OneWest Bank, FSB v. Zhichao Yang
Claim Number: FA1307001509978
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 Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indymacmortgagesevices.com>, registered with GODADDY.COM, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2013; the National Arbitration Forum received payment on July 16, 2013.
On July 17, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <indymacmortgagesevices.com> 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 July 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@indymacmortgagesevices.com. Also on July 18, 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 14, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant owns the INDYMAC mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,522,907, registered December 25, 2001). Complainant also owns a trademark registration for the INDY MAC mark with the USPTO (Reg. No. 2,357,857 registered June 13, 2000). See Complainant’s Exhibit 5.
ii. Complainant is an FDIC insured bank that offers a wide array of banking products and services for individual consumers and business. Complainant has banking customers in all 50 states, as well as 75 retail branches in Southern California.
iii. Complainant has used the INDYMAC mark since 1997 in connection with financial services, including mortgage lending services. Complainant extensively advertises and promotes its services and products.
iv. Complainant owns the domain name <indymacmortgageservices.com>.
i. Policy ¶ 4(a)(i)
1. The <indymacmortgagesevices.com> domain name is confusingly similar to Complainant’s INDYMAC mark because it comprises Complainant’s mark, the generic or descriptive terms “mortgage” and “sevices” (a misspelling of the word “services”), and the generic top-level domain (“gTLD”) “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the disputed domain name as nothing in the WHOIS record provides such evidence. Further, Complainant has not authorized Respondent to use the mark.
2. Respondent is not using the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent uses the disputed domain name for a commercial pay-per-click website featuring search categories that relate to Complainant’s business and connect to web pages featuring sponsored-link advertisements for various commercial websites, including ads to websites directly competing with Complainant. See Complainant’s Exhibit 6. Respondent undoubtedly receives click-through commissions when users click on the linked advertisements.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s registration of the domain name constitutes bad faith because Respondent has a bad-faith pattern of registering trademark-related domain names, as shown by four adverse UDRP decisions against Respondent.
2. Respondent’s registration and use of the domain name constitute bad faith because Respondent disrupts Complainant’s business by using the domain name for a website featuring sponsored-link advertisements for directly competing services.
3. Respondent’s registration and use of the domain name constitute bad faith because Respondent registered and uses the 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, and endorsement of Respondent’s resolving website.
4. Respondent’s bad faith is further demonstrated by Respondent’s knowledge of Complainant’s rights in the INDYMAC mark prior to registering the domain name.
5. Respondent’s activities constitute typosquatting, which is evidence of bad faith because the domain name takes advantage of Internet users who mistype Complainant’s <indymacmortgageservices.com> domain name when attempting to reach Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its INDYMAC mark.
2. Respondent’s <indymacmortgagesevices.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.
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 claims to own the INDYMAC mark through its trademark registration with the USPTO (Reg. No. 2,522,907, registered December 25. 2001). See Complainant’s Exhibit 5. Previous panels have determined that USPTO registrations for a mark are sufficient to establish rights in the mark even when the respondent resides outside of the United States. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel finds that Complainant’s USPTO registration is adequate to establish its right in the INDYMAC mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <indymacmortgagesevices.com> domain name is confusingly similar to Complainant’s INDYMAC mark because it consists of Complainant’s mark, the generic or descriptive terms “mortgage” and “sevices” (a misspelling of the word “services”), and the gTLD “.com.” Complainant argues that the additions of the generic or descriptive terms “mortgage” and “sevices” heightens the confusing similarity because the terms describe Complainant’s mortgage-related services, which Complainant offers through its website located at <indymacmortgageservices.com>. Previous panels have found confusing similarity where a domain name incorporates the mark with the addition of a generic or descriptive term. Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered). Further, past panels have not been persuaded that misspellings within a domain name incorporating the complainant’s mark differentiate the domain name from the mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Previous panels have also consistently found that the addition of a gTLD, such as “.com,” is insignificant to the Policy ¶ 4(a)(i) analysis as the affixation of a top level domain is a required element of every domain name. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel determines that the <indymacmortgagesevices.com> domain name is confusingly similar to Complainant’s INDYMAC mark pursuant to 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 Respondent is not commonly known by the disputed domain name, as nothing in the WHOIS record supports such a finding. The Panel notes that the WHOIS record indicates that “Zhichao Yang” is the registrant of the disputed domain name. See Complainant’s Exhibit 1. Further, Complainant contends it has not authorized Respondent to use the mark. Respondent did not submit a Response to rebut Complainant’s contentions. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), based on Complainant’s allegation that Respondent has no permission to use the mark, as well as the conflicting WHOIS information. See 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 further argues that Respondent is not using the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant claims that Respondent uses the disputed domain name to host a commercial pay-per-click website featuring search categories that relate to Complainant’s business and connect to web pages featuring sponsored-link advertisements for various commercial websites, including ads to websites directly competing with Complainant. See Complainant’s Exhibit 6 for a screen shot of the resolving page, which includes links to businesses offering mortgage refinancing and loan services, such as Bank of America, and Quicken Loans. Complainant contends that Respondent undoubtedly receives click-through commissions when users click on the linked advertisements. In Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006), the panel found that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites. Additionally, in Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel held 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”). In line with precedent, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.
Complainant argues that Respondent’s registration of the domain name constitutes bad faith because Respondent has demonstrated a pattern of registering trademark-related domain names, as shown by four adverse UDRP decisions against Respondent. The Panel notes that Complainant cites previous UDRP decisions adverse to Respondent to support the claim, including one involving Complainant and the INDYMAC mark. See OneWest Bank, FSB v. Yang, FA 1481432 (Nat. Arb. Forum Mar. 4, 2013) (transferring the domain name <indymacmorgageservice.com>); see also Nationstar Mort. v. Yang , FA 1450754 (Nat. Arb. Forum Oct. 10, 2012); see also State Farm v. Yank, FA 1461251 (Nat. Arb. Forum Oct. 16, 2012); see also Redcats USA v. Yang, FA 1462454 (Nat. Arb. Forum Oct. 10, 2012). The Panel notes that previous panels have recognized evidence of bad faith where a respondent has a history of bad faith as demonstrated by past UDRP decisions. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel finds evidence of bad faith under Policy ¶ 4(b)(ii), based on Complainant’s evidence of adverse UDRP decisions against Respondent.
Complainant argues that Respondent’s registration and use of the domain name constitute bad faith because Respondent disrupts Complainant’s business by using the domain name for a website featuring sponsored-link advertisements for directly competing services. The Panel observes that Complainant includes a screen shot of the resolving page in Exhibit 6, which shows links to businesses offering mortgage refinancing and loan services, such as Bank of America, and Quicken Loans. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. 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).”). The Panel finds evidence of bad faith under Policy ¶ 4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors.
Complainant claims that Respondent’s registration and use of the domain name constitute bad faith because Respondent registered and uses the 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, and endorsement of Respondent’s resolving website. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the resolving page provides links to Complainant’s competitors, including Bank of America, and Quicken Loans (see Complainant’s Ex. 6), and Respondent likely receives click-through fees by misleading Internet users into associating Complainant with the domain name. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant further argues that Respondent’s bad faith is further demonstrated by Respondent’s knowledge of Complainant’s rights in the INDYMAC mark prior to registering the domain name. To support the argument, Complainant points to the apparent typosquatting nature of the domain name, and the notoriety of Complainant’s mark. Although previous panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel determines that Respondent had actual knowledge of Complainant's mark and rights and therefore find 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant argues that Respondent’s activities constitute typosquatting bad faith because the domain name takes advantage of Internet users who mistype Complainant’s domain name <indymacmortgageservices.com> when attempting to reach Complainant’s website. Panels have consistently held that typosquatting is a practice that takes advantage of common and basic typographical errors, and is thus motivated by bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds evidence of bad faith under Policy ¶ 4(a)(iii) as Respondent diverts users who misspell Complainant’s domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indymacmortgagesevices.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 28, 2013
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