First Horizon National Corporation v. Shawn Chiu Wai
Claim Number: FA1004001320484
Complainant is First Horizon National Corporation (“Complainant”), represented by Laura
P. Merritt,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <firsttennessebanking.com>, registered with Directi Internet Solutions Pv. 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2010.
On April 23, 2010, Directi Internet Solutions Pv. Ltd. confirmed by e-mail to the National Arbitration Forum that the <firsttennessebanking.com> domain name is registered with Directi Internet Solutions Pv. Ltd. and that Respondent is the current registrant of the name. Directi Internet Solutions Pv. Ltd. has verified that Respondent is bound by the Directi Internet Solutions Pv. 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 April 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@firsttennessebanking.com by e-mail. Also on April 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 25, 2010, 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 is a financial services company that employs 5,500 people throughout 180 bank locations and eighteen financial offices around the world.
Complainant is the owner of multiple registrations with the United States Patent and Trademark Office (“USPTO”) for its FIRST TENNESEE service mark (including Reg. No. 2,348,125, issued May 9, 2000).
Respondent registered the disputed <firsttennessebanking.com> domain name on August 22, 2009.
Respondent’s domain name resolves to a website displaying third-party links to financial service providers in competition with the business of Complainant.
Respondent’s <firsttennessebanking.com> domain name is confusingly similar to Complainant’s FIRST TENNESSEE mark.
Complainant has not authorized Respondent to use its FIRST TENNESEE mark in any way, and Respondent is not commonly known by the disputed domain name.
Respondent is not making a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the <firsttennessebanking.com> domain name.
Respondent does not have any rights or legitimate interests in the domain name <firsttennessebanking.com>.
Respondent both registered and uses the <firsttennessebanking.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 has established rights in its FIRST TENESSEE service mark for purposes of Policy ¶ 4(a)(i) through its mark registrations with the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, a panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Respondent’s <firsttennessebanking.com>
domain name is confusingly similar to Complainant’s FIRST TENNESEE mark under Policy
¶ 4(a)(i). The
domain name contains the entire mark, merely eliminating the letter “e” from
the term “
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent does not have any rights to or legitimate interests in the <firsttennessebanking.com> domain name. Complainant is required to make out a prima facie case in support of these allegations. Once Complainant has produced such a prima facie case, the burden shifts to Respondent to show that it has rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it
does have rights or legitimate interests.
See also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that, once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name.
Complainant has produced a prima facie case under this head of the Complaint, and owing to
Respondent’s failure to respond to these proceedings, we may presume that Respondent
does not have any rights to or legitimate interests in the disputed domain
name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only results in its
failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain name.
See also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000): “By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”
Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent
does not deny, that Complainant has not authorized Respondent to use its FIRST
TENNESEE mark in any way and Respondent is not commonly known by the disputed
domain name. Moreover, the WHOIS
information for the <firsttennessebanking.com>
domain name lists the registrant only as “Shawn Chiu Wai”. On this record, we are constrained to
conclude that Respondent is not commonly known by the disputed domain name so
as to have demonstrated that it has rights to or legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii). See
Complainant further contends, without objection from
Respondent, that Respondent is not making a bona
fide offering of goods or services or a legitimate noncommercial or fair
use of the <firsttennessebanking.com>
domain name. We agree. See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a
respondent’s use of domain names confusingly similar to a complainant’s
WAL-MART mark to divert Internet users seeking that complainant’s goods and
services to websites competing with the business of that complainant did not
constitute 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (finding that a respondent was not using the <tesco-finance.com>
domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use by maintaining a web page with
misleading links to a complainant’s competitors in the financial services
industry).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the <firsttennessebanking.com> domain name, as alleged, disrupts Complainant’s business. Respondent’s diversion of Internet users attempting to reach Complainant’s business to the businesses of Complainant’s competitors is evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of a contested domain name pursuant to Policy ¶ 4(b)(iii) by using the domain to operate a commercial search engine with links to the products of a complainant’s business competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
In the circumstances here presented, we may comfortably presume that Respondent collects click-through fees for each instance in which Internet users access the links displayed on the website resolving from the disputed domain name. We conclude from this Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where a respondent used the <dellcomputerssuck.com> domain name to divert Internet users to that respondent’s website offering competing computer products and services); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that employing a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenues constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iv)).
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 <firsttennessebanking.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 8, 2010
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