OneWest Bank, FSB v. PrivacyProtect.org a/k/a Domain Admin
Claim Number: FA1202001429726
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 PrivacyProtect.org a/k/a Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwonewestbank.com>, registered with Registermatrix.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2012; the National Arbitration Forum received payment on February 15, 2012.
On February 26, 2012, Registermatrix confirmed by e-mail to the National Arbitration Forum that the <wwwonewestbank.com> domain name is registered with Registermatrix and that Respondent is the current registrant of the name. Registermatrix has verified that Respondent is bound by the Registermatrix 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 March 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@wwwonewestbank.com. Also on March 1, 2012, 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 April 2, 2012, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwonewestbank.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ONEWEST and ONEWEST BANK marks.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns U.S. trademark registrations for its ONEWEST and ONEWEST BANK marks. Registration No. 3,735,171 is for the mark ONEWEST, filed February 12, 2009, first used May 15, 2009, issued January 5, 2010, covering services in International Class 36 (advisory services relating to credit and debit control, investment, grants and financing of loans; banking; banking and financing services; financial services in the nature of an investment security; financial services, namely, issuance and management of certificates backed by loan portfolios which are subsequently managed to insure the integrity of the certificates; financial services, namely, the purchase of residential mortgages on behalf of others and the issuance of mortgage-backed securities; financing and loan services; home equity loans; investment banking services; loan financing; mortgage banking; mortgage lending; mortgage services, namely, buyer pre-qualification of mortgages for mortgage brokers and banks; savings and loan services; security services, namely, guaranteeing loans). Registration No. 3,735,172 is for the mark ONEWEST BANK, filed February 12, 2009, first used May 15, 2009, and also issued January 5, 2010, covering the same services in International Class 36 as the ONE WEST registration. Respondent registered the <wwwonewestbank.com> domain name at issue on July 22, 2011, well 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 to the public. Respondent uses the domain name at issue for a commercial pay-per-click website featuring search categories that relate to Complainant’s business (e.g., “CD Rates,” “Online Banking”), a search category that refers to one of Complainant’s direct competitors (“First Premier Bank”), and other topics (e.g., “Student Loans”). Respondent’s search categories connect to web pages featuring sponsored-link advertisements for directly competing financial-services websites and other commercial websites. Respondent also offers to sell the <wwwonewestbank.com> domain name on Sedo’s domain name marketplace website, as well as on the WHOIS record for the Domain Name. Complainant has not licensed or otherwise authorized Respondent to use its trademarks and Respondent is not commonly known by the domain name at issue. Counsel for Complainant sent a cease-and-desist letter without reply from Respondent.
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.
(4) 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.”).
Pursuant to Policy ¶ 4(a)(i), Complainant has rights in its ONE WEST and ONEWEST BANK marks by virtue of its USPTO trademark registrations (Registration No. 3,735,171 for the mark ONEWEST, Reg. No. 3,735,172 for ONEWEST BANK, both registered January 5, 2010). While the Respondent does not reside or operate in the United States, the Panel finds that Complainant owns rights in its marks sufficient to prove Policy ¶ 4(a)(i) due to its USPTO trademark registrations. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Respondent’s <wwwonewestbank.com> domain name is confusingly similar to Complainant’s ONEWEST BANK mark. The disputed domain name is comprised of the prefix “www” without the standard period separating the prefix from the rest of the domain name and the generic top-level domain (“gTLD”) “.com.” Also, the disputed domain name does not contain the space found in Complainant’s mark. Based on UDRP precedent, the addition of the “www” prefix without the period does not remove a disputed domain name from the realm of confusing similarity because it takes advantage of a common typographical error. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA 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 Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). Similarly, the removal of a space and the addition of a gTLD are not relevant to a Policy ¶ 4(a)(i) analysis because spaces are not permitted in a domain name and top-level domains are required. See 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)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, Respondent’s <wwwonewestbank.com> domain name is confusingly similar to Complainant’s ONEWEST BANK mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 interests 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.”).
The WHOIS information and the evidence in the record both fail to establish that Respondent is commonly known by the <wwwonewestbank.com> domain name. The WHOIS information lists “PrivacyProtect.org a/k/a Domain Admin” as the registrant of the disputed domain name and that Respondent did not present any evidence that it is commonly known by the domain name. Consequently, Respondent is not commonly known by the <wwwonewestbank.com> domain name for the purposes of Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Pursuant to Policy ¶¶ 4(c)(i) and (iii), Respondent uses the <wwwonewestbank.com> domain name to host a pay-per-click website that contains search categories that reveal sponsored, hyperlink advertisements relating to Complainant’s competitors. Such a use is 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 <wwwonewestbank.com> domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Additionally under Policy ¶ 4(a)(ii), Respondent lists <wwwonewestbank.com> for sale on Sedo. Respondent’s general offer to sell the disputed domain name is evidence that Respondent lacks rights and legitimate interests in the <wwwonewestbank.com> domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Finally, pursuant to Policy ¶ 4(a)(ii), Respondent is guilty of typosquatting by registering the <wwwonewestbank.com> domain name. Respondent is attempting to take advantage of Internet users’ typographical errors: forgetting to type the period between the “www” prefix and Complainant’s mark. Respondent is guilty of typosquatting and, accordingly, lacks rights and legitimate interests in the <wwwonewestbank.com> domain name in accordance with Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent offers to sell the <wwwonewestbank.com> domain name on the Sedo website. Respondent registered the disputed domain name for the purpose of selling it for more than Respondent’s out-of-pocket expenses. The Panel holds that Respondent registered and uses the <wwwonewestbank.com> domain name in bad faith for the purposes of Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale). Further pursuant to Policy ¶ 4(b)(iii), Respondent’s hosting of competing hyperlinks disrupts Complainant’s business by redirecting potential customers to Complainants’’ competitors. Because of Respondent’s registration and use of the <wwwonewestbank.com> domain name in this manner, the Panel concludes that Respondent is guilty of Policy ¶ 4(b)(iii) bad faith registration and use. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); 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)).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwonewestbank.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 3, 2012
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