national arbitration forum

 

DECISION

 

OneWest Bank, FSB v. Fundacion Private Whois / Domain Administrator

Claim Number: FA1301001481684

 

PARTIES

Complainant is OneWest Bank, FSB (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C..  Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <indymacbankmortgageservices.com>, registered with Internet.bs Corp.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2013; the National Arbitration Forum received payment on January 23, 2013.

 

On January 27, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <indymacbankmortgageservices.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 January 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2013 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@indymacbankmortgageservices.com.  Also on January 28, 2013, 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 February 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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

 

a)    Complainant owns the federally registered trademark INDYMAC and has exclusive rights to use that mark in connection with financial services, including mortgage-related services. Complainant is an FDIC-insured bank offering a wide array of banking products and services, including mortgage-lending services. Complainant promotes its products and services on the Internet via its websites at <onewestbank.com> and <owb.com>. Complainant owns the United States Patent and Trademark Office (“USPTO”) registrations for the INDYMAC mark (Reg. No. 2,522,907 registered Dec. 25, 2001). See Complainant’s Exhibit 5.

b)    The <indymacbankmortgageservices.com> domain name is confusingly similar to Complainant’s federally registered INDYMAC mark. The domain name is comprised of Complainant’s INDYMAC mark, the descriptive terms  “bank,” “mortgage,” and services,” and the generic top-level domain (“gTLD”) “.com.” These changes are not significant and do not distinguish the <indymacbankmortgageservices.com> domain name from the INDYMAC mark.

c)    Respondent does not have any rights or legitimate interests in the <indymacbankmortgageservices.com> domain name.

a.    Respondent is not commonly known by the disputed domain name. Respondent is not licensed or otherwise authorized by Complainant to use the INDYMAC mark. Nothing in Respondent’s WHOIS information on the record demonstrates that Respondent is commonly known by the disputed domain name.

b.    Respondent uses the disputed domain name for a commercial pay-per-click website that displays links for various commercial websites and search categories that relate to Complainant’s business. The links are displayed through headings such as “Mortgage Payment Calculator” and “Second Mortgage.”

c.    Respondent’s offer to sell the <indymacbankmortgageservices.com> domain name is further evidence that Respondent lacks rights or legitimate interest in the domain name.

d)    Respondent’s registration and use of the <indymacbankmortgageservices.com> domain name constitute bad faith.

a.    Respondent includes on the domain name’s resolving website a link stating, “Inquire about this domain” that connects to a website advertising the <indymacbankmortgageservices.com> domain name for sale. Respondent also offers to the sell the disputed domain name on Sedo’s domain name marketplace website and on the WHOIS record for the <indymacbankmortgageservices.com> domain name. See Complainant’s Exhibits 1 and 7.

b.    Respondent’s registration and use of the disputed domain name is disruptive to Complainant’s business by using the <indymacbankmortgageservices.com> domain name for a website featuring links to competing services.

c.    Respondent registered and uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s INDYMAC mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The <indymacbankmortgageservices.com> domain name resolves to a website that features links to goods and services that directly compete with Complainant’s offerings. Respondent trades on the goodwill of Complainant’s mark so as to commercially benefit.

d.    Given Complainant’s federal registrations of the INDYMAC mark, the fame of Complainant’s mark, and Complainant’s long-standing use of the INDYMAC mark, as well as the confusing similarity of the <indymacbankmortgageservices.com> domain name, it is clear that Respondent undoubtedly knew of Complainant’s rights in the INDYMAC mark prior to Respondent’s registration of the <indymacbankmortgageservices.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant has rights in its INDYMAC mark.

2.    Respondent’s <indymacbankmortgageservices.com> domain name is confusingly similar to Complainant’s mark.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the domain name in bad faith.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it owns the federally registered trademark INDYMAC, and it has exclusive rights to use that mark in connection with financial services, including mortgage-related services. Complainant states that it is an FDIC-insured bank offering a wide array of banking products and services, including mortgage-lending services. Complainant notes that it promotes its products and services on the Internet via its websites at <onewestbank.com> and <owb.com>. Complainant provides the Panel with evidence that Complainant owns the USPTO registrations for the INDYMAC mark (Reg. No. 2,522,907 registered Dec. 25, 2001). See Complainant’s Exhibit 5. Panels have held that registration of a mark is sufficient evidence of having established rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Furthermore, panels have found that the location of the parties does not have an impact on whether the registration of a mark affects whether the required showing for Policy ¶ 4(a)(i) has been satisfied. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the INDYMAC mark pursuant to Policy ¶ 4(a)(i).

 

Complainant next alleges that the <indymacbankmortgageservices.com> domain name is confusingly similar to Complainant’s federally registered INDYMAC mark. Complainant argues that the domain name is comprised of Complainant’s INDYMAC mark, the descriptive terms “bank,” “mortgage,” and “services,” and the gTLD “.com,” and that these changes are not significant and do not distinguish the <indymacbankmortgageservices.com> domain name from the INDYMAC mark. The Panel agrees and finds that the <indymacbankmortgageservices.com> domain name is confusingly similar to the INDYMAC mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Rights or Legitimate Interests

 

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.”).

 

Complainant argues that Respondent does not have any rights or legitimate interests in the <indymacbankmortgageservices.com> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name. According to Complainant, Respondent is not licensed or otherwise authorized by Complainant to use the INDYMAC mark, and nothing in Respondent’s WHOIS information on the record demonstrates that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS record for the disputed domain name lists “Fundacion Private Whois / Domain Administrator” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <indymacbankmortgageservices.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant asserts that Respondent uses the disputed domain name for a commercial pay-per-click website that displays links for various commercial websites and search categories that relate to Complainant’s business. Complainant notes that the links are displayed through headings such as “Mortgage Payment Calculator” and “Second Mortgage.” See Complainant’s Exhibit 6. Panels have held that using a disputed domain name in order to display links offering goods and services that compete with the complainant is not a use which the respondent can claim establishes rights or legitimate interests. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Pane finds that Respondent’s use of the <indymacbankmortgageservices.com> domain name 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.

 

Next, Complainant alleges that Respondent’s offer to sell the <indymacbankmortgageservices.com> domain name is further evidence that Respondent lacks rights or legitimate interest in the domain name. Complainant notes that Respondent includes on the domain name’s resolving website a link stating, “Inquire about this domain” that connects to a website advertising the <indymacbankmortgageservices.com> domain name for sale. Complainant states that Respondent also offers to the sell the disputed domain name on Sedo’s domain name marketplace website and on the WHOIS record for the <indymacbankmortgageservices.com> domain name. See Complainant’s Exhibits 1 and 7. Therefore, the Panel finds that Respondent’s lack of rights and legitimate interests is further demonstrated by Respondent’s willingness to sell the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s registration and use of the <indymacbankmortgageservices.com> domain name constitute bad faith. Complainant asserts that Respondent includes on the domain name’s resolving website a link stating, “Inquire about this domain” that connects to a website advertising the <indymacbankmortgageservices.com> domain name for sale. Complainant further notes that Respondent offers to the sell the disputed domain name on Sedo’s domain name marketplace website and on the WHOIS record for the <indymacbankmortgageservices.com> domain name. See Complainant’s Exhibits 1 and 7. The panel in Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), found that a willingness to sell a domain name is evidence of bad faith. Therefore, the Panel finds that Respondent registered and uses <indymacbankmortgageservices.com> domain name  in bad faith under Policy ¶ 4(b)(i).

 

Complainant next alleges that Respondent’s registration and use of the disputed domain name is disruptive to Complainant’s business by using the <indymacbankmortgageservices.com> domain name for a website featuring links to competing services. Panels have previously held that registering and using a domain name to display links to competing goods and services is evidence of bad faith. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent registered and uses the <indymacbankmortgageservices.com> domain name in bad faith under Policy ¶ 4(b)(iii).

 

Complainant asserts that Respondent registered and uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s INDYMAC mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant notes that the <indymacbankmortgageservices.com> domain name resolves to a website that features links to goods and services that directly compete with Complainant’s offerings, and argues that Respondent trades on the goodwill of Complainant’s mark so as to commercially benefit. Therefore, the Panel finds that Respondent registered and uses the <indymacbankmortgageservices.com> domain name in order to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Lastly, Complainant asserts that, given Complainant’s federal registrations of the INDYMAC mark, the fame of Complainant’s mark, and Complainant’s long-standing use of the INDYMAC mark, as well as the confusing similarity of the <indymacbankmortgageservices.com> domain name, it is clear that Respondent undoubtedly knew of Complainant’s rights in the INDYMAC mark prior to Respondent’s registration of the <indymacbankmortgageservices.com> domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

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 <indymacbankmortgageservices.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 11, 2013

 

 

 

 

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