MB Financial Bank, N.A. v ICS INC.
Claim Number: FA1404001552275
Complainant is MB Financial Bank, N.A. (“Complainant”), represented by Stephanie J. Harris of Goldberg Kohn Ltd., Illinois, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mbfinanical.com>, registered with Tucows Domains Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2014; the National Arbitration Forum received payment on April 2, 2014.
On April 3, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <mbfinanical.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 April 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2014 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@mbfinanical.com. Also on April 4, 2014, 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 April 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <mbfinanical.com> domain name, the domain name at issue, is confusingly similar to Complainant’s MB FINANCIAL mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is MB Financial Bank, N.A., an American national banking association in the business of providing banking and financial services under the MB FINANCIAL mark. Complainant and its predecessors have been using the MB FINANCIAL mark since at least as early as 1999 in connection with the underlying banking and financial services. Complainant operates a website at <mbfinancial.com>, among other domain names, wherein Complainant promotes its services to all Internet users around the world. Complainant’s MB FINANCIAL mark is protected by way of consistent use and more notably through Complainant’s trademark registrations with the United States Patent and Trademark Office (“USPTO”). See Reg. No. 2,467,973 registered July 10, 2001.
Respondent’s <mbfinanical.com> domain name is confusingly similar to the MB FINANCIAL mark. The domain name merely transposes the letters “c” and “i” in the MB FINANCIAL mark, adding the irrelevant generic top-level domain ("gTLD") “.com." Respondent does not appear to ever have been known as the <mbfinanical.com> domain name, and Complainant has not otherwise authorized Respondent’s actions. Respondent has failed to make any bona fide offering through the <mbfinanical.com> domain name. The plainly commercial use of this domain name is for the promotion of competing hyperlinks to websites owned by third-party competitors of Complainant. Respondent is taking advantage of spelling errors that Internet users may make when these users seek out websites associated with the MB FINANCIAL mark. Respondent’s domain name merely transposes two letters in the mark. If the Internet user did not transpose these letters, they would have ended up at Complainant’s own MB FINANCIAL website.
Respondent is disrupting Complainant’s business by using the <mbfinanical.com> domain name to show Internet users hyperlinks to Complainant’s own competitors. Respondent is capitalizing on the likelihood Internet users will be confused and associate the <mbfinanical.com> domain name with Complainant’s legitimate business under the MB FINANCIAL mark. Respondent is using the <mbfinanical.com> domain name to post a website populated with hyperlinks to competing banking and financial service websites.
Complainant’s MB FINANCIAL mark is well-known and registered. Furthermore, Respondent’s domain name appears to make only a subtle misspelling of the mark and is being used to promote hyperlinks to Complainant’s own competitors. From this it can be presumed that Respondent had knowledge of Complainant’s rights in the MB FINANCIAL mark prior to domain name registration. Respondent’s conduct in registering this domain name is tantamount to typosquatting.
Respondent registered the <mbfinanical.com> domain name on September 8, 2005.
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 is MB Financial Bank, N.A., an American national banking association in the business of providing banking and financial services under the MB FINANCIAL mark. Complainant and its predecessors have been using the MB FINANCIAL mark since at least as early as 1999 in connection with the underlying banking and financial services. Complainant operates a website at <mbfinancial.com>, among other domain names, wherein Complainant promotes its services to all Internet users around the world. Complainant's MB FINANCIAL mark is protected by way of Complainant’s trademark registrations with the USPTO. See Reg. No. 2,467,973, registered July 10, 2001. Complainant’s USPTO registration evidences Complainant’s rights in the MB FINANCIAL mark, despite Respondent’s apparent residence in the Cayman Islands. See Priceline.com, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1547179 (Nat. Arb. Forum Apr. 24, 2014) (finding that USPTO registration satisfied Policy ¶ 4(a)(i), even when the respondent was located in Saint Vincent and the Grenadines).
Respondent’s <mbfinanical.com> domain name is confusingly similar to the MB FINANCIAL mark. The domain name merely transposes the letters “c” and “i” in the MB FINANCIAL mark, adding the irrelevant gTLD “.com.” Neither a gTLD nor hyphen are relevant to this discussion. See, e.g., Microsoft Corp. and Skype v. Ryan G Foo / PPA Media Servs., FA 1537663 (Nat. Arb. Forum Feb. 10, 2014) (finding that hyphens and top-level domains cannot be grounds for distinction as between a domain name and a trademark). The transposition of letters in a mark enhances the confusing similarity of a domain name. See Brown Shoe Co., Inc and its subsidiary Brown Group Retail, Inc. v. duanxiangwang / duanxiangwang, FA 1520856 (Nat. Arb. Forum Nov. 4, 2013) (“Respondent has transposed two letters in the FAMOUS FOOTWEAR mark to form the substance of the domain name. . . as the only point of reference for any of these domain names is the FAMOUS FOOTWEAR mark, all of the domain names are confusingly similar.”). Thus, the <mbfinanical.com> domain name is confusingly similar to the MB FINANCIAL mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
It appears to the Panel that Respondent has never been known as the <mbfinanical.com> domain name. Complainant has not otherwise authorized Respondent’s actions. The <mbfinanical.com> domain name’s WHOIS information lists “ICS INC.” as the registrant of record. In IDT Corp. v. tony mousa / mousacom, FA 1548108 (Nat. Arb. Forum Apr. 17, 2014) the panel declined to make findings under Policy ¶ 4(c)(ii) when there was no evidence to suggest the respondent was commonly known by the disputed domain name. The Panel finds that there is no basis for a finding that Respondent was commonly known by the <mbfinanical.com> domain name under Policy ¶ 4(c)(ii).
Respondent has failed to make any bona fide offering through the <mbfinanical.com> domain name. The plainly commercial use of this domain name is for the promotion of competing hyperlinks to websites owned by third-party competitors of Complainant. The <mbfinanical.com> domain name evidently resolves to a website that features hyperlinks such as “Bank Checking Account” and “Get a Bank Account Online,” along with referral links to third-party websites controlled by competing banking firms. In Ra Sushi Holding Corp. v. Janice Liburs, FA 1547625 (Nat. Arb. Forum Apr. 23, 2014), the panel found no bona fide offering under Policy ¶ 4(c)(i) when the respondent’s use of the domain name was for purposes of promoting hyperlink advertisements to third-party services. The Panel finds that Respondent’s actions with respect to the <mbfinanical.com> domain name give rise to neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent is taking advantage of spelling errors that Internet users may make when seeking websites associated with the MB FINANCIAL mark. Respondent’s domain name merely transposes two letters in the mark. If the Internet user had not transposed these letters, he or she would have ended up at Complainant’s own MB FINANCIAL website located at the <mbfinancial.com> domain name. Thus Respondent’s registration of the domain name was an act of typosquatting, and as such, Respondent cannot claim to have any Policy ¶ 4(a)(ii) right or legitimate interest in the continued holding of this domain name. See Tumblr, Inc. v. Benjamin Lotan / Toad Murphy, FA 1543249 (Nat. Arb. Forum Mar. 13, 2014) (“The Panel notes that the disputed domain name differs from the mark where the domain name replaces the “t” in the mark with an “r.” Previous panels have used typosquatting as further evidence that the respondent lacks rights and legitimate interests in the disputed domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is disrupting Complainant’s business by using the <mbfinanical.com> domain name to present Internet users hyperlinks to Complainant’s own competitors. The Panel notes that the disputed domain name contains portal hyperlinks that send Internet users to competing banks. In Plentyoffish Media Inc. v. Amazing Bender / None, FA 1549463 (Nat. Arb. Forum Apr. 23, 2014) the panel determined that the presence of competing hyperlinks evidenced bad faith disruption of the complainant’s business. The Panel here finds that Respondent’s bad faith is traceable to Policy ¶ 4(b)(iii), as the domain name resolves to a website wherein Internet users are shuttled to competing banks.
Respondent is capitalizing on the likelihood Internet users will be confused and associate the <mbfinanical.com> domain name with Complainant’s legitimate business under the MB FINANCIAL mark. As noted, Respondent is using the <mbfinanical.com> domain name to post a website populated with hyperlinks to competing banking and financial service websites. Presumably, Respondent generates click-through-fees through the promoted links. The Panel finds Policy ¶ 4(b)(iv) bad faith through Respondent’s use of the <mbfinanical.com> domain name because the confusingly similar domain name is being used to promote competing and related goods and services for Respondent’s own benefit. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant's MB FINANCIAL mark is well-known and registered. Furthermore, Respondent’s domain name appears to make only a subtle misspelling of the mark and is being used to promote hyperlinks to Complainant’s own competitors. From this, it can be inferred that Respondent had knowledge of Complainant’s rights in the MB FINANCIAL mark prior to domain name registration. Accordingly, the Panel finds that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Respondent is capitalizing on “typosquatting” by registering a domain name that varies so little from the MB FINANCIAL mark. Previous panels have found that typosquatting exists when a domain name merely embodies common spelling errors that Internet users may make when venturing to find the complainant’s business on the Internet. 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 here finds that the <mbfinanical.com> domain name, is a typosquat of the MB FINANCIAL mark, and was registered in Policy ¶ 4(a)(iii) bad faith.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Note: Had Respondent filed a Response and asserted laches as a defense, the Panel would have seriously considered the matter. The domain name at issue was registered almost nine years ago.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mbfinanical.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 1, 2014
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