OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding
Claim Number: FA1006001328894
Complainant is OneWest
Bank, FSB (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., Washington, D.C., USA.
Respondent is Jacob Zakaria d/b/a EQ Funding (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <indymacloanmod.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 8, 2010.
On June 9, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <indymacloanmod.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2010, 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@indymacloanmod.com by e-mail. Also on June 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 July 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 makes the following assertions:
1. The domain name that Respondent registered, <indymacloanmod.com>, is confusingly similar to Complainant’s INDYMAC mark.
2. Respondent has no rights to or legitimate interests in the <indymacloanmod.com> domain name.
3. Respondent registered and used the <indymacloanmod.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, OneWest Bank, FSB, is an FDIC insured regional
bank with eighty-one branches in southern
Respondent, Jacob Zakaria d/b/a EQ Funding, registered the <indymacloanmod.com> domain name July 5, 2008. Respondent’s disputed domain name resolves to a blank webpage located at third-party <sedo.com.>.
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."
Given 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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Complainant established rights in its INDYMAC mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,522,907 issued Dec. 25, 2001) which Complainant acquired in 2009. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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 contends that Respondent’s <indymacloanmod.com> domain name is confusingly similar to Complainant’s INDYMAC mark. Complainant notes that Respondent uses Complainant’s mark in its entirety while adding the descriptive term “loan,” the abbreviation “mod” for the generic term “modification,” and the generic top-level domain (“gTLD”) “.com.” Complainant urges that the above noted changes to its mark do not distinguish the disputed domain name from its mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel agrees and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <indymacloanmod.com> domain name. Complainant is required to make a prima facie case to support these allegations. Once Complainant has made a prima facie showing, the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).
The Panel finds that Complainant made a prima facie showing. Given Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
This Panel, however, still examines the record to determine whether Respondent has rights or legitimate interests in the <indymacloanmod.com> domain name pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known
by the <indymacloanmod.com> domain name and that Complainant has not granted
Respondent permission to use Complainant’s mark. The WHOIS information for the <indymacloanmod.com>
domain name identifies “Jacob Zakaria
c/o EQ Funding” as the registrant of the disputed domain name. The Panel finds that no further evidence on
record indicates that Respondent is commonly known by the disputed domain name,
and that Respondent offers no evidence to negate Complainant’s
contentions. Therefore, the Panel finds
that Respondent is not commonly known by the disputed domain name under a Policy
¶ 4(c)(ii) analysis and that, therefore, Respondent lacks rights and legitimate interests in the
disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name);
see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark).
While Complainant contends that Respondent intends to use the disputed domain name to operate a pay-per-click website, the Panel finds no evidence on record to indicate such use. Respondent’s disputed domain name resolves to a blank website page located at the third-party <sedo.com>, and while this website is commonly used for click-through advertising, no evidence shows that Respondent is using the disputed domain name as such. Complainant does however argue as well that Respondent has failed to make an active use of the <indymacloanmod.com> domain name, as evidenced by the disputed domain name’s being redirected to a blank webpage. Complainant notes that previous panels have decided that failure to make an active use of domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <indymacloanmod.com> domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant also urges that Respondent registered and used or held the domain name containing Complainant’s protected mark in bad faith. The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that the review is not limited to the enumerated factors in Policy ¶ 4(b) but to the totality of the circumstances. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Respondent’s disputed domain name resolves to a blank webpage located at the third-party <sedo.com>. Respondent has not associated the disputed domain name with active content since registering the <indymacloanmod.com> domain name July 5, 2008. Complainant contends that Respondent’s failure to make an active use of the disputed domain name is evidence that Respondent registered and is using the domain name in bad faith. The Panel agrees and finds that Respondent’s failure to make an active use of the <indymacloanmod.com> domain name for more than two years since registering it is evidence that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Respondent registered and passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indymacloanmod.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 20, 2010.
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