OneWest Bank, FSB v. Ashraf rajpoot
Claim Number: FA1110001412187
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 Ashraf rajpoot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onewestbank.mobi>, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2011; the National Arbitration Forum received payment on October 19, 2011.
On October 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <onewestbank.mobi> 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 October 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@onewestbank.mobi. Also on October 20, 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 November 16, 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.
Respondent submitted a late response on November 21, 2011, which was not considered by the Panel.
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 regard to the deficient response.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <onewestbank.mobi> domain name is identical to Complainant’s ONEWEST BANK mark.
2. Respondent does not have any rights or legitimate interests in the <onewestbank.mobi> domain name.
3. Respondent registered and used the <onewestbank.mobi> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant, OneWest Bank, FSB, is a regional bank in Southern California. Complainant offers financial services, including mortgage and banking services, under its ONEWEST BANK mark. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its ONEWEST BANK mark (Reg. No. 3,735,172 registered January 5, 2010).
Respondent, Ashraf rajpoot, registered the <onewestbank.mobi> domain name on June 11, 2011. The disputed domain name resolves to a commercial website that contains hyperlinks to third-parties that offer mortgage, banking, and other financial services that compete with the services offered by Complainant. The resolving website also contains an offer to sell the domain name.
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.
The Panel finds that Complainant owns rights in its ONEWEST BANK mark through its trademark registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a trademark registration with the USPTO was sufficient to establish rights in a mark).
Respondent’s <onewestbank.mobi> domain name is virtually identical to Complainant’s ONEWEST BANK mark. The sole differences between Complainant’s mark and the disputed domain name is the removal of the space in the mark and the addition of the generic top-level domain (“gTLD”) “.mobi.” In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), and George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panels concluded that the disputed domain names remained identical to the complainants’ marks because spaces are not permissible in a domain name and top-level domains are required. The Panel accordingly finds that Respondent’s <onewestbank.mobi> domain name is identical to Complainant’s ONEWEST BANK mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <onewestbank.mobi> 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 commonly known by the <onewestbank.mobi> domain name. The WHOIS information lists the registrant of the disputed domain name as “Ashraf rajpoot,” which is not similar to the <onewestbank.mobi> domain name. The panels in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), used the WHOIS information as proof that the respondents were not commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the <onewestbank.mobi> domain name under Policy ¶ 4(c)(ii).
Complainant provides evidence that Respondent uses the <onewestbank.mobi> domain name to offer hyperlinks to third-party competitors of Complainant and that Respondent commercially benefits from the hyperlinks by receiving click-through fees. In Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), and Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), the panels concluded that a respondent’s use of a disputed domain name to offer competing hyperlinks did not establish rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii). The Panel similarly holds that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <onewestbank.mobi> domain name.
Complainant alleges that Respondent is attempting to sell the <onewestbank.mobi> domain name. According to Complainant, Respondent states on the resolving website: “This domain is for sale.” Complainant’s screen shot supports this allegation. In Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003), and Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), the panels found that a general offer to sell a disputed domain name is evidence that a respondent lacks Policy ¶ 4(a)(ii) rights and legitimate interests in a domain name. The Panel agrees and finds accordingly.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has offered to sell the <onewestbank.mobi> domain name and such an offer constitutes bad faith registration and use. Similar to the panels in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), and Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000), the Panel concludes that Respondent’s offer to sell is evidence of Respondent’s bad faith registration and use of the <onewestbank.mobi> domain name under Policy ¶ 4(b)(i).
Complainant argues that Respondent has registered multiple domain names that contain the marks of third parties. Complainant offers this evidence as proof that Respondent registered and uses the <onewestbank.mobi> domain name as a part of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). The Panel examined the domain names listed in the Complaint and the WHOIS information provided by Complainant in its annexes. The Panel determines that none of the disputed domain names are included in this case and that Complainant has not presented any previous UDRP proceedings involving the domain names in which a UDRP panel found that they were registered in bad faith. Without this evidence, the Panel finds that it is impossible for this Panel to make a determination about the other domain names and is, therefore, impossible for the Panel to find Policy ¶ 4(b)(ii) bad faith registration and use.
According to Complainant, Respondent’s registration and use of the <onewestbank.mobi> domain name for the purpose of offering competing hyperlinks disrupts Complainant’s business. While Complainant does not offer tangible evidence that its business is disrupted, the Panel agrees that some disruption occurs as Internet users interested in Complainant’s financial services may access Respondent’s website, due to the identical disputed domain name, and purchase financial services from Complainant’s competitors. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panels found that such a use is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). In accord with this precedent, the Panel finds that Respondent is guilty of Policy ¶ 4(b)(iii) bad faith registration and use.
Complainant also asserts that Respondent commercially benefits from the receipt of click-through fees and is attempting to commercially benefit by creating confusion as to Complainant’s affiliation with the identical disputed domain name. The Panel agrees that Respondent likely receives click-through fees. The panels in AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), and Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), concluded that a respondent’s registration and use of a disputed domain name for the purpose of offering competing hyperlinks was evidence of bad faith registration and use. The Panel finds Policy ¶ 4(b)(iv) bad faith registration and use in regards to the <onewestbank.mobi> domain name.
Finally, 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 panels in Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), and Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), concluded that a panel may nonetheless find that a respondent registered and used a disputed domain name in bad faith under Policy ¶ 4(a)(iii) if the respondent is found to have had actual notice of the complainant’s trademark rights. Based on the identicality of the <onewestbank.mobi> domain name to Complainant’s mark and the Panel’s examination of the resolving website and competing hyperlinks, the Panel finds that Respondent had actual notice of Complainant’s ONEWEST BANK mark. Thus, the Panel finds that Respondent registered and uses the <onewestbank.mobi> domain name in bad faith under Policy ¶ 4(a)(iii).
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 <onewestbank.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 28, 2011
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