World Savings Bank, FSB and Golden West
Financial Corporation v. Michael Huang
Claim
Number: FA0501000399560
Complainant is World Savings Bank, FSB and Golden West Financial Corporation (collectively, “Complainant”),
represented by Ian K. Boyd, of Harvey Siskind Jacobs LLP,
Four Embarcadero Center, 39th Floor, San Francisco, CA 94111. Respondent is Michael Huang (“Respondent”), 5 Newton Road # 8, Singapore, SG
307944.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwworldsavings.com>, registered with Moniker
Online Services, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 13, 2005.
On
January 13, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <wwwworldsavings.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, Inc. 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
January 17, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 7, 2005 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@wwwworldsavings.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 14, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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." 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 <wwwworldsavings.com>
domain name is confusingly similar to Complainant’s WORLD SAVINGS mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwworldsavings.com> domain name.
3. Respondent registered and used the <wwwworldsavings.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
been continuously using the WORLD SAVINGS mark since 1912 in connection with
its savings and loan business, which includes providing mortgage and banking
services. Complainant holds trademark
registrations with the United States Patent and Trademark Office for the WORLD
SAVINGS mark (e.g., Reg. No. 1,541,875, issued May 30, 1989).
Complainant
operates its website at numerous domain names, all of which incorporate
Complainant’s WORLD SAVINGS mark. Some
examples include <worldsavings.com>, <worldsavings.biz>,
<worldsavings.info> and <worldsavings.org>. Internet users can obtain information on
Complainant’s promotions and advertising at its websites. Complainant also offers online banking
services at the website.
Respondent
registered the <wwwworldsavings.com> domain name on March 12,
2003. Respondent’s disputed domain name
redirects Internet users to <domainsponsor.com> domain name, which
resolves to a website that offers links to services related to online banking,
checking accounts, online banking, mortgages, CD rates, and other services
similar to those offered by Complainant.
The <domainsponsor.com> domain name operates a program that pays
other domain name registrants a referral fee of up to 50% of revenues for
redirecting Inernet users to participating commercial websites.
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 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 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.
Complainant has
established that it has rights in the WORLD SAVINGS mark through registration
with the United States Patent and Trademark Office and through continued use of
the mark for over ninety years. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The <wwwworldsavings.com>
domain name registered by Respondent, is confusingly similar to
Complainant’s WORLD SAVINGS mark because the only difference between the two is
the omission of a space between the words “world” and “savings” and the
addition of the prefix “www.” These two
miniscule details are insufficient to distinguish the disputed domain name from
the mark. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430
(S.D.N.Y. 1997), aff’d 152 F.3d 920 (2d Cir. 1998), cert. denied
525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and
defendant’s <plannedparenthood.com> domain name nearly identical); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding that Respondent’s domain
name <charlesjourdan.com> is identical to Complainant’s marks); see
also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6,
2002) (holding confusing similarity has been established because the prefix
"www" does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark);
see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002)
(holding that the letters "www" are not distinct in the
"Internet world" and thus Respondent 's <wwwmarieclaire.com>
domain name is confusingly similar to Complainant's MARIE CLAIRE trademark).
Moreover, the
addition of the generic top-level domain “.com” does not sufficiently
distinguish the disputed domain name from Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Blue Sky Software Corp. v. Digital Sierra,
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to Complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("the addition of the generic top-level domain (gTLD) name ‘.com’ is . . .
without legal significance since use of a gTLD is required of domain name
registrants"); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY BY
VICTORIA mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
alleges that Respondent does not have rights or legitimate interests in the
disputed domain name. When a
complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent lacks rights and legitimate interests in the disputed domain
name. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant
asserts that Respondent has no rights or legitimate interests with respect to
the domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Clerical Med. Inv. Group
Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that
under certain circumstances the mere assertion by Complainant that Respondent
has no rights or legitimate interests is sufficient to shift the burden of
proof to Respondent to demonstrate that such rights or legitimate interests do
exist); Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Additionally, if
Complainant makes a prima facie showing and Respondent does not respond,
the Panel may accept all reasonable inferences and assertions in the Complaint
as true. 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence); see also
Charles Jourdan 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).
Respondent is
using the <wwwworldsavings.com> domain name to redirect Internet
users to the <domainsponsor.com> website where, which provides links to
websites that offer financial services related to banking, mortgages and other
services similar to those offered by Complainant. Respondent’s use of a domain name confusingly similar to
Complainant’s WORLD SAVINGS mark to redirect Internet users interested in
Complainant to a commercial website that offers similar services is 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 financial use pursuant to Policy ¶
4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation of web-site using a domain name which is
confusingly similar to the Complainant’s mark and for the same business”); see
also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding
no “bona fide” offering of goods or services where Respondent used
Complainant’s mark without authorization to attract Internet users to its
website, which offered both Complainant’s products and those of Complainant’s
competitors); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where Respondent attempted to
profit using Complainant’s mark by redirecting Internet traffic to its own
website); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of
Complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to competitors of Complainant, was not a
bona fide offering of goods or services).
Furthermore,
Respondent receives click-through fees by redirecting Internet users to the
<domainsponsor.com> website.
Respondent’s revenue generating use of the disputed domain name which
incorporates Complainant’s entire mark, does not fall within the parameters of
Policy ¶ ¶ 4(c)(i) or (iii). See
eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the
"use of complainant’s entire mark in infringing domain names makes it
difficult to infer a legitimate use"); see also WeddingChannel.com Inc.
v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to websites
unrelated to Complainant’s mark, websites where Respondent presumably receives
a referral fee for each misdirected Internet user, was not a bona fide offering
of goods or services as contemplated by the Policy); see also Black & Decker Corp. v.
Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding
that Respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to Complainant and presumably with the purpose
of earning a commission or pay-per-click referral fee did not evidence rights
or legitimate interests in the domain name); see also Yahoo! Inc. v. Web
Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that
Respondent’s use of a confusingly similar domain name to operate a
pay-per-click search engine, in competition with Complainant, was not a bona
fide offering of goods or services).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
The Panel finds
that Respondent’s use of a domain name that incorporates Complainant’s entire
WORLD SAVINGS mark and omits the period after “www,” a common typographical
error, constitutes typosquatting and is
evidence of Respondent’s bad faith registration and use of the disputed domain
name pursuant to Policy ¶ 4(a)(iii). See
Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net
1111111111, D2003-0232 (WIPO May 22, 2003) (holding that “absence of a dot
between the ‘www’ and ‘canadiantire.com’ [in the <wwwcanadiantire.com>
domain name is] likely to confuse Internet users, encourage them to access
Respondent’s site” and evidenced bad faith registration and use of the domain
name); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith”); see also RE/MAX Int’l, Inc. v. Seocho,
FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that Respondent’s
registration of the <wwwremax.com> domain name, incorporating
Complainant’s entire mark, was done with actual notice of Complainant’s rights
in the mark prior to registering the infringing domain name, evidencing bad
faith).
Respondent
intentionally registered a domain name that contains in its entirety
Complainant’s well-known mark and did so for Respondent’s commercial gain.
Respondent’s domain name diverts Internet users searching for Complainant to
<domainsponsor.com> where links for financial services similar to those
offered by Complainant are provided and Respondent receives referral fees. Respondent’s commercial use of the disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain
name to attract Internet users to its commercial website); see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
Respondent
registered the disputed domain name for the purpose of disrupting Complainant’s
business by redirecting Internet traffic intended for Complainant to
Respondent’s commercial website which provides links to Complainant’s
competitors. Registration of a domain
name for the purpose of disrupting the business of a competitor is evidence of
bad faith registration and use Pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has
diverted business from Complainant to a competitor’s website in violation of
Policy ¶ 4(b)(iii)); see also EBAY,
Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent
registered and used the domain name <eebay.com> in bad faith where
Respondent has used the domain name to promote competing auction sites).
The Panel finds
that Complainant fulfilled 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 <wwwworldsavings.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Panelist
Dated:
February 28, 2005
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