ING DIRECT Bancorp and ING BANK, fsb (d/b/a ING DIRECT) v. Private Whois Service c/o orangesavingsaccount.com
Claim Number: FA1106001395521
Complainant is ING DIRECT Bancorp and ING BANK, fsb (d/b/a ING DIRECT) (“Complainant”), represented by Joel D. Leviton of Fish & Richardson P.C., Minnesota, USA. Respondent is Private Whois Service c/o orangesavingsaccount.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orangesavingsaccount.com>, registered with Internet.bs Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2011; the National Arbitration Forum received payment on June 24, 2011.
On June 28, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <orangesavingsaccount.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 June 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@orangesavingsaccount.com. Also on June 29, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <orangesavingsaccount.com> domain name is identical to Complainant’s ORANGE SAVINGS ACCOUNT mark.
2. Respondent does not have any rights or legitimate interests in the <orangesavingsaccount.com> domain name.
3. Respondent registered and used the <orangesavingsaccount.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, ING DIRECT Bancorp and ING BANK, fsb (d/b/a ING DIRECT), operate under a parent-subsidiary relationship with ING DIRECT Bancorp being the parent of ING BANK, fsb. Therefore, both Complainants will be referred to hereinafter as Complainant. Complainant began using the ORANGE SAVINGS ACCOUNT mark in 2000 to offer various financial services, including commercial and personal savings accounts. Complainant has continuously and extensively used such mark since 2000 and has developed common law rights in the mark.
Respondent, Private Whois Service c/o orangesavingsaccount.com, registered the <orangesavingsaccount.com> domain name on March 2, 2008. Respondent’s disputed domain name resolves to a website that features third-party links to competing financial services businesses and websites.
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 does not present evidence of trademark registrations for its ORANGE SAVINGS ACCOUNT mark. However, the Panel notes that Complainant need not own a valid trademark registration for its mark to establish rights under Policy ¶ 4(a)(i). See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant has presented as evidence advertisements and promotional materials showing that it began using the ORANGE SAVINGS ACCOUNT mark in the year 2000 to provide financial services. Complainant’s evidence shows various television and print advertising from the years 2002, 2003, 2005, 2006, and 2007, all of which precede Respondent’s registration of the domain name at issue, along with advertisements on billboards and at bus stops. The Panel finds that such evidence is sufficient for Complainant to establish common law rights in its ORANGE SAVINGS ACCOUNT MARK under Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”).
Further, the Panel finds that Respondent’s <orangesavingsaccount.com> domain name is identical to Complainant’s ORANGE SAVINGS ACCOUNT mark under Policy ¶ 4(a)(i). The Panel notes that the domain name merely eliminates the spaces between the terms of the mark and adds the generic top-level domain (“gTLD”) “.com.” Since spaces are impermissible in a domain name, and the gTLD “.com” is a required element, the domain name is effectively identical to Complainant’s mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also 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 the complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, and therefore does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). In order to proceed under the UDRP, Complainant must first establish a prima facie to support its allegations under Policy ¶ 4(a)(ii). Upon such establishment the burden of proof then shifts to Respondent. The Panel here finds that Complainant has met its initial burden and has successfully shifted the burden of proof onto Respondent. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). Since Respondent has failed to submit a Response in this matter, the Panel presumes that the allegations contained in the Complaint are true unless such allegations conflict with the evidence presented. See 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.”). Therefore, the Panel will proceed with its analysis of the evidence on record, under Policy ¶ 4(a)(i).
Complainant argues that because the WHOIS information identifies the registrant of the <orangesavingsaccount.com> domain name as “Private Whois Service c/o orangesavingsaccount.com” that Respondent is not commonly known by the domain name. Complainant further argues that no evidence exists to show that Respondent is known by the disputed domain name. The Panel agrees, and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that “Respondent uses the orangesavingsaccount.com domain name in connection with a portal website that features links to third party financial services websites, including websites that offer services in competition to ING DIRECT’s services” and Respondent presumably derives click-through revenue from the links posted on its website. Respondent has not refuted the allegations. Therefore, the Panel finds that Respondent is not using the disputed 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 Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Countrywide Home Loans, Inc. v. Kerry d/b/a N. W. Enter. Inc., FA 669549 (Nat. Arb. Forum May 15, 2006) (“Respondent uses the disputed domain names to present Internet users with links to other websites that offer services in competition to Complainant. The Panel presumes that Respondent earns click-through fees in return for diverting Internet traffic to these websites. Such use of the disputed domain names for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).”)
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <orangesavingsaccount.com> domain name to disrupt Complainant’s legitimate business activities. Respondent’s website features various third-party links to commercial websites in the financial services industry which compete with Complainant’s own offerings. The Panel assumes that such usage does in fact disrupt Complainant’s business by diverting Internet users to competitors of Complainant. The Panel notes that some of the links are directed to Complainant’s official website. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Respondent is using the ORANGE SAVINGS ACCOUNT mark to confuse Internet users into visiting Respondent’s resolving website for commercial gain. Internet users will be inadvertently led to Respondent’s website as they are searching for Complainant’s products, and will be led to other commercial websites via Respondent’s posted hyperlinks. No doubt Respondent receives commercial compensation from the companies advertised on its website in the form of affiliate or pay-per-click fees. The Panel finds that such use, uncontested by Respondent, is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <orangesavingsaccount.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 29, 2011
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