Household International, Inc. v. Household Financial
Claim Number: FA0210000128673
Complainant is Household International, Inc., Prospect Heights, IL, USA (“Complainant”) represented by Sean S. Swidler, of Michael Best & Friedrich LLC. Respondent is Household Financial, Hong Kong, CHINA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <householdfinancial.com>, registered with Melbourne IT.
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. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 21, 2002; the Forum received a hard copy of the Complaint on October 21, 2002.
On October 22, 2002, Melbourne IT confirmed by e-mail to the Forum that the domain name <householdfinancial.com> is registered with Melbourne IT and that Respondent is the current registrant of the name. Melbourne IT has verified that Respondent is bound by the Melbourne IT 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 October 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 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 December 6, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
The <householdfinancial.com> domain name is confusingly similar to Complainant's HOUSEHOLD FINANCE mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant holds a service mark (Reg. No. 828,902) for HOUSEHOLD FINANCE with the United States Patent and Trademark Office (“USPTO”). Complainant is also the owner of a family of marks that incorporate HOUSEHOLD registered with the USPTO. Complainant has used the HOUSEHOLD FINANCE mark since 1940, and the HOUSEHOLD service mark since as early as 1935. All of its marks are used in connection with banking and various other financial services, including lending services. Complainant is an $107 billion provider of financial services and is a leading provider of consumer loans and credit cards in the United States, Canada, and the United Kingdom.
Respondent registered the <householdfinancial.com> domain name on May 24, 2002. Respondent is using the disputed domain name in order to divert Internet users to websites that offer financial services, as well as adult entertainment 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 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.
Complainant has established that it has rights in the HOUSEHOLD FINANCE and HOUSEHOLD marks through proof of continuous use and registration with the USPTO.
The <householdfinancial.com> domain name is confusingly similar to Complainant’s HOUSEHOLD mark because it merely adds the descriptive term “financial” to the end of Complainant’s mark. The term “financial” is descriptive of Complainant’s business, and therefore does not add any distinctive characteristics because Complainant’s HOUSEHOLD mark is still the dominant element of the disputed domain name. Therefore, the addition of the term “financial” does not create a distinct mark capable of overcoming a claim of confusing similarity. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).
Furthermore, the <householdfinancial.com> domain name is confusingly similar to Complainant’s HOUSEHOLD FINANCE mark because it merely adds a variation of the word FINANCE. The word “financial” is a derivative of the root FINANCE within Complainant’s mark. Minor variations on well-established marks do not overcome claims of confusing similarity because Complainant’s mark is still the most recognizable element. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark); see also Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent has failed to Respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent is using the disputed domain name in order to divert Internet users to websites that offer services that compete with Complainant’s financial services. Respondent is also diverting Internet users to websites that offer adult entertainment that tarnishes Complainant’s mark. This type of use is not in connection with 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 Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests); see also Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website).
The website Respondent’s domain name diverts Internet users to does not identify Respondent’s services as HOUSEHOLD FINANCIAL, and there is no evidence on record that establishes that Respondent is commonly known as HOUSEHOLD FINANCIAL or <householdfinancial.com>. This lack of evidence before the Panel demonstrates that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is diverting Internet users from the <householdfinancial.com> domain name to websites that offer financial services that compete with Complainant’s financial services. Respondent’s diversionary use of the disputed domain name is disrupting Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).
Moreover, it can be inferred that Respondent is making a profit from the Internet traffic it diverts to financial and adult entertainment service websites from the <householdfinancial.com> domain name. Therefore, Respondent is creating a likelihood of confusion for its own commercial gain by using a domain name that is confusingly similar to Complainant’s HOUSEHOLD FINANCE and HOUSEHOLD marks to divert Internet traffic to its websites. This behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <householdfinancial.com> be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY ( Ret.)
Dated: December 9, 2002