MB Financial Bank, N.A. v. ba cao thuy mai
Claim Number: FA1307001509065
Complainant is MB Financial Bank, N.A. (“Complainant”), represented by Stephanie J. Harris of Goldberg Kohn Ltd., Illinois, USA. Respondent is ba cao thuy mai (“Respondent”), Afghanistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mbbank.net>, registered with OnlineNIC Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2013; the National Arbitration Forum received payment on July 10, 2013.
On July 12, 2013, OnlineNIC Inc. confirmed by e-mail to the National Arbitration Forum that the <mbbank.net> domain name is registered with OnlineNIC Inc. and that Respondent is the current registrant of the name. OnlineNIC Inc. has verified that Respondent is bound by the OnlineNIC Inc. 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 July 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@mbbank.net. Also on July 31, 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 August 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Neither Respondent, nor any business operated by Respondent, nor any product or service offered by Respondent, has been commonly known by the domain name.
ii. Respondent is using the domain name for the purpose of earning money by redirecting Internet traffic to third-party websites.
i. Respondent is using the domain name in order to collect click-through fees for channeling Internet users to third-party websites.
1. Respondent’s <mbbank.net> domain name is confusingly similar to Complainant’s MB mark.
2. Respondent does not have any rights or legitimate interests in the <mbbank.net> domain name.
3. Respondent registered or used the <mbbank.net> domain name 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 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 alleges that it is a national banking association in the business of providing a full selection of banking and financial services under the service mark MB. Complainant claims that it is the owner of trademark registrations with the USPTO for the MB mark (e.g., Reg. No. 2,393,663, registered October 10, 2000); for the MB FINANCIAL BANK mark (e.g., Reg. No. 2,939,825, registered April 12, 2005); and for the MB BANKER mark (Reg. No. 3,138,204, registered September 5, 2006). See Exhibit D. The Panel notes that Respondent appears to reside in Afghanistan. However, the Panel finds that Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it can demonstrate rights in the mark in some jurisdiction. 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 holds that Complainant’s registration of the MB, MB FINANCIAL BANK, and MB BANKER marks with the USPTO sufficiently proves its rights under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant asserts that Respondent’s <mbbank.net> domain name wholly incorporates Complainant’s mark and is identical to Complainant’s federally-registered service mark MB but for the additional generic word “bank,” and the gTLD “.net.” The Panel finds that Respondent’s addition of a term descriptive of Complainant’s weighs in Complainant’s favor in a Policy ¶ 4(a)(i) analysis. 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). The Panel also determines that Respondent’s addition of a gTLD does not differentiate the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel finds that Respondent’s <mbbank.net> domain name is confusingly similar to Complainant’s MB mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <mbbank.net> domain name is also confusingly similar to Complainant’s federally-registered MB BANKER mark because it is identical to it except for the omission of two letters and the addition of the gTLD “.net.” The Panel finds that Respondent’s omission of the letters “e” and “r,” inclusion of a gTLD, and removal of the space between words in Complainant’s mark do not distinguish the domain name from Complainant’s MB BANKER mark under Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Thus, the Panel holds that Respondent’s <mbbank.net> domain name is confusingly similar to Complainant’s MB BANKER mark under Policy ¶ 4(a)(i).
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 neither Respondent, nor any business operated by Respondent, nor any product or service offered by Respondent, has been commonly known by the domain name. Complainant states that Respondent’s use of Complainant’s marks in connection with Respondent’s website is wholly unauthorized. The Panel observes that the WHOIS record for the <mbbank.net> domain name lists “ba cao thuy mai” as the registrant of the domain name. Prior panels have held a respondent is not commonly known by a disputed domain name where the WHOIS information and other evidence in the record do not show that a respondent is commonly known by the domain name. 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). Consequently, the Panel determines that Respondent is not commonly known by the <mbbank.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the domain name for the purpose of earning money by redirecting Internet traffic to third-party websites. Complainant asserts that the only contents of Respondent’s website are links to third-party websites, largely websites that offer financial goods and services similar to or in competition with Complainant. The Panel notes that Respondent’s <mbbank.net> domain name leads to a webpage with unrelated links titled “Download Movies,” “Music Videos,” “Download Games,” and others. See Exhibit E. The Panel observes that Complainant’s Exhibit F, purporting to show a screen shot of Respondent’s website displaying links that compete with Complainant, was only obtained after Complainant searched for the related term “Savings Account” using the search function featured on Respondent’s website. The Panel holds that Respondent’s use of the disputed domain name to provide unrelated hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant asserts that Respondent has registered and is using the disputed domain name to disrupt Complainant’s business. The Panel notes that Respondent’s disputed domain name resolves to a webpage that provides hyperlinks that are unrelated to Complainant’s business. See Exhibit E. The Panel observes that Complainant’s Exhibit F, purporting to show a screen shot of Respondent’s website displaying links that compete with Complainant, was only obtained after Complainant searched for the related term “Savings Account” using the search function featured on Respondent’s website. Previous panels have found that a respondent’s use of a disputed domain name to provide unrelated links typically does not constitute a disruption of complainant’s legitimate business under Policy ¶ 4(b)(iii), as bad faith disruption generally requires some degree of competition between Complainant and Respondent. The Panel nonetheless finds that Respondent’s use of the <mbbank.net> domain name diverts users away from Complainant’s website to Respondent’s website, thus disrupting Complainant’s business. Accordingly, the Panel determines that Respondent’s registration and/or use of the disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Complainant claims that Respondent is using the domain name in order to collect click-through fees for channeling Internet users to third-party websites. The Panel observes that Respondent is using the <mbbank.net> domain name to provide unrelated links such as “TV Series Download,” “Free Antivirus,” “Music Downloads,” and more. See Exhibit E. Complainant argues that Respondent has registered and is using the domain name in order to profit from Complainant’s mark. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), the panel held that respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites. Consequently, the Panel holds that Respondent has registered and is using the <mbbank.net> domain name to attract users to its website for commercial gain, showing bad faith use and registration under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mbbank.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 5, 2013
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