Whitney National Bank v. Whitney Ins
Claim Number: FA1007001338202
Complainant is Whitney
National Bank (“Complainant”), represented by Raymond G. Areaux, of Carver, Darden, Koretzky, Tessier, Finn,
Blossman & Areaux, LLC, Louisiana, USA.
Respondent is Whitney Ins (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <whitneyinsuranceagencyinc.com>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2010.
On August 2, 2010, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <whitneyinsuranceagencyinc.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE 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 August 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@whitneyinsuranceagencyinc.com by e-mail. Also on August 4, 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 September 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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" 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:
1. Respondent’s <whitneyinsuranceagencyinc.com> domain name is confusingly similar to Complainant’s WHITNEY mark.
2. Respondent does not have any rights or legitimate interests in the <whitneyinsuranceagencyinc.com> domain name.
3. Respondent registered and used the <whitneyinsuranceagencyinc.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Whitney National Bank, offers commercial, retail, and international financial and banking services. Complainant also offers insurance services under the WHITNEY mark. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its WHITNEY mark (e.g., Reg. No. 1,311,441 issued on March 22, 1984).
Respondent, Whitney Ins, registered the <whitneyinsuranceagencyinc.com> domain name on June 22, 2010. The disputed domain name does not resolve to an active website.
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.
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 asserts rights in the WHITNEY mark through its numerous registrations of this mark with the USPTO (e.g., Reg. No. 1,311,441 issued on March 22, 1984). The Panel finds these trademark registrations with the USPTO sufficiently prove Complainant’s rights in the WHITNEY mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant contends Respondent’s <whitneyinsuranceagencyinc.com> domain name is confusingly similar to its WHITNEY mark. Respondent fully incorporates Complainant’s mark in the disputed domain name. Respondent then attaches the descriptive terms “insurance” and “agency,” which describe a portion of Complainant’s business, to Complainant’s mark. Finally, Respondent adds the letters “inc” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds these additions do not sufficiently distinguish Respondent’s domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <whitneyinsuranceagencyinc.com> domain name is confusingly similar to Complainant’s WHITNEY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must make a prima facie case showing Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the <whitneyinsuranceagencyinc.com> domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to submit a Response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The WHOIS information lists “Whitney Ins” as the registrant of the disputed domain name. However, there record does not contain any other evidence that indicates that Respondent is actually known by the <whitneyinsuranceagencyinc.com> domain name. Therefore, without affirmative evidence in the record, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant claims Respondent fails to make active use of the disputed <whitneyinsuranceagencyinc.com> domain name. Complainant provides evidence that a request on the <whitneyinsuranceagencyinc.com> domain name times out or results in a SERVFAIL response. The Panel finds the disputed domain name resolves to an inactive website. Therefore, the Panel concludes Respondent does not use the disputed domain name to make 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges Respondent’s failure to make active use
of the disputed domain name constitutes bad faith. Prior panels have found passive holding
constitutes bad faith when the respondent failed to make active use of a
confusingly similar domain name and the complainant’s rights in a mark predated
the respondent’s registration. For
example, in Accor v. Value-Domain Com,
Value Domain, D2009-1797 (WIPO Feb. 8, 2010), the panel found bad faith use
where respondent passively held a confusingly similar domain name and the
domain name registration occurred approximately 19 years after the complainant
had filed trademark registrations in the mark.
Likewise, in
OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb.
Forum July 20, 2010), the panel found bad faith use where respondent failed to
make active use of the disputed domain name and the respondent registered the
domain name approximately 7 years after the complainant registered its
trademark with the USPTO. Here, the
Panel has concluded Respondent’s <whitneyinsuranceagencyinc.com> domain
name is confusingly similar to Complainant’s WHITNEY mark. Moreover, Respondent registered the disputed
domain name at least 26 years after Complainant acquired rights in the WHITNEY
mark. Based on precedent and evidence in
the record, the Panel finds Respondent’s failure to make active use in this
case qualifies as bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <whitneyinsuranceagencyinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 1, 2010
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