International Bancshares Corporation v. P-VZD735 / VALUE-DOMAIN COM / PRIVACY PROXY / VALUE DOMAIN
Claim Number: FA1102001371155
Complainant is International Bancshares Corporation (“Complainant”), represented by Matthew M. Jennings of Cox Smith Matthews Incorporated, Texas, USA. Respondent is P-VZD735 / VALUE-DOMAIN COM / PRIVACY PROXY / VALUE DOMAIN (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ibc-financial.com>, registered with KEY-SYSTEMS GMBH.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2011; the National Arbitration Forum received payment on February 7, 2011. The Complaint was submitted in both Japanese and English.
On February 4, 2011, KEY-SYSTEMS GMBH confirmed by e-mail to the National Arbitration Forum that the <ibc-financial.com> domain name is registered with KEY-SYSTEMS GMBH and that Respondent is the current registrant of the name. KEY-SYSTEMS GMBH has verified that Respondent is bound by the KEY-SYSTEMS GMBH 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 February 15, 2011, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of March 7, 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@ibc-financial.com. Also on February 15, 2011, the Japanese language 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 March 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 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.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ibc-financial.com> domain name is confusingly similar to Complainant’s IBC mark.
2. Respondent does not have any rights or legitimate interests in the <ibc-financial.com> domain name.
3. Respondent registered and used the <ibc-financial.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, International Bancshares Corporation, uses the IBC mark in connection with financial services, namely, banking services. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the IBC mark (e.g., Reg. No. 2,345,660 issued April 25, 2000).
Respondent registered the <ibc-financial.com> domain name on December 19, 2010. The disputed domain name resolves to a directory website that provides hyperlinks to third-party websites that offer financial related 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 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. 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:
(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 IBC mark through its registrations of the mark with the USPTO (e.g., Reg. No. 2,345,660 issued April 25, 2000). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the IBC mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). Furthermore, the Panel holds that it is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends the <ibc-financial.com> domain name is confusingly similar to its IBC mark. Respondent fully incorporates Complainant’s mark in the disputed domain name and then merely adds a hyphen and the descriptive term “financial,” which relates to Complainant’s offered services. In addition, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds these additions fail to sufficiently distinguish Respondent’s domain name from Complainant’s mark. 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 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 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). Consequently, the Panel determines Respondent’s <ibc-financial.com> domain name is confusingly similar to Complainant’s IBC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
According
to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case
showing Respondent lacks rights and legitimate interests in the <ibc-financial.com>
domain name. The burden then shifts to Respondent to prove it has rights or
legitimate interests in the disputed domain name. The Panel may interpret
Respondent’s failure to submit a Response as evidence that Respondent lacks
rights and 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.”).
Although Respondent has failed to submit a Response, the Panel will analyze the
record to determine whether Respondent has rights or legitimate interests in
the disputed domain name under Policy ¶ 4(c).
Complainant claims it has never licensed Respondent to use its IBC mark. Additionally, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Without evidence to the contrary, the Panel finds the evidence in the record indicates that Respondent is not commonly known by the <ibc-financial.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also 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 contends Respondent uses the <ibc-financial.com> domain name to resolve to a directory website that lists hyperlinks for third-party sites that offer financial-related services. A screen shot of the resolving website shows a site that features hyperlinks with titles like “Credit Card Debt Help,” “Debt Relief with Freedom,” “Debt Management,” and “Settle Business IRS Debt.” The Panel presumes that Respondent profits from its use of the disputed domain name through the receipt of pay-per-click fees. Accordingly, the Panel holds that Respondent does not use the <ibc-financial.com> domain name for 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. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The <ibc-financial.com> domain name redirects Internet users seeking Complainant’s financial services to a website that provides links that may be of interest to Complainant’s customers. As a result, the Panel finds the disputed domain name disrupts Complainant’s business, which amounts to registration and use in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent most likely uses the disputed domain name to in an attempt to profit from the operation of a pay-per-click website. Furthermore, Respondent’s <ibc-financial.com> domain name is confusingly similar to Complainant’s IBC mark. Based on the evidence in the record, the Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s IBC mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Therefore, the Panel finds that Respondent has engaged in registration and use in bad faith 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that 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 <ibc-financial.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 21, 2011
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