OneWest Bank, FSB v. One West Capital a/k/a Andrew Mason
Claim Number: FA1112001420470
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 One West Capital a/k/a Andrew Mason (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onewestcapital.com>, 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.
Charles A. Kuechenmeister, Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2011; the National Arbitration Forum received payment on December 16, 2011.
On December 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <onewestcapital.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 December 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2012 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@onewestcapital.com. Also on December 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.
A timely Response was received and determined to be complete on January 9, 2012.
Complainant submitted its Additional Submission on January 10, 2012. Complainant’s Additional Submission is deemed compliant with Supplemental Rule 7.
On January 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
OneWest Bank (“OneWest” or “Complainant”) is an FDIC-insured regional bank. It has 78 retail branches in Southern California. It owns the federally registered trademarks ONEWEST and ONEWEST BANK (collectively, the “ONEWEST Marks”) and has exclusive rights to use the ONEWEST Marks in connection with financial services, including mortgage-related and banking services. OneWest has used the ONEWEST Marks since at least as early as March 4, 2009 to identify its financial services and products.
OneWest’s U.S. trademark registrations are as follows:
a. Registration No. 3,735,171 for the mark ONEWEST, filed February 12, 2009, first used May 15, 2009, issued January 5, 2010, covering banking and related financial services in International Class 36.
b. Registration No. 3,735,172 for the mark ONEWEST BANK, filed February 12, 2009, first used May 15, 2009, issued January 5, 2010, also covering banking and related financial services in International Class 36.
Respondent registered the Domain Name on July 18, 2011, long after Complainant began using its ONEWEST Marks, after Complainant registered its Marks in the United States, and after Complainant’s ONEWEST Marks became well-known.
The Domain Name is confusingly similar to Complainant’s ONEWEST mark because it is comprised of ONEWEST and the descriptive term CAPITAL. Combining Complainant’s mark with generic or descriptive terms like CAPITAL is not sufficient to distinguish the Domain Name from Complainant’s mark.
The Domain Name is also confusingly similar to Complainant’s ONEWEST BANK mark because it is comprised of the dominant part of that mark, ONEWEST, omits the descriptive term BANK, and adds the financial term CAPITAL which relates to Complainant’s business. Omitting a term from Complainant’s mark is not sufficient to distinguish the Domain Name from Complainant’s mark.
Respondent has no rights or legitimate interest in the Domain Name for the following reasons. First, he registered and used the Domain Name for a pay-per-click website featuring sponsored-link advertisements for directly competing websites and other commercial websites, and this does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name under the UDRP.
Second, Respondent offered to sell the Domain Name to Complainant for $3,000,000 and this does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name under the UDRP.
Respondent’s offer to sell the Domain Name to Complainant for $3,000,000 is also an independent ground for finding that Respondent lacks a legitimate interest in the Domain Name under prior UDRP decisions.
Third, Respondent used the Domain Name for an “under construction” website, and this does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name under the UDRP. Further, Respondent’s posting of an “under construction” website is analogous to non-use, or “passive holding,” which also does not constitute a bona fide offering of goods or services or non-commercial fair use under the UDRP.
Fourth, Respondent is not and has not been commonly known by the Domain Name. In particular, Respondent’s registration of the business name “One West Capital” does not demonstrate any legitimate interest of Respondent in the Domain Name because Respondent cannot justify its misappropriation of a trademark in a domain name merely through registration of a business name.
Respondent’s registration of the Domain Name constitutes bad faith under Section 4(b)(i) because Respondent registered the Domain Name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of his documented out-of-pocket expenses. Respondent offered to sell the Domain Name to Complainant for $3,000,000, an amount far in excess of his expenses relating to the Domain Name. In addition, his website displayed an offer to sell the Domain Name.
Second, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iv) of the UDRP because Respondent registered and has used the Domain Name to intentionally attract Internet users to his website by creating a likelihood of confusion with Complainant’s ONEWEST Marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s pay-per-click website. Respondent’s activities constitute bad faith under Section 4(b)(iv) regardless of whether (1) Respondent receives revenue from the website directly in the form of click-through commissions or whether Respondent otherwise benefits financially, or (2) Respondent posted the website himself or allowed the registrar GoDaddy.com to post the website.
Third, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent disrupts Complainant’s business by using the Domain Name for a website featuring sponsored-link advertisements for directly competing services.
Fourth, Respondent’s current use of the Domain Name for an “under construction” website constitutes “passive holding” in bad faith because the Domain Name incorporates Complainant’s ONEWEST Marks and there is no conceivable use of the Domain Name for a website by Respondent that would be legitimate.
Finally, given Complainant’s federal registrations of its ONEWEST Marks and the fame of Complainant’s ONEWEST Marks in the Western United States where Respondent is located, Respondent undoubtedly knew of Complainant’s rights in its ONEWEST Marks prior to registering the Domain Name.
B. Respondent
Respondent registered the Domain Name on July 18, 2001, so Complainant’s allegation that he named it after OneWest Bank began using its marks is false.
Respondent is known by the name “One West” because it is incorporated into the name of his company, “One West Capital.”
The pay-per-click advertisements alleged by Complainant were owned and displayed by GoDaddy, the registrar, not Respondent. Respondent directed GoDaddy to discontinue them as soon as he learned of them from Complainant.
There is no likelihood of confusion as to the source or sponsorship of the Domain Name because (i) Respondent’s business (business consulting services regarding advertising and business management) does not compete with Complainant’s banking business, (ii) Complainant’s business is in California and Respondent’s is in Washington state, (iii) the term “capital” has meanings other than banking, finance, or money, e.g., “intellectual” and “spiritual” capital, (iv) Respondent does not even have an operating website yet.
The $3,000,000 price quoted by Respondent to Complainant for the Domain Name was based upon potential earnings for the Complainant, and what other domains have sold for in the past. It considers Respondent’s original investment and the potential earnings he would be giving up.
Other companies use the ONEWEST mark.
Prior to September 2011 Respondent had never heard of Complainant or its marks.
C. Complainant’s Additional Submission
Respondent registered the Domain Name in 2011, not 2001 as he alleges.
Complainant’s trademark rights are not limited to the State of California, and its business is in fact conducted throughout the country.
As registrant of the Domain Name, Respondent is responsible for any and all uses and applications made of it by the registrar.
The term primary and commonly-accepted meaning of the term “capital” does relate to finance and financial products.
Respondent admitted that he does not offer any services under the name One West Capital, nor does he provide any evidence of preparations to use the Domain Name for a bona fide offering of goods or services or other legitimate use.
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."
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 makes the findings and determinations set forth below with respect to the Domain Name.
Complainant provides banking and financial services under its ONEWEST Marks (ONEWEST and ONEWEST BANK), which are registered with the United States Patent and Trademark Office (“USPTO”): Reg. Nos. 3,735,171 and 3,735,172 issued January 5, 2010, for first use in May 2009. In Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), and Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panels found that a trademark registration with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). Likewise, this Panel concludes that Complainant owns rights in its ONEWEST marks pursuant to Policy ¶ 4(a)(i).
Respondent’s <onewestcapital.com> domain name (the “Domain name”) is confusingly similar to Complainant’s ONEWEST Marks in that it combines Complainant’s ONEWEST mark with the descriptive term “capital” and the generic top-level domain (“gTLD”) “.com.” In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), and Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007), the panels held that the addition of a descriptive term does not adequately distinguish the disputed domain name from the complainant’s mark. In Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), and Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panels concluded that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. This Panel finds that Respondent’s <onewestcapital.com> domain name is confusingly similar to Complainant’s ONEWEST Marks within the meaning of Policy ¶ 4(a)(i).
The Panel finds that the Domain Name is identical to the ONE WEST Marks for the purposes of Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in those marks.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent’s lack of right or legitimate interest in the Domain Name is demonstrated by four circumstances present in this case: (1) Respondent’s registration and use of the Domain Name for a pay-per-click website, (2) his offer to sell the Domain Name to Complainant, (3) his use of the Domain Name for an “under construction” website, and (4) he is not commonly known by the Domain Name or any variation of it. Complainant also asserts that Respondent himself admitted that he does not offer any services under the Domain Name, nor does he provide any evidence of preparations to do so. On these facts it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that he does.
To this end, Respondent offers virtually no evidence of any right or legitimate interest in the Domain Name. His assertion that he registered it in 2001 is negated by the WHOIS record attached as Exhibit 1 to the Complaint. The Domain Name was registered in 2011, not 2001. It is true that the WHOIS information identifies “One West Capital a/k/a Andrew Mason” as the registrant of the Domain Name, but the mere use of the “One West” name in the registration itself is insufficient to confer any right or legitimate interests in the Domain Name upon Respondent. In Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), and AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), the panels found that, even if the WHOIS information appeared to suggest that the respondent is commonly known by a domain name, there must be some further evidence in the record to support the WHOIS information in order for the panel to make such a finding. Since the Respondent has not presented any such further evidence, the Panel finds that the Respondent is not commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Further, there is no evidence of any use by him of the Domain Name for a bona fide offering of goods or services or any preparations to do so. On the contrary, as of the date of the Complaint, the Domain Name resolved to an inactive website that states it is “under construction.” A screenshot of the resolving website reveals an orange page with the phrase “MY SITE” and “This is my site description” partially cutoff. See Complainant’s Exhibit 8. In Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), and Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), the panels determined that a respondent’s failure to make an active use is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). This is further evidence that Respondent has failed to demonstrate either a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the Domain Name.
Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii) is further demonstrated by his previous use of the Domain Name to resolve to a website hosting competing hyperlinks. See Complainant’s Exhibit 5. Respondent alleges that the offending link was posted by the registrar and that he was unaware that the Domain Name was being used in this way, but it is well settled that a registrant is ultimately responsible for the content of the resolving website. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”). Consequently, the Panel concludes that Respondent’s prior use of the Domain Name to host competing hyperlinks is further evidence that Respondent lacks rights and legitimate interests in it.
Respondent’s offer to sell the Domain Name to Complainant is further evidence of his lack of any right or legitimate interest in it. In Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003), and Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003), the panels found that an offer to sell a disputed domain name evidences that the respondent lacks rights and legitimate interests in the disputed domain name.
Based upon the foregoing, the Panel concludes that the Respondent has no right or legitimate interests in respect of the Domain Name.
It is undisputed that Respondent offered to sell the Domain Name to Complainant for $3,000,000, an amount far in excess of Respondent’s out-of-pocket costs directly related to the Domain Name and which Respondent himself admits is based upon the earnings he assumes could be generated by using the name. The fact that Complainant made the first offer to pay for the Domain Name is immaterial for purposes of determining bad faith on the part of the Respondent. See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000). Respondent’s offer to sell the Domain Name for $3,000,000 is evidence of his bad faith registration and use of it under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000).
The record demonstrates that Respondent is currently making no active use of the Domain Name. See Complainant’s Exhibit 8. This also is evidence of bad faith registration and use. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000).
Complainant contends that Respondent could not have registered and used the Domain Name without actual or constructive knowledge of Complainant and its rights in the ONEWEST Marks. Constructive notice has generally been held not to suffice for a finding of bad faith registration and use, and Respondent states that prior to Complainant contacting him about the Domain Name he had never heard of Complainant or its ONEWEST Marks. Notwithstanding Respondent’s statement on this point, however, the Panel finds it difficult to accept that he did not have actual knowledge of the ONEWEST Marks. The string “One West” is somewhat unique, and would not ordinarily or naturally come to mind. Moreover, the term “capital” in the Domain Name is far more suggestive of Complainant’s banking business than it is of Respondent’s purported or allegedly intended business activities (business consulting services regarding advertising and business management), if they were ever actually implemented. The Panel does not accept Respondent’s assertions that “capital” does not naturally imply banking, finance or money (Complainant’s business). This supports the inference of an intent on Respondent’s.
On the facts presented here, the Panel finds that Respondent did have actual knowledge of the Complainant’s ONEWEST Marks when he registered and used the Domain Name, and that he intended to trade on Complainant’s marks for his own commercial gain in doing so. This also is evidence of bad faith within the meaning of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onewestcapital.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: January 31, 2012
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