OneWest Bank N.A. v. Rick Swindell
Claim Number: FA1412001593260
Complainant is OneWest Bank N.A. (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Rick Swindell (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indymacdepositors.com>, registered with Gabia, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2014; the National Arbitration Forum received payment on December 3, 2014.
On December 10, 2014, Gabia, Inc. confirmed by e-mail to the National Arbitration Forum that the <indymacdepositors.com> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, 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 December 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@indymacdepositors.com. Also on December 11, 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 January 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant acquired the INDYMAC mark from a third-party entity in March 2009, which in turn acquired the mark from the FDIC, who in turn had assumed ownership of the original INDYMAC bank in July 2008 around the time of the high-watermark in the late 2000’s housing and mortgage crisis.
2. The INDYMAC mark is used to promote banking and financial services. This mark is duly registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,357,857, registered June 13, 2000).
3. The <indymacdepositors.com> domain name adds the descriptive term “depositors” to the mark and thus is confusingly similar to the INDYMAC mark.
4. Respondent has no rights or legitimate interests in the domain name. Respondent has never been commonly known as this disputed domain name. Further, the <indymacdepositors.com> domain name’s only known use is to claim the Internet user visiting the website has a virus on their computer, and suggests the user call a 1-877 phone number at once. Thereafter the user is solicited with vague mentions of “services” by an operator with costs ranging from $150 to $200.
5. Respondent registered and is using the <indymacdepositors.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith domain name registration. Further, Respondent’s use of the domain name is causing a likelihood for Internet users to believe these alerts and virus warnings are being promoted by INDYMAC, and this may cause users to believe the phone numbers they call are also associated with Complainant.
6. The domain name was registered on Feb. 28, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the INDYMAC mark. Respondent’s domain name is confusingly similar to Complainant’s INDYMAC mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <indymacdepositors.com> domain name, and that Respondent registered and uses 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.”).
The INDYMAC mark is used to promote banking and financial services. This mark is duly registered with the USPTO (e.g., Reg. No. 2,357,857, registered June 13, 2000). The USPTO registration establishes Complainant’s Policy ¶ 4(a)(i) rights. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <indymacdepositors.com> domain name is confusingly similar to the INDYMAC mark. The Panel agrees that the term “depositors” enhances the confusing similarity because the term itself describes existing or potential users of Complainant’s banking services. See, e.g., AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). Therefore, the the domain name is confusingly similar to the INDYMAC trademark under Policy ¶ 4(a)(i). See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has never been commonly known as this disputed domain name. “Rick Swindell” is listed as the registrant of record for this domain name in the WHOIS record. The Panel agrees that Complainant has shown that Respondent is not known by the domain name . See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims that the <indymacdepositors.com> domain name’s only known use is to mislead Internet users visiting the resolving website by stating that the visitor to the site has a virus on their computer, and suggesting the user call a 1-877 phone number. If the Internet user calls the number they are solicited with vague references to “services” by an operator costing from $150 to $200. This use of the domain name for purposes of marketing “toll free” services by creating the false impression of computer viruses is not a permitted use under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of 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)”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has engaged previously in registering a domain name that was found to be in bad faith. See Philip Morris USA Inc. v. Rick Swindell / Whois Agent, YourJungle Privacy Protection Service (WIPO Case No. D2014- 0653). This prior adverse UDRP decision establishes Respondent’s Policy ¶ 4(b)(ii) bad faith in the current proceeding. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant also has established that Respondent uses the resolving website to engage in fraudulent conduct. Using the website in the manner described above with the connection to Complainant’s mark could easily cause Internet users to believe Complainant is connected in some way to the deceptive content promoted by Respondent. See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied 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 <indymacdepositors.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 19, 2015
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