ING Groep N.V. v. Saatchi Saatchi Inc
Claim Number: FA1101001367036
Complainant is ING Groep N.V. (“Complainant”), represented by Joel D. Leviton of Fish & Richardson P.C., Minnesota, USA. Respondent is Saatchi Saatchi Inc (“Respondent”), represented by Lisa Horwitz of Re:Sources USA, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <e-ingdirect.com>, registered with Tucows, Inc.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2011; the National Arbitration Forum received payment on January 12, 2011.
On January 12, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <e-ingdirect.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 January 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2011 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@e-ingdirect.com. Also on January 12, 2011, 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.
A timely Response was received and determined to be complete on January 28, 2011.
On February 2, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In a brief abridgment, complainant ING Groep is a Dutch-based global financial institution that offers a broad array of banking, investment, and insurance services. It alleges that through its subsidiary companies - ING Direct Bancorp and ING Bank - offers online banking services under the well-known and distinctive INGDIRECT mark.
Complainant states that began using the INGDIRECT mark in connection with banking services in 2000. Also argues that offers its banking services through its web site located at <ingdirect.com>.
Complainant contends that it is the owner of the U.S. Registration No. 2,718,571 for the INGDIRECT mark for a variety of financial-related services, which has achieved incontestable status.
ING alleges that Respondent registered the <e-ingdirect.com> domain name to use in connection with a replica website that mirrors the authentic <ingdirect.com> website. Complainant also states that Respondent has intended to use the domain name at issue and the located website as a phishing one to fraudulently obtain personal information from ING DIRECT customers.
Complainant argues that Respondent has registered and used the <e-ingdirect.com> domain name in bad faith in an attempt to pass itself off as ING DIRECT, to mislead consumers, and to disrupt ING DIRECT’s business.
B. Respondent
Respondent alleges that it is a world-renowned advertising company representing some of the largest and most-respected marks in the world such as Procter & Gamble, General Mills and Toyota. Respondent affirms that it respects the intellectual property rights of third parties and hope others will do the same for them.
Argues that Saatchi and Saatchi has not bought the domain name in dispute and that it appears that someone has used the contact information for one of their offices and an incorrect version of their company name to purchase the disputed domain name without their knowledge and consent.
Finally, states that has no objection to the transfer of the domain name to Complainant.
Complainant is a Dutch-based global financial institution that offers a broad array of banking, investment, and insurance services. Complainant is the owner of the incontestable U.S. Registration No. 2,718,571 for the INGDIRECT mark, which application was filled before the UPTO on 05/24/2001 and granted on 05/27/2003, according to exhibit 4.
Complainant ING DIRECT offers its banking services online via the website located at <ingdirect.com>.
Complainant began using the ING DIRECT service mark in connection with
banking services in 2000, 10 (ten) years before the registration of the <e-ingdirect.com> domain name.
Respondent registered the <e-ingdirect.com> domain name to use in connection with a replica website that mirrors the authentic<ingdirect.com> website, according to exhibits 3 and 5.
Once the security sector of Complainant learned about the website located at <e-ngdirect.com>, they were able to take it down and currently the domain name at issue is inactive.
Respondent has used the <e-ingdirect.com> domain name to host a website very similar to Complainant’s official webpage, and it looks as though that it was an attempt to pass itself as ING Direct or someone else affiliated.
In view of the above, Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Consent to Transfer
Respondent, Saatchi Saatchi Inc, states it is an advertising agency. Respondent claims that someone used the contact information for one of its offices and an incorrect version of its company name, Saatchi & Saatchi, to purchase the disputed domain name without Respondent’s knowledge or consent.
Accordingly, Respondent consents to transfer the <e-ingdirect.com> domain name to Complainant. However, after the initiation of this proceeding, Tucows, Inc placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
The Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel could decide to forego the traditional UDRP analysis and order an immediate transfer of the <e-ingdirect.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, in the present case, Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel.
Therefore, the Panel has analyzed the case under the elements of the UDRP.
Also, as it is not clear if Respondent, Saatchi Saatchi Inc has registered the disputed domain name or if someone else used Respondent’s name to do so, where in this decision the Panel refers to the Respondent, let it be understood as Saatchi Saatchi Inc or someone acting as such.
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."
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.
According to Complainant’s arguments and the exhibits attached to the Complaint, it is proved that ING DIRECT has intellectual property rights over the expression INGDIRECT once this company has registered this mark before the USPTO, which has achieved incontestable status. This trademark registration sufficiently proves Complainant’s rights in the ING DIRECT mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO.
Moreover, in accordance with the information contained in the files, Complainant undoubtedly offers its banking services online via the website located at <ingdirect.com>.
It is also true that Complainant began using the INGDIRECT mark at least 9 (nine) years before Respondent registered the <e-ingdirect.com> domain name.
Besides that, that is no doubt that Respondent registered a domain name that integrally reproduces the INGDIRECT mark, with the mere addition of the letter ‘e’ and a hyphen, before it. On this subject, others panelists have already decided that this kind of registration is confusingly similar to the mark it contains.
These additions do not sufficiently distinguish Respondent’s domain name from Complainant’s mark. Omitting spaces between the words in a mark and attaching the generic top-level domain (“gTLD”) “.com” to a mark is irrelevant for Policy ¶ 4(a)(i) purposes. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity); 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy, Complainant has to make a prima facie case that Respondent has no rights and/or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. In this case, Complainant’s mission to do that was accomplished once stated that the WHOIS information lists Saatchi Saatchi Inc as the registrant of the domain name at issue and this tradename has nothing to do with INGDIRECT.
Besides that, that is no evidence that Respondent is commonly known by <e-ingdirect.com>. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant submits a screen shot of the website previously resolving from the <e-ingdirect.com> domain name. Complainant claims that the disputed domain name resolved to a website that displayed plagiarized content from Complainant’s official website. The disputed domain name resolved to a site that replicated Complainant’s blue and orange color scheme and displayed a copy of Complainant’s logo. In this way, Respondent was attempting to pass itself off as Complainant. Accordingly, the Panel determines that Respondent is not using the disputed domain name 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)
So, the Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends the <e-ingdirect.com> domain name redirects Internet users seeking its business to a copycat website that displays plagiarized content from Complainant’s official website. The Panel finds Respondent’s domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii) see DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”
Complainant also contends that Respondent’s prior use of the disputed domain name was likely to cause consumers to mistakenly believe that Complainant sponsored or was affiliated with Respondent’s website. As previously discussed, the Panel finds that Respondent’s <e-ingdirect.com> domain name is confusingly similar to Complainant’s ING DIRECT mark. Furthermore, Respondent intended to profit from its prior use of the domain name. Therefore, the Panel concludes that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site. If so, the Panel finds that Respondent’s behavior amounted to registration and use in bad faith under Policy ¶ 4(b)(iv).
So, in view of the above, 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 <e-ingdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: 02/16/2011
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