OneWest Bank, FSB v. Above.com Domain Privacy
Claim Number: FA 1358624
Complainant is OneWest Bank, FSB (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onewestbankbenefit.com>, registered with Above.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2010; the National Arbitration Forum received payment on November 16, 2010.
On November 16, 2010, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <onewestbankbenefit.com> domain name is registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the name. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@onewestbankbenefit.com. Also on November 18, 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 December 10, 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 Southern California-based bank.
Complainant is the owner of the ONEWEST BANK service mark and uses its mark in the promotion of its banking products and services.
Complainant holds a service mark registration for its ONEWEST BANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,735,172, issued January 5, 2010).
Respondent registered the <onewestbankbenefit.com> on September 29, 2010.
The disputed domain name resolves to a directory website which hosts a variety of third-party commercial links.
Respondent’s <onewestbankbenefit.com> domain name is confusingly similar to Complainant’s ONEWEST BANK mark.
Respondent is not commonly known by the <onewestbankbenefit.com> domain name.
Complainant has not authorized Respondent to use or register its ONEWEST BANK mark in the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <onewestbankbenefit.com>.
Respondent registered and uses the disputed <onewestbankbenefit.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 ONEWEST BANK service mark by virtue of its mark registration with a national trademark authority. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the marks pursuant to Policy ¶ 4(a)(i)).
Moreover, Complainant is not required to register its mark within the country of residence of Respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence, it being sufficient that a complainant have rights in a mark in some durisdiction).
Respondent’s <onewestbankbenefit.com> is confusingly similar to Complainant’s ONEWEST BANK service mark. The disputed domain name utilizes Complainant’s entire mark and differs only by the addition of the generic word “benefit,” the deletion of a space between the words of the mark, and the addition of the generic top-level domain (“gTLD”) “.com.” The addition of a descriptive word does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
Similarly, the deletion of a space and the addition of a gTLD fail to differentiate the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i).
The Panel therefore concludes that Respondent’s <onewestbankbenefit.com> domain name is confusingly similar to Complainant’s ONEWEST BANK service mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights to and legitimate interests in the <onewestbankbenefit.com> domain name. Once a complainant establishes a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a contested 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.
Complainant has established a prima facie showing in support of its allegations on the point of Respondent’s rights to or legitimate interests in the contested domain name. Respondent, for its part, has failed to respond to the Complaint. Therefore we are free to presume that Respondent lacks rights to and legitimate interests in its contested domain name under Policy ¶ 4(a)(ii). 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 any rights to or legitimate interests in a disputed domain name).
Nonetheless, we will 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 has rights to or legitimate interests in its domain name which are cognizable under the Policy.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <onewestbankbenefit.com> domain name. Complainant also asserts, without objection from Respondent, that it has not authorized Respondent to use or register its ONEWEST BANK mark in the disputed domain name. Moreover, nothing in the WHOIS information indicates that Respondent is commonly known by the disputed domain name. On this record, we must conclude that Respondent is commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the contested domain name under 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, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); 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).
We also note that there is no dispute as to Complainant’s allegation that Respondent’s <onewestbankbenefit.com> domain name redirects Internet users to a website featuring commercial links to third-party websites unrelated to Complainant’s banking business. In the circumstances here presented, we may comfortably presume that Respondent receives click-through fees from the visits of Internet users to the websites resolving from these links. Respondent’s use of the disputed domain name in this manner is not 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to form a domain name which was used to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites unrelated to the business of a complainant, and presumably with the purpose of receiving a commission or pay-per-click referral fee, did not evidence rights to or legitimate interests in the domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Internet users searching for Complainant’s website may find Respondent’s website as a result of Respondent’s use of a domain name which is confusingly similar to Complainant’s service mark. Because of the similarity between the mark and the domain name, Internet users may become confused as to the possibility of Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and third-party links. Respondent likely collects click-through fees from the visits of Internet users to the websites resolving from the aforementioned links. Respondent thus tries to gain commercially from this confusion. We conclude therefore that Respondent’s use of the contested domain name constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of 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 revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith under Policy ¶ 4(b)(iv) because that respondent presumably benefited commercially by receiving click-through fees for diverting Internet users to unrelated third-party websites).
For these reasons, the Panel finds that Complainant met its obligations of proof under Policy ¶ 4(a)(iii).
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 <onewestbankbenefit.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Dated: December 23, 2010
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