Old National Bancorp v. Weerakiat Sripunyadach
Claim Number: FA1106001396193
Complainant is Old National Bancorp (“Complainant”), represented by Scott J. Evernham of Old National Bancorp, Indiana, USA . Respondent is Weerakiat Sripunyadach (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwoldnationalcom.info>, registered with GoDaddy.com Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2011; the National Arbitration Forum received payment on July 11, 2011.
On June 29, 2011, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwoldnationalcom.info> domain name is registered with GoDaddy.com Inc. and that Respondent is the current registrant of the name. GoDaddy.com Inc. has verified that Respondent is bound by the GoDaddy.com 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 July 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@wwwoldnationalcom.info. Also on July 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 2011, 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 began using the OLD NATIONAL trademark in 1884 in connection with the provision of its banking services to the public.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for its OLD NATIONAL trademark and service mark (including Reg. No. 2,695,267, registered March 11, 2003).
Respondent registered the disputed <wwwoldnationalcom.info> domain name on May 28, 2011.
The disputed domain name resolves to a website that attempts to pass itself off as being related to Complainant.
Respondent’s <wwwoldnationalcom.info> domain name is confusingly similar to Complainant’s OLD NATIONAL mark.
Respondent is not commonly known by the disputed <wwwoldnationalcom.info> domain name.
Respondent is not operating a business under the OLD NATIONAL mark, and Respondent is using the mark in its domain name without Complainant’s consent.
Respondent does not have any rights to or legitimate interests in the domain name <wwwoldnationalcom.info>.
Respondent registered and uses the <wwwoldnationalcom.info> 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 trademark and 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 light of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 a 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 OLD NATIONAL trademark and service mark for the purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registration); see also 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)).
The Policy does not require that a trademark registration be made in the country in which a respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <wwwoldnationalcom.info> domain name is confusingly similar to Complainant’s OLD NATIONAL trademark and service mark. Respondent’s alteration of the mark in forming the contested domain name by the additions of the prefix “www,” the suffix “com” and of the generic top-level domain (“gTLD”) “.info” fail to distinguish the resulting domain name from the mark under the standards of the Policy. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that a respondent’s <wwwbankofamerica.com> domain name was confusingly similar to a complainant’s BANK OF AMERICA trademark because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Borders Properties, Inc. v. Hewitt¸ FA 114618 (Nat. Arb. Forum July 23, 2002) (“The added “com” does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type “com” twice without typing the period after the targeted search term, in this case BORDERS.”); further see Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
Consequently, the Panel finds that Respondent’s <wwwoldnationalcom.info> domain name is confusingly similar to Complainant’s OLD NATIONAL trademark and service mark for purposes of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights to or legitimate interests in the <wwwoldnationalcom.info> domain name. Under Policy ¶ 4(a)(ii), once a complainant has made out a prima facie showing on this point, the burden shifts to a respondent to prove that it has rights to or legitimate interests in its 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 made out a sufficient prima facie case under this head of the Policy. For this reason, and owing to Respondent’s failure to respond to the Complaint, we may conclude that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to the allegations of a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
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 conclud-ing that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <wwwoldnationalcom.info> domain name, that Respondent is not operating a business under the OLD NATIONAL mark, and that Respondent is using the mark in its domain name without Complainant’s consent. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Weerakiat Sripunyadach,” which does not resemble the domain name. On this record we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the domain name <cigaraficionada.com>, and so had failed to show that it had rights to or legitimate interests in a contested domain name under Policy ¶ 4(c)(ii) based on the relevant WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in a disputed domain name pursuant to Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).
We next note that Complainant asserts, without objection from Respondent, that Respondent is using the <wwwoldnationalcom.info> domain name to resolve to a website attempting to pass itself off as related to Complainant. In the circumstances here presented, we may comfortably presume that Respondent does this for financial gain. Respondent’s attempt to pass itself off as Complainant in this way is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s attempts to pass itself off as a complainant online, in a blatant unauthorized use of that complainant’s mark, is evidence that that respondent has no rights to or legitimate interests in a disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent registered and is using the <wwwoldnationalcom.info> domain name in bad faith under Policy ¶ 4(a)(iii), as described in Policy ¶ 4(b)(iv), because the domain name, which is confusingly similar to Complainant’s OLD NATIONAL trademark and service mark, and which resolves to a website which attempts to pass itself off as related to Complainant, creates a likelihood of confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with the resolving website, all for Respondent’s presumed commercial gain. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there in question was obviously connected with a complainant’s marks, thus creating a likelihood of confusion for a respondent’s commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respondent engaged in bad faith registration and use of domain names confusingly similar to a complainant’s mark by using them to redirect Internet users to a website offering services similar to those offered by that complainant).
In addition, Respondent’s attempt to pass itself off as Complainant as alleged in the Complaint is evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and thus to provide misleading information to the public supported a finding of bad faith); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002):
Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.
Finally, Respondent could not have registered and used the disputed domain name as alleged in the Complaint without actual knowledge of Complainant and its rights in the OLD NATIONAL trademark and service mark. Respondent’s behavior in the face of this fore-knowledge is evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (finding that where the circumstances indicate that a respondent had actual knowledge of a complainant’s mark when it registered a domain name, a finding of bad faith registration and use of a domain is justified); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was “well-aware” of a complainant’s mark at the time of registration of a confusingly similar domain name).
For these reasons, the Panel finds that Complainant has satisfied 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, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wwwoldnationalcom.info> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 12, 2011
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