MBNA America Bank, N.A. v. Peter
Carrington a/k/a Party Night, Inc.
Claim Number: FA0207000115040
PARTIES
Complainant
is MBNA America Bank, N.A.,
Wilmington, DE, USA (“Complainant”) represented by James R. Davis, of Arent Fox
Kintner Plotkin & Kahn.
Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam, NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <mbanetaccess.com>,
registered with Key-Systems GmbH.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 9, 2002; the Forum received a hard copy of the Complaint
on July 10, 2002.
On
July 11, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the
domain name <mbanetaccess.com>
is registered with Key-Systems GmbH and that Respondent is the current
registrant of the name. Key-Systems
GmbH has verified that Respondent is bound by the Key-Systems GmbH registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
July 12, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 1,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@mbanetaccess.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 8, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <mbanetaccess.com> domain
name is confusingly similar to Complainant’s registered MBNA mark.
2. Respondent does not have any rights or
legitimate interests in the <mbanetaccess.com> domain name.
3. Respondent registered and used the <mbanetaccess.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is the owner of numerous
trademark registrations for the MBNA mark. More specifically, Complainant holds
U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,362,384 for the MBNA mark
registered on the Principal Register on September 24, 1985, which denotes
Complainant’s banking and related services.
Complainant uses several of its MBNA
marks in connection with domain names to provide various services over the
Internet. For example, Complainant operates websites connected to the
<mbna.com> and <mbnanetaccess.com> domain names. Complainant’s MBNA
marks, including Complainant’s pending MBNA NET ACCESS mark, are used
extensively at these websites to promote Complainant’s services.
Since Complainant’s adoption of the MBNA
marks in 1983, they have been continuously and extensively used in interstate
commerce in connection with the advertising and sale of Complainant’s MBNA
services. Each year, millions of MBNA customers obtain services offered under
the MBNA marks; millions more are exposed to Complainant’s marks through
advertising and promotion. Complainant’s MBNA marks have been, and continue to
be, widely publicized through substantial advertising throughout the U.S. and
the world. Many millions of dollars have been spent in connection with such
advertising, which has been disseminated through different broadcasting
mediums.
Because of Complainant’s significant
advertising campaign and sales, Complainant’s MBNA marks have become famous and
well known among members of the consuming public.
Respondent registered the <mbanetaccess.com>
domain name on March 10, 2002. Respondent’s domain name resolves to
pornographic and gambling websites.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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.
Paragraph
4(a) of the Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the 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.
Complainant has established rights in the
MBNA mark through registration with the USPTO and subsequent continuous use of
the mark.
Complainant also asserts rights in the
MBNA NET ACCESS mark. However, Complainant’s evidence consists of a pending
trademark application with the USPTO, which is filed as an Intent To Use
(“ITU”) application, and the registration for the <mbnanetaccess.com>
domain name. In considering the circumstances of the present dispute, the Panel
determines that establishing common law rights in Complainant’s MBNA NET ACCESS
mark is unnecessary, and Complainant’s rights in the MBNA registered mark will
suffice.
Respondent’s <mbanetaccess.com> domain
name is confusingly similar to Complainant’s MBNA mark. The subject domain name
contains a common typographical error of Complainant’s MBNA mark with the
addition of industry related words that have an obvious relationship to
Complainant. In fact, Complainant offers services from the nearly identical
<mbnanetaccess.com> domain name. The similarities are not coincidental;
Respondent intentionally uses a slight misspelling of Complainant’s established
MBNA mark, which reflects a method common to typosquatters. The deliberate
introduction of errors into a famous mark and the addition of industry related
words have been held to be inconsequential when conducting a Policy ¶ 4(a)(i)
“confusingly similar” analysis. 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 Complainant’s marks); see also Space
Imaging LLC v. Brownwell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
Respondent’s domain name combines the Complainant’s mark with a generic term
that has an obvious relationship to the Complainant’s business).
Accordingly, the Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to dispute
Complainant’s allegations and contentions; thus, the Panel is permitted to make
all reasonable inferences in favor of Complainant. See 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”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Additionally, when Respondent’s rights
and legitimate interests in the domain name are not apparent to the Panel and
Respondent fails to corroborate its registration of the domain name with
evidence, it is presumed that Respondent lacks rights and legitimate interests
in the domain name. Respondent has effectively failed to satisfy its burden of
proving legitimate registration of the domain name in the face of Complainant’s
unrefuted evidence. See Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, the Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Respondent’s infringing domain name
resolves to a website containing pornographic and gambling content.
Respondent’s objectives are clear: divert Internet users interested in Complainant’s
established marks to its commercially driven website. Such use tarnishes the
goodwill associated with Complainant’s MBNA mark and frustrates Internet users
searching for Complainant’s services by confronting them with explicit and
unanticipated content. Respondent’s opportunistic registration of Complainant’s
established mark is not in connection with a bona fide offering of goods or
services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that it is not a bona fide offering of goods or services to use a
domain name for commercial gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material, where such use is
calculated to mislead consumers and tarnish the Complainant’s mark); see
also Société des Bains de Mer v.
Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or
legitimate interests where Respondent used the <casinomontecarlo.com> and
<montecarlocasinos.com> domain names in connection with an online
gambling website).
There is no evidence that suggests a
legitimate connection between Respondent and its use of the domain name with
the <mbanetaccess.com> registration, which implies that Respondent
is not commonly known by the domain name under Policy ¶ 4(c)(ii). Because
Complainant’s MBNA mark enjoys a significant amount of notoriety among the
consuming public, and Respondent’s use of the domain name is not in connection
with a legitimate interest, it is presumed that Respondent does not have any
rights in the domain name under Policy ¶ 4(a)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Valigene Corp. v. MIC, FA 94860 (Nat.
Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the
non-use of a domain name that was a misspelling of a famous mark); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that
Respondent has no rights or legitimate interests in the <nokiagirls.com>
domain name because there was no element on the website that would justify use
of the word NOKIA within the domain name).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
The circumstances surrounding
Respondent’s registration of the infringing domain name indicate that
Respondent was at least constructively aware of Complainant’s rights in the
MBNA mark, more specifically: (1) Respondent’s domain name is confusingly
similar to Complainant’s MBNA mark and is nearly identical to Complainant’s
<mbnanetaccess.com> domain name, but for a common typographical
error; (2) as stated, Complainant’s domain name is famous and enjoys worldwide
recognition; and, (3) Respondent failed to demonstrate any rights or legitimate
interests in the domain name, illustrated by the fact that the content on its website
has no connection with the <mbanetaccess.com> domain name.
Respondent’s registration of an infringing domain name, despite knowledge of
Complainant’s preexisting rights, represents bad faith registration under
Policy ¶ 4(a)(iii). See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent
had actual and constructive knowledge of Complainant’s EXXON mark given the
world-wide prominence of the mark and thus Respondent registered the domain
name in bad faith).
Respondent’s bad faith registration and
use of the infringing domain name is also demonstrated by the fact that
Respondent’s domain name resolves to pornographic and gambling websites.
Besides the disparaging effect the content of the websites have on
Complainant’s established mark, Respondent is intentionally attempting to
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with Complainant’s mark. Thus, Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Ty,
Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent
contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith); see also Mars, Inc. v. Double Down Magazine,
D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent linked the domain name <marssmusic.com>, which is
identical to Complainant’s mark, to a gambling website).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be
hereby GRANTED.
Accordingly, it is Ordered that the <mbanetaccess.com>
domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: August 13, 2002
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