OneWest Bank, FSB v. clive plumb
Claim Number: FA1302001483185
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 clive plumb (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lakersonewestbank.com>, <onewestbankchecking.com>, <onewestbankfails.com>, <onewestbanklakers.com>, <onewestbankmortgages.com>, <onewestbankomg.com>, <onewestbankrefiannce.com>, <onewestbankrefinance.com>, <onewestbanksavings.com>, <owbmortgages.com>, and <owbrefinance.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2013; the National Arbitration Forum received payment on February 1, 2013.
On February 1, 2013, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <lakersonewestbank.com>, <onewestbankchecking.com>, <onewestbankfails.com>, <onewestbanklakers.com>, <onewestbankmortgages.com>, <onewestbankomg.com>, <onewestbankrefiannce.com>, <onewestbankrefinance.com>, <onewestbanksavings.com>, <owbmortgages.com>, and <owbrefinance.com> domain names are registered with Godaddy.com, LLC and that Respondent is the current registrant of the names. 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@lakersonewestbank.com, postmaster@onewestbankchecking.com, postmaster@onewestbankfails.com, postmaster@onewestbanklakers.com, postmaster@onewestbankmortgages.com, postmaster@onewestbankomg.com, postmaster@onewestbankrefiannce.com, postmaster@onewestbankrefinance.com, postmaster@onewestbanksavings.com, postmaster@owbmortgages.com, and postmaster@owbrefinance.com. 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 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. OneWest’s rights in the inherently distinctive ONEWEST and ONEWEST BANK marks are based on its common law rights acquired through the substantial and continuous use of these marks by OneWest since at least as early as March 4, 2009, and on OneWest’s trademark registrations.
2. OneWest owns the following U.S. trademark registrations for its ONEWEST marks:
a. Registration No. 3,735,171 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).
b. Registration No. 3,735,172 for the mark ONEWEST BANK, 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).
3. OneWest’s rights in the inherently distinctive OWB mark are based on its common law rights acquired through the substantial and continuous use of the mark by OneWest since at least as early as May 2011, and on OneWest’s U.S. Registration No. 3,994,413 for the mark OWB, filed June 12, 2009, first used May 26, 2011, issued July 12, 2011, covering services in International Class 36 (financial services, namely, banking services; mortgage banking services, namely, origination, acquisition, servicing, and brokerage of mortgage loans; financial services in the field of money lending, namely, consumer, commercial and construction lending; brokerage for trading of securities; on-line banking and mortgage lending services; financial consulting services in the field of mortgage banking).
4. OneWest’s rights in the inherently distinctive OWB MORTGAGE SERVICES mark are based on its common law rights acquired through the substantial and continuous use of the mark by OneWest since at least as early as March 2011. U.S. Registration No. 4,222,546 for the OWB MORTGAGE SERVICES mark was issued on October 9, 2012, shortly after Respondent registered the Domain Names. Its first use in commerce was March 2011.
5. OneWest’s registrations for its Marks on the Principal Register constitute prima facie evidence of the validity of OneWest’s Marks and OneWest’s exclusive rights to use its Marks throughout the United States. (15 U.S.C. §1057(b)).
6. OneWest’s proprietary rights in its Marks long pre-date Respondent’s registration of the Domain Names.
C. Respondent’s Infringing Activities and Bad-Faith Acts
7. Respondent registered the Domain Names on July 13, 2012. OneWest’s trademark rights in its Marks, based on its trademark registrations and on its common-law rights acquired through the use of the Marks, long predate Respondent’s registration of the Domain Names.
8. Respondent uses the Domain Names for commercial pay-per-click websites provided by the registrar that displays sponsored-link advertisements for various commercial websites, including ads for directly competing websites.
9. Respondent’s websites also offer the Domain Names for sale, via the message “Would you like to buy this domain?” on each website that links to GoDaddy.com’s web page regarding its domain-name brokerage services for the particular Domain Name.
THE DOMAIN NAMES ARE CONFUSINGLY SIMILAR
TO COMPLAINANT’S MARKS
10. The domain names LAKERSONEWESTBANK.COM and ONEWESTBANKLAKERS.COM are confusingly similar to Complainant’s ONEWEST BANK mark because each is comprised of OneWest’s mark, the mark LAKERS owned by Complainant’s business partner, and the non-distinguishing gTLD .COM. These domain names are also confusingly similar to Complainant’s ONEWEST mark because each is comprised of Complainant’s mark, the descriptive or generic term BANK, and the mark LAKERS owned by Complainant’s partner. Combining Complainant’s ONEWEST and ONEWEST BANK marks with the mark of its partner and/or a descriptive term is not sufficient to distinguish the Domain Names from Complainant’s mark. See, e.g., Yahoo! Inc. v. M & A Enterprises (WIPO D2000-0748) (finding the domain name <visayahoo.com> confusingly similar to the complainant’s mark YAHOO! because it combines the YAHOO! mark with the mark VISA owned by one of the complainant’s partners); WeddingChannel.com Inc. v. NOLDC, Inc. (NAF FA0408000310971) (finding the domain name <macys-weddingchannel.com> confusingly similar to complainant’s WEDDING CHANNEL mark despite respondent’s addition of complainant’s partner’s mark MACYS); G.D. Searle & Co. v. Fred Pelham (NAF FA0208000117911) (finding the domain name <doctorslink-viagra-xenical-propecia-celebrex.com> confusingly similar to the complainant’s mark CELEBREX and holding “The addition of other drug names does not create a distinct mark capable of overcoming a claim of [confusing] similarity, it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain name. This type of confusion is exactly the type that Policy ¶4(a)(i) is intended to prevent.”).
11. The domain names ONEWESTBANKCHECKING.COM, ONEWESTBANKFAILS.COM, ONEWESTBANKMORTGAGES.COM, ONEWESTBANKREFIANNCE.COM, ONEWESTBANKREFINANCE.COM, and ONEWESTBANKSAVINGS.COM are confusingly similar to Complainant’s ONEWEST and ONEWEST BANK marks because each is comprised of Complainant’s marks (ONEWEST BANK and ONEWEST), a generic term (correctly spelled or misspelled), and the non-distinguishing gTLD .COM. The domain name ONEWESTBANKOMG.COM is confusingly similar to Complainant’s ONEWEST and ONEWEST BANK marks because it is comprised of Complainant’s marks (ONEWEST BANK and ONEWEST) and “omg,” which can be viewed as additional letters or an abbreviation of a generic phrase. UDRP Panels have consistently held that a domain name comprised of a mark and a generic or descriptive term is confusingly similar to the mark at issue, and that gTLDs are inconsequential when conducting confusing-similarity analysis. UDRP Panels have also consistently held that a domain name comprised of a mark and additional letters or abbreviations is confusingly similar to the mark at issue. See, e.g., OneWest Bank v. Zakaria (NAF FA1006001328894) (finding the domain name <indymacloanmod.com> domain name confusingly similar to Complainant’s INDYMAC mark because it is comprised of Complainant’s mark in its entirety while adding the descriptive term LOAN, the abbreviation MOD for the generic term MODIFICATION, and the gTLD .COM); OneWest Bank v. Above.com Domain Privacy (NAF FA1011001358624) (finding the domain name <onewestbankbenefit.com> confusingly similar to Complainant’s ONEWEST BANK service mark because “The disputed domain name utilizes Complainant’s entire mark and differs only by the addition of the generic word ‘benefit,’ the deletion of a space between the words of the mark, and the addition of the generic top-level domain (‘gTLD’) ‘.com.’ The addition of a descriptive word does not sufficiently distinguish the disputed domain name from Complainant’s mark.”); Indymac Bank v. Financial Insurance Associates (WIPO D2000-0535) (finding the domain name <indymacloans.com> confusingly similar to complainant’s INDYMAC mark); Bridgestone Brands v. Corral (NAF FA1102001371311) (finding the domain names <firestonelied.com> and <firestonesucks.net> among others confusingly similar to complainant’s FIRESTONE mark because the domain names use complainant’s mark in its entirety and the addition of generic words fails to distinguish the domain names from complainant’s mark); see also, e.g., Indymac Bank v. Unasi (NAF FA0507000514785) (finding the domain name <indymacmortgages.com> among others confusingly similar to complainant’s INDYMAC mark because “The addition of a generic term that directly relates to the business in which Complainant engages is insufficient to distinguish a domain name from the registered trademark pursuant to Policy ¶4(a)(i).”).
12. The domain names OWBMORTGAGES.COM and OWBREFINANCE.COM are confusingly similar to Complainant’s OWB mark because each is comprised of Complainant’s mark, a generic or descriptive term, and the non-distinguishing gTLD .COM.
13. The domain name OWBMORTGAGES.COM is also confusingly similar to Complainant’s OWB MORTGAGE SERVICES mark because it is comprised of the dominant portion of Complainant’s mark (OWB), the plural version of MORTGAGE, and omits the term SERVICES.
RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST
IN THE DOMAIN NAMES
14. Respondent clearly has no rights or legitimate interest in the Domain Names for the following reasons.
15. First, Respondent’s registration and use of the Domain Names for commercial pay-per-click websites that feature sponsored-link advertisements for various websites including directly competing websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Names under the UDRP. See, e.g., OneWest Bank v. Above.com Domain Privacy (NAF FA1011001358624) (holding respondent’s use of the domain name <onewestbankbenefit.com> for a website featuring commercial links to third-party websites unrelated to Complainant’s banking business does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use); Indymac Bank v. Unasi (NAF FA0507000514785) (finding no legitimate interest in respondent’s use of various INDYMAC-formative domain names including <wwwindymacmortgages.com> for pay-per-click websites); Indymac Bank v. Xiao (NAF FA0511000603023) (holding respondent’s use of the domain name <indimacbank.com> for a website featuring links to various competing and non-competing commercial websites is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP); IndyMac Bank v. Jason U Carpenter (NAF FA0505000474818) (holding respondent’s use of the domain names <indimacloans.com> and <indymak.com> for a pay-per-click website does not constitute a bona fide offering of goods and services or a legitimate noncommercial fair use under the UDRP); IndyMac Bank v. Nelson (NAF FA0612000864683) (holding respondent’s use of the domain name <theloanworx.com> “to display hyperlinks to various third-party websites, some of which related to banking services,” does not constitute a bona fide offering of goods or services or fair use).
16. Second, Respondent is not and has not been commonly known by the Domain Names. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the Domain Names, and OneWest has not authorized Respondent to use OneWest’s Marks. See, e.g., OneWest Bank v. Zakaria (NAF FA1006001328894) ((holding respondent had no rights or legitimate interests in the domain name <indymacloanmod.com> under Section 4(c)(ii) because the record does not indicate that respondent is commonly known by the domain name and because Complainant did not authorize respondent to use its INDYMAC mark); H-D Michigan v. Registrant (NAF FA0711001109413) (holding respondent had no rights or legitimate interests under Section 4(c)(ii) because the WHOIS information does not indicate respondent is commonly known by the disputed domain name and because complainant did not authorize respondent to use its mark).
17. Finally, Respondent’s offer to sell the Domain Names, as shown by the “Would you like to buy this domain?” links on the websites associated with the Domain Names, is further evidence that Respondent lacks a legitimate interest in the Domain Names. See, e.g., OneWest Bank v. Rajpoot (NAF FA1110001412187) (finding respondent’s offer to sell the domain name <onewestbank.mobi> is evidence that respondent lacks rights and legitimate interests in the domain name); State Farm v. Transure Enterprise (NAF FA0804001176762) (holding respondent’s offer to sell the domain name <statefarmretires.com> is “evidence that Respondent lacks all rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii).”); Yahoo! et al. v. Yomtobian (NAF FA0304000154591) (“The Panel finds that Respondent’s intent to sell its rights in the infringing domain names suggests Respondent lacks rights and legitimate interests in the domain names.”); PNC v. Thaoms (NAF FA0506000495474) (holding respondent’s offer to sell the domain name is evidence that respondent lacks rights and legitimate interests in the domain name).
RESPONDENT’S BAD FAITH UNDER SECTION 4(B) OF THE UDRP
18. Respondent’s registration and use of the Domain Names squarely meet the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.
19. First, Respondent’s registration and use of the Domain Names constitute bad faith under Section 4(b)(iv) of the UDRP because Respondent registered and uses the Domain Names to intentionally attract Internet users to his websites by creating a likelihood of confusion with OneWest’s Marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s websites associated with the Domain Names. Respondent’s activities constitute bad faith under Section 4(b)(iv) regardless of whether (1) Respondent receives revenue from the websites directly in the form of click-through commissions or whether Respondent otherwise benefits financially, or (2) Respondent posted the websites himself or allowed the registrar GoDaddy.com to post the websites. See, e.g., IndyMac Bank v. McCormick (NAF FA0703000944110) (holding respondent’s use of the domain name <indymacs.com> constitutes bad faith despite respondent’s claim that he had no role in the formation, maintenance, or commercial gain of the website); Mattel v. Eastwind Groups (NAF FA0611000849009) (holding respondent’s use of the domain name <barbiegirl.com> for advertising links constitutes bad faith, despite respondent’s claims that it was unaware of the links and received no financial gain from the website, because “there is an inherent commercial purpose in making one’s website available for the display of sponsored commercial advertising links.”); U.S. News & World Report v. Zhongqi (NAF FA0702000917070) (holding respondent’s use of the domain name <usnews.mobi> for a website displaying advertising links constitutes bad faith despite respondent’s claims that it was unaware of the “parked” website and that it did not commercially benefit from the website); see also Indymac v. D Le Nom (NAF FA0601000622020) (holding respondent’s use of the domain name <indymac-bank.com> for a pay-per-click website constitutes bad faith pursuant to Section 4(b)(iv)); IndyMac v. Xiao (NAF FA0511000603023) (holding respondent’s use of the domain name <indimacbank.com> for a pay-per-click website constitutes bad faith under Section 4(b)(iv)); OneWest Bank v. Above.com Domain Privacy (NAF FA1011001358624) (holding respondent’s use of the domain name <onewestbankbenefit.com> for a pay-per-click website constitutes bad faith under Section 4(b)(iv)).
20. Second, Respondent’s registration and use of the Domain Names constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent disrupts Complainant’s business by using the Domain Names for websites featuring sponsored-link advertisements for various commercial websites including websites offering directly competing financial services. See, e.g., IndyMac Bank v. LHMR (NAF FA0611000839274) (“Respondent is using the <loantownusa.com> domain name to redirect Internet users to Respondent’s website that features links to goods and services that compete with Complainant. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”); IndyMac Bank v. Jason U Carpenter (NAF FA0505000474818) (holding respondent’s use of the domain name <indymak.com> for a website featuring links to competing services constitutes bad faith pursuant to Section 4(b)(iii) of the UDRP); OneWest Bank v. Rajpoot (NAF FA1110001412187) (holding respondent’s use of the domain name <onewestbank.mobi> for a website with competing hyperlinks disrupts Complainant’s business in bad faith because “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.”); OneWest Bank v. PrivacyProtect.org (NAF FA1202001429726) (holding respondent’s use of the domain name <wwwonewestbank.com> for a website with competing hyperlinks disrupts Complainant’s business in bad faith).
21. Third, Respondent’s registration and use of the Domain Names constitute bad faith under Section 4(b)(ii) of the UDRP because Respondent has a bad-faith pattern of registering trademark-related domain names, specifically, the 11 domain names subject to this Complaint. See, e.g., Fidelity National Information Services v. Private Whois Service (NAF FA1104001381771) (holding respondent’s registration of four domain names, each of which incorporates complainant’s mark, shows a pattern of bad faith registration and use under Section 4(b)(ii)); Caterpillar v. Guthrie (NAF FA07080010645791) (holding respondent’s registration of three domain names, each of which incorporates complainant’s CATERPILLAR mark, shows a pattern of bad faith registration and use under Section 4(b)(ii)).
22. Fourth, Respondent’s registration of the Domain Names constitutes bad faith under Section 4(b)(i) because Respondent registered the Domain Names primarily to sell, rent, or otherwise transfer them for valuable consideration in excess of his documented out-of-pocket expenses. As shown above, Respondent’s websites display offers to sell the Domain Names. See, e.g., Bridgestone Brands v. Corral (NAF FA1102001371311 ) (“Complainant asserts that Respondent has offered to sell the disputed domain names to the public. The resolving websites state ‘Want to buy this domain name?’ along with a link to help Internet users get the domain name. The Panel finds that such an open attempt to sell the disputed domains is evidence of bad faith use and registration under Policy ¶4(b)(i).”); OneWest v. Rajpoot (NAF FA1110001412187) (“Respondent has offered to sell the <onewestbank.mobi> domain name and such an offer constitutes bad faith registration and use.”).
23. Finally, given the fame of OneWest’s Marks, OneWest’s long-standing use of its Marks, and the fact that the Domain Names are comprised of OneWest’s Marks and terms that relate to OneWest’s business, Respondent undoubtedly knew of OneWest’s rights in its Marks prior to registering the Domain Names. By registering the Domain Names with knowledge of OneWest’s rights in its Marks, Respondent acted in bad faith. See, e.g., OneWest Bank v. Mason (NAF FA11112001420470) (holding respondent registered the domain name <onewestcapital.com> in bad faith with knowledge of Complainant’s ONEWEST Marks because the string ONEWEST is “somewhat unique” and the term “capital” in the domain name is suggestive of Complainant’s banking business); IndyMac Bank v. McCormick (NAF FA0703000944110) (respondent registered the domain name <indymacs.com> in bad faith because “Complainant has federally registered its mark INDYMAC with the United States Patent and Trademark Office. As such, Complainant has provided actual or constructive notice of its rights in this mark. Adoption of a domain name using this or any confusingly similar mark in disregard of a federal registration is evidence of bad faith.”); Indymac Bank v. Hogan (NAF FA0312000220042) (holding respondent registered the domain name <i-loanworks.com> among others in bad faith based on complainant’s registration and use of its LOANWORKS mark and holding “Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶4(a)(iii).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant registered the OWB mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3,994,413 registered on July 12, 2011), the OWB MORTGAGE SERVICES mark (e.g., Reg. No. 4,222,546 registered on Oct. 9, 2012, with a filing date of Jan. 28, 2011), the ONEWEST mark (e.g., Reg. No. 3,735,171 registered on Jan. 5, 2010), and the ONEWEST BANK mark (e.g., Reg. No. 3,735,172 registered on Jan. 5, 2010), which it uses in conjunction with the provision of banking, lending, and financial services. The Panel agrees USPTO trademark registrations are sufficient evidence of rights under Policy ¶ 4(a)(i), dating back at least to their filing date. 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.”); Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel finds Complainant has rights in all of the marks under Policy ¶ 4(a)(i).
Complainant claims all of Respondent’s domain names are confusingly similar to the corresponding marks owned by Complainant. Complainant argues both the <lakersonewestbank.com> and <onewestbanklakers.com> domain names simply take the ONEWEST BANK mark and combine it with the LAKERS mark (owned by Complainant’s business partner) and the gTLD “.com.” It appears the <lakersonewestbank.com> and <onewestbanklakers.com> domain names are confusingly similar under Policy ¶ 4(a)(i) with Complainant’s marks (especially in light of Complainant’s relationship with its business partner). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”). The Panel finds <lakersonewestbank.com> and <onewestbanklakers.com> domain names are confusingly similar to the ONEWEST BANK mark under Policy ¶ 4(a)(i).
Complainant also claims the <onewestbankchecking.com>, <onewestbankmortgages.com>, <onewestbankrefiannce.com>, <onewestbankrefinance.com>, and <onewestbanksavings.com> domain names are confusingly similarly because each takes the ONEWEST BANK mark and adds a descriptive term, with the exception of the <onewestbankrefiannce.com> which adds a misspelling of the term “refinance.” Complainant believes the <onewestbankfails.com> and <onewestbankomg.com> domain names simply add generic phrases to the ONEWEST BANK mark. In light of the sheer number of domain names and the lack of opposition, the Panel agrees under the facts of this case. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also 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)). Every one of these domain names features the gTLD “.com” and omits the space in the ONEWEST BANK mark. Neither a gTLD or the deletion of a space matters in this Panel’s 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.”). The Panel finds the <lakersonewestbank.com>, <onewestbanklakers.com>, <onewestbankchecking.com>, <onewestbankmortgages.com>, <onewestbankrefiannce.com>, <onewestbankrefinance.com>, <onewestbanksavings.com>, <onewestbankfails.com>, and <onewestbankomg.com> domain names are all confusingly similar to the ONEWEST BANK mark under Policy ¶ 4(a)(i).
Complainant argues the <owbmortgages.com> and <owbrefinance.com> domain names combine Complainant’s distinct OWB mark with terms describing some of the financial services Complainant offers. In both instances, Respondent has added a term describing general financial services, as well as the gTLD “.com.” These additions do not adequately distinguish the domain names from the OWB mark under Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not and has not been commonly known by any of the disputed domain names. Nothing in the WHOIS information or the record demonstrates Respondent is commonly known by any of the domain names. Complainant has not authorized Respondent to use Complainant’s marks in domain names (or in any other fashion). The WHOIS information of all of the disputed domain names lists “clive plumb” as the registrant of the names. Based upon this uncontroverted record, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant claims Respondent has made neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of any of the disputed domain names. Complainant points out each of <lakersonewestbank.com>, <onewestbankchecking.com>, <onewestbankfails.com>, <onewestbanklakers.com>, <onewestbankmortgages.com>, <onewestbankomg.com>, <onewestbankrefiannce.com>, <onewestbankrefinance.com>, <onewestbanksavings.com>, <owbmortgages.com> and <owbrefinance.com> domain names resolve to websites featuring sponsored-link advertisements for various websites, including Complainant’s competitors. All of these domain names appear to resolve to websites that solicit the user to go through click-through links to other competing financial service-providers, while asking the owner of the website (Respondent) to either turn the page into an actual website or start the process of selling the domain name. Previous panels have consistently held there is no bona fide offering in using a domain name to host a series of hyperlinks to a complainant’s competitors. 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”). This Panel agrees and finds Respondent’s decision to use the <lakersonewestbank.com>, <onewestbankchecking.com>, <onewestbankfails.com>, <onewestbanklakers.com>, <onewestbankmortgages.com>, <onewestbankomg.com>, <onewestbankrefiannce.com>, <onewestbankrefinance.com>, <onewestbanksavings.com>, <owbmortgages.com> and <owbrefinance.com> domain names to host competing hyperlinks does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant claims Respondent is offering to sell the <lakersonewestbank.com>, <onewestbankchecking.com>, <onewestbankfails.com>, <onewestbanklakers.com>, <onewestbankmortgages.com>, <onewestbankomg.com>, <onewestbankrefiannce.com>, <onewestbankrefinance.com>, <onewestbanksavings.com>, <owbmortgages.com> and <owbrefinance.com> domain names. Each of these domain names resolves to a webpage telling Internet users they can acquire each domain name for “$69.99 per domain name + commission!” There can be no bona fide offering of goods or services under Policy ¶ 4(c)(i) when the domain name itself is being offered for sale. This is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent’s bad faith is demonstrated because Respondent registered all of the domain names primarily to sell, rent, or otherwise transfer them for valuable consideration in excess of Respondent’s documented out-of-pocket expenses. Each of the domain names displays a request asking the Internet user to purchase the domain name. The Panel agrees bad faith use and registration can be proven under Policy ¶ 4(b)(i) by Respondent’s offer to sell the disputed domain names for a profit. 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).”). Respondent did exactly that in this case.
Complainant claims Respondent’s pattern of bad faith use and registration is evident in because it registered 11 infringing domain names. Policy bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(b)(ii) requires a respondent to have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. That isn’t the case here because Complainant already has the OWB.com web site. However, the subsections under Policy ¶ 4(b) is illustrative and not exhaustive. This Panel holds registering 11 infringing domain names constitutes bad faith registration and use, even though Complainant has a domain name which incorporates its registered trademark (registration #3994413).
Complainant further argues Respondent is engaging in a bad faith attempt to disrupt Complainant’s business. Respondent is using these domain names to host websites which specifically direct Internet users to Complainant’s competitors. The Panel agrees and finds the domain names were registered and are being used in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues Respondent registered and is using the domain names to intentionally attract Internet users to Respondent’s websites by confusing users into believing Complainant is the source of the website’s content. All of the domain names resolve to websites that alternate between soliciting of the domains for sale and requesting Internet users to click-through hyperlinks. Using a similar domain name to confuse Internet users for the purpose of generating advertising revenue for a respondent is bad faith use and registration. 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). Respondent’s use of the domain names amounts to bad faith under Policy ¶ 4(b)(iv).
Complainant argues Respondent undoubtedly knew of Respondent’s rights in the mark. Complainant argues its long-standing use of the marks is evidence of this knowledge, along with Respondent’s decision to embed these specific marks in its domain names. It also appears Respondent is within Complainant’s marketing area. Given these facts, it appears Respondent had actual knowledge of the mark and Complainant's rights meaning Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <lakersonewestbank.com>, <onewestbankchecking.com>, <onewestbankfails.com>, <onewestbanklakers.com>, <onewestbankmortgages.com>, <onewestbankomg.com>, <onewestbankrefiannce.com>, <onewestbankrefinance.com>, <onewestbanksavings.com>, <owbmortgages.com>, and <owbrefinance.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 7, 2013
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