BMO Harris Bank N.A. v. Bryan Walsch
Claim Number: FA1304001496833
Complainant is BMO Harris Bank N.A. (“Complainant”), represented by Jane S. Berman of Chapman and Cutler LLP, Illinois, USA. Respondent is Bryan Walsch (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bmoharris.mobi>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2013; the National Arbitration Forum received payment on April 26, 2013.
On April 29, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bmoharris.mobi> 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 May 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 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@bmoharris.mobi. Also on May 1, 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 June 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. Respondent has not been commonly known by the domain name, and Complainant has not authorized Respondent to use the mark in a domain name.
ii. Respondent’s <bmoharris.mobi> resolves to a GoDaddy.com, LLC page reciting that the web page is parked for free, courtesy of GoDaddy.com, which fails to demonstrate use of the domain name for the purpose of making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, or to one of Complainant’s competitors, for valuable consideration in excess of Respondent’s documented out-of-pocket costs associated with registering the domain name.
ii. Respondent has registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, which indicates that Respondent is engaged in a pattern of bad faith registration and use.
iii. Despite actual notice of Complainants’ prior rights, Respondent nonetheless apparently continued to maintain the registration.
iv. Complainant adopted its new name on April 5, 2011. Respondent registered the domain name April 6, 2011, the day after the announcement.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant, BMO Harris Bank N.A., contends that it owns the BMO HARRIS BANK marks and uses the marks in the banking and financial industry. Complainant claims that it is the owner of trademark registrations with the USPTO for the HARRIS mark (e.g., Reg. No. 3,215,200, registered March 6, 2007), and for the BMO mark (Reg. No. 2,615,685, registered September 3, 2002). The Panel notes that Respondent appears to reside within the United States. Therefore, the Panel holds that Complainant’s registration of the HARRIS and BMO marks with the USPTO sufficiently show it rights in the marks under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant alleges that the domain name <bmoharris.mobi> is identical to and entirely incorporates the mark BMO HARRIS. Complainant claims that the addition of “.mobi” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to the mark. The Panel notes that the <bmoharris.mobi> domain name is comprised of two of Complainant’s marks, BMO and HARRIS. The Panel holds that Respondent’s addition of a generic top-level domain (“gTLD”) and combining two of Complainant’s marks into one domain name does not distinguish the domain name from Complainant’s mark, which results in a confusingly similar domain name to Complainant’s mark as defined by Policy ¶ 4(a)(i). See Indianapolis Downs, LLC v. Mazzone, FA1244694 (Nat. Arb. Forum Mar. 11, 2009) (stating that the gTLD “.mobi” is trivial, and adding a gTLD is insufficient to differentiate a domain name from a mark); see also Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark).
Complainant has proven this element.
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 asserts that Respondent has not been commonly known by the domain name. Complainant argues that Respondent has no right or authorization to use the domain name in any context whatsoever, and any such use would constitute infringement of Complainant’s intellectual property rights. The Panel notes that the WHOIS information lists “Bryan Walsch” as the registrant of the domain name. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name under 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant contends that Respondent’s <bmoharris.mobi> domain name resolves to a GoDaddy.com, LLC page reciting that the web page is parked for free, courtesy of GoDaddy.com. The Panel notes that Respondent’s domain name forwards to a competing hyperlink directory, featuring links such as “Online Marketing Degrees,” “Local Banks Directory,” “Online Banking,” and others. The Panel finds that parking the disputed domain name at a webpage that provides a hyperlink directory of Complainant’s competitors is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. See also Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant argues that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of that Complainant, for valuable consideration in excess of out of pocket costs associated with registering the domain name. Complainant contends that it announced its adoption of its new name BMO HARRIS BANK on April 5, 2011. Complainant asserts that on April 5, 2011, nationwide newspapers and financial media widely reported this announcement in articles posted on the Internet. Complainant claims that it also filed its intention to use trademark applications covering BMO HARRIS BANK with the USPTO on April 5, 2011. Complainant alleges that Respondent registered the disputed domain name on April 6, 2011, the day after the announcement. Complainant asserts that circumstances indicate that Respondent registered the domain name on April 6, 2011, in an effort to capitalize on the new name, after learning of Complainant’s adoption and initial use of the BMO HARRIS BANK name on April 5, 2011. The Panel finds that Complainant’s allegation of Respondent’s Policy ¶ 4(b)(i) use falls more accurately under opportunistic bad faith.
Complainant asserts that Respondent registered the domain name in order to prevent Complainant from reflecting its BMO and HARRIS marks in a corresponding domain name. Complainant argues that based on Respondent’s past conduct, circumstances tend to indicate Respondent registered the domain name in order to prevent Complainant from using its service marks BMO HARRIS, BMO HARRIS BANK, and HARRIS in a corresponding domain name. State Farm Mut. Automobile Ins. Co. v. Walsch, FA 1450302 (Nat. Arb. Forum Aug. 6, 2012). The Policy is concerned with a Respondent’s repeated registration of multiple domain names incorporating the trademark of a third party when finding that a respondent has established a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). Evidence of a single adverse UDRP decision against Respondent does not support a finding that Respondent is engaged in a pattern of preventing third parties from reflecting their marks in a corresponding domain name.
Complainant contends that it sent a demand letter advising Respondent of Complainant’s prior rights in the mark that forms the domain name, and asking that Respondent allow the domain name registration to expire as scheduled on April 6, 2012. Complainant asserts that despite actual notice of Complainant’s prior rights, Respondent nonetheless apparently continued to maintain the registration, automatically renewed the domain name registration on or about April 7, 2012, and is keeping the registration on “auto renew” status. The Panel finds that, due to the receipt of Complainant's letter informing Respondent of Complainant’s rights in the mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that when renewing the registration Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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)."
Complainant contends that it announced its intended use of the BMO HARRIS BANK name on April 5, 2011. Complainant argues that Respondent registered the disputed domain name on April 6, 2011, the day after Complainant’s announcement. The Panel finds that, due to Respondent’s registration of the domain name the day after Complainant’s announcement of its new name, Respondent registered the domain name opportunistically, showing bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bmoharris.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 10, 2013
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