national arbitration forum

 

DECISION

 

OneWest Bank, FSB v. Mohammad Rizvi

Claim Number: FA1109001406746

 

PARTIES

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 Mohammad Rizvi (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <onewestbankoffer.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2011; the National Arbitration Forum received payment on September 9, 2011

 

On September 9, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <onewestbankoffer.com> 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 September 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@onewestbankoffer.com.  Also on September 12, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <onewestbankoffer.com> domain name is confusingly similar to Complainant’s ONEWEST BANK mark.

 

2.    Respondent does not have any rights or legitimate interests in the <onewestbankoffer.com> domain name.

 

3.    Respondent registered and used the <onewestbankoffer.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, OneWest Bank, FSB, registered its ONEWEST BANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,735,172 registered January 5, 2010).  Complainant uses its ONEWEST BANK mark in connection with regional banking services, including mortgage brokerage. 

 

Respondent, Mohammad Rizvi, registered the <onewestbankoffer.com> domain name on May 18, 2010.  The disputed domain name resolves to a website connected with Respondent’s competing mortgage brokerage business. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant provides its trademark certificate as evidence that it holds a trademark registration with the USPTO for its ONEWEST BANK mark (Reg. No. 3,735,172 registered January 5, 2010).  The Panel finds that this evidence is sufficient to prove that Complainant owns a trademark registration with the USPTO.  In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels found that a complainant had established rights in a mark if the complainant provided evidence that it holds a trademark registration with the USPTO.  Consequently, the Panel holds that Complainant has established rights in the ONEWEST BANK mark under Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <onewestbankoffer.com> domain name is confusingly similar to Complainant’s ONEWEST BANK mark.  Complainant argues that Respondent has simply added the generic term “offer” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark, absent the space.  The Panel determines that Complainant is accurate in its description of the alterations to Complainant’s mark in the domain name, and the question becomes whether the disputed domain name is actually confusingly similar to Complainant’s mark.  In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panels found that the addition of a generic term was insufficient to adequately distinguish the disputed domain name.  Similarly, the panels in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), and Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), maintained that the addition of a gTLD and the removal of a space were irrelevant to a confusingly similar analysis.  Thus, the Panel concludes that Respondent’s <onewestbankoffer.com> domain name is confusingly similar to Complainant’s ONEWEST BANK mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <onewestbankoffer.com> domain name.  In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  In this case, the Panel finds Complainant made a sufficient prima facie case.  In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name.  However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant claims that Respondent is not, and has not been, commonly known by the <onewestbankoffer.com> domain name.  Complainant asserts that Respondent has not been authorized by Complainant to use Complainant’s ONEWEST BANK mark.  The WHOIS information identifies the domain name registrant as “Mohammad Rizvi,” which the Panel finds is not similar to the <onewestbankoffer.com> domain name.  Respondent has not presented any evidence that it is commonly known by the disputed domain name.  In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels concluded that a respondent was not commonly known by a disputed domain name if the WHOIS information did not indicate such a fact, the complainant had not authorized the respondent to use the mark, and the respondent had failed to provide any affirmative evidence.  Therefore, the Panel holds that Respondent is not commonly known by the <onewestbankoffer.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant alleges that Respondent’s <onewestbankoffer.com> domain name resolves to a website connected with Respondent’s competing mortgage brokerage business.  Complainant asserts that the disputed domain name resolves to <mybankoffer.com>, which features the following language: “Business & finance tycoon M. Ali J. Rizvi, brings to you the hottest spot on the web.  For more information please contact: rizvi@cfrintl.com.”  Complainant provides evidence of this use in its appendix through screen shots.  Complainant also presents evidence that the <cfrintl.com> domain name is a competing mortgage brokerage website.  The Panel concludes that Complainant has presented sufficient evidence that Respondent is using the disputed domain name to offer and/or advertise competing mortgage brokerage services.  In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panels found that a respondent who offers competing services at a confusingly similar disputed domain name did not make 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).  The Panel finds accordingly as to Respondent and the <onewestbankoffer.com> domain name.

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

While Complainant provides a list of domain names that allegedly contain trademarks of third-parties, the Panel holds that these disputed domain names are not a part of this dispute and thus cannot be evidence of bad faith registration and use under Policy ¶ 4(b)(ii).

 

Complainant claims that Respondent’s registration and use of the <onewestbankoffer.com> domain name disrupts Complainant’s business because Respondent is using the disputed domain name to promote competing mortgage services.  The Panel has already determined that Respondent uses the disputed domain name in a competing manner.  In Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), and DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panels held that a respondent registered and uses a disputed domain name in bad faith when the respondent offered competing services at the resolving website.  Based on this precedent and the Panel’s previous determinations, the Panel finds Respondent registered and uses the <onewestbankoffer.com> domain name in bad faith under Policy ¶ 4(b)(iii).

 

Complainant asserts that Respondent’s registration and use for the purpose of intentionally attracting Internet users for commercial gain to its website by creating a likelihood of confusion with Complainant shows bad faith.  In Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001), and Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panels determined that the registration and use of a confusingly similar disputed domain name for the purpose of offering competing products or services were evidence of bad faith.  Thus, the Panel again determines that Respondent registered and uses the <onewestbankoffer.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the ONEWEST BANK mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).  Based on Respondent’s competing mortgage brokerage business, the Panel finds that Respondent had actual knowledge of Complainant’s mark, which is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <onewestbankoffer.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

 

James A. Carmody, Esq., Panelist

Dated:  October 11, 2011

 

 

 

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