national arbitration forum

 

DECISION

 

OneWest Bank, FSB v. Hildegard Gruener

Claim Number: FA1301001482946

 

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 Hildegard Gruener (“Respondent”), Austria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <onewestbankcdrates.info>, registered with GoDaddy.com LLC.

 

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 30, 2013; the National Arbitration Forum received payment on January 30, 2013.

 

On February 1, 2013, GoDaddy.com LLC confirmed by e-mail to the National Arbitration Forum that the <onewestbankcdrates.info> domain name is registered with GoDaddy.com LLC and that Respondent is the current registrant of the name.  GoDaddy.com LLC has verified that Respondent is bound by the GoDaddy.com LLC 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 February 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 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@onewestbankcdrates.info.  Also on February 4, 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 March 6, 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

  1. Complainant
    1. The disputed domain name is confusingly similar to Complainant’s marks.

                                          i.    Complainant owns federal trademark registration with the United States Patent and Trademark Office for the ONEWEST (Reg. No. 3,735,171 registered Jan. 5, 2010) and ONEWEST BANK (Reg. No. 3,735,172 registered Jan. 5, 2010) trademarks. See  Complainant Exhibit 4.

                                         ii.    Respondent registered the <onewestbankcdrates.info> domain name on June 30, 2012.

                                        iii.    The disputed domain name includes both of Complainant’s trademarks in their entirety, adding only the generic terms “CD” and Rates” and the generic top-level domain (“gTLD”) “.info.” These do not defeat a finding of confusing similarity.

    1. Respondent has no rights or legitimate interests in the disputed domain name.

                                          i.    Respondent has not been commonly known by the disputed domain name based on the WHOIS information and Complainant’s lack of authorization.

                                         ii.    Respondent is using the disputed domain name for a commercial pay-per-click website that features sponsored-link advertisements for websites that directly compete with Complainant’s services. This does not demonstrate a bona fide offering of goods or services or a legitimate or noncommercial fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).

    1. Respondent registered and is using the disputed domain name in bad faith.

                                          i.    Respondent is disrupting Complainant’s business by featuring links to competing services. This demonstrates bad faith under Policy ¶ 4(b)(iii).

                                         ii.    Respondent is using the disputed domain name to intentionally attract Internet users for its commercial gain by creating a likelihood of confusion with Complainant’s marks.

                                        iii.    Respondent had actual or constructive notice of Complainant’s rights in the ONEWEST and ONEWEST BANK marks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant has rights in its ONEWEST and ONE WEST BANK marks.

2.    Respondent’s <onswestbankcdrates.info> domain name is confusingly similar to Complainant’s marks.

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 claims rights in the ONEWEST trademark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO (Reg. No. 3,735,171 registered Jan. 5, 2010). Complainant also claims rights in the ONEWEST BANK trademark based on USPTO registration (Reg. No. 3,735,172 registered Jan. 5, 2010). See Complainant Exhibit 4. Previous panels have found that a complainant’s registration of a mark is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Further, the Panel notes that UDRP precedent has established that a complainant does not need to own a trademark registration in the country of a respondent in order to establish rights in its mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant has established rights in the ONEWEST and ONEWEST BANK marks for the purposes of Policy ¶ 4(a)(i).

 

Complainant claims that Respondent’s <onewestbankcdrates.info> domain name is confusingly similar to its ONEWEST and ONEWEST BANK  marks. Complainant notes that the disputed domain name contains both registered marks in their entirety, with only the addition of the descriptive terms “CD” (an abbreviation for certificate of deposit accounts) and “rates”. The Panel notes that past panels have found that the addition of generic or descriptive terms does not sufficiently distinguish a domain name from a registered mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also notes that the disputed domain name also adds the gTLD “.info” and removes the space present in the ONEWEST BANK mark, but past panels have found these changes to be irrelevant in a confusing similarity analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Accordingly, the Panel finds that the <onewestbankcdrates.info> domain name is confusingly similar to Complainant’s ONEWEST BANK mark.

 

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 is not commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii). Complainant points to the WHOIS information for <onewestbankcdrates.info>, which identifies the registrant as Hildegard Gruener. Complainant also notes that it has not authorized Respondent to use its marks in any way. The Panel notes that past panels have found unsupportive WHOIS information and a lack of authorization to be strong evidence that a Respondent is not commonly known by a domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests under Policy ¶ 4(c)(ii).

 

Complainant also argues that Respondent has not made use of the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial of fair use, thus failing to demonstrate rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant claims that the disputed domain name resolves to a commercial pay-per-click website featuring sponsored-link advertisements for other websites, including some which directly compete with Complainant’s services (such as SunTrust Online Banking and Pentagon Federal Credit Union). See Complainant Exhibit 5. Because past panels have found the use of competing links to demonstrate a lack of bona fide offerings of goods or services or legitimate noncommercial or fair uses, the Panel  finds that Respondent has not demonstrated rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii) because Respondent uses the disputed domain name to host sponsored-link advertisements for services that directly compete with Complainant. See Complainant Exhibit 5. The Panel notes that past panels have found competing links to be evidence of competitive disruption under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Therefore the Panel finds that Respondent is using the <onewestbankcdrates.info> domain name in bad faith under Policy ¶ 4(b)(iii).

 

Complainant also argues that Respondent’s use constitutes bad faith under Policy ¶ 4(b)(iv). Complainant claims that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s ONEWEST and ONEWEST BANK marks. The Panel notes that past panels have found similar usage to be evidence of bad faith under 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). Therefore, the Panel finds that Respondent’s use of competing links on a confusingly similar domain name is evidence of Respondent’s bad faith registration and usage under Policy ¶ 4(b)(iv).

 

Finally, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the ONEWEST and ONEWEST BANK marks prior to registration of the domain names because of Complainant’s registration and long-standing use of the marks. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here  concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of 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).

 

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 <onewestbankcdrates.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 20, 2013

 

 

 

 

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