’l Ltd. v.
domain name contains Complainant’s MIDFIRST BANK mark in its entirety preceded
by the letters “www” and followed by the generic top-level domain (gTLD)
“.com.” The addition of “www” to the
beginning of the disputed domain name takes advantage of Internet users’
typographical error in omitting the period while typing a domain name,
resulting in confusing similarity. See Neiman
Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <wwwmidfirstbank.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii) and the burden of proof now shifts to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the [disputed domain] name. Thus, the burden shifts to Respondent to demonstrate that it does have such rights or 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 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).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <wwwmidfirstbank.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the MIDFIRST BANK mark, and the WHOIS information identifies Respondent
as “SMS c/o jjang.” Thus, the Panel finds 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
Respondent is using the disputed domain name to display
links to third-party financial services websites that directly compete with Complainant. Using a domain name that is confusingly
similar to another’s mark to divert Internet users to directly competing
websites is 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). See
Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat.
Additionally, typosquatting occurs when a respondent
purposefully includes typographical errors in the domain name to divert
Internet users who commit the typographical error the domain name takes
advantage of. The <wwwmidfirstbank.com> domain name
takes advantage of Internet users who omit the period after the “www” prefix at
the beginning of domain name. The Panel
finds that Respondent is engaged in typosquatting by adding “www” to the
beginning of Complainant’s mark. This is
further evidence that Respondent does not have rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Black & Decker Corp. v. Khan, FA
137223 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of
Complainant’s MIDFIRST BANK mark in
the disputed domain name to divert Internet users to Complainant’s direct
competitors suggests that Respondent registered the disputed domain name
intending to disrupt Complainant’s business.
The Panel finds Respondent’s actions are evidence of bad faith
registration and use under Policy ¶ 4(b)(iii).
See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
Complainant’s competitors in the financial industry. Because Respondent’s domain name is
confusingly similar to Complainant’s MIDFIRST BANK mark, Internet users may become confused as to
Complainant’s affiliation with the resulting website. Respondent is attempting to profit from this
confusion via the click-through-fees.
Thus, Respondent’s use of the disputed domain name constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Furthermore, the Panel finds that Respondent’s engagement in
typosquatting is evidence that Respondent registered and is using the disputed
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc.
v. Zuccarini, D2002-1011 (WIPO
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 <wwwmidfirstbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 6, 2009
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