MB Financial Bank, N.A. v
mbfinancialmortgage.com
Claim
Number: FA0501000405073
Complainant is MB Financial Bank, N.A. (“Complainant”),
represented by Salvador K. Karottki, of Goldberg Kohn Bell Black Rosenbloom
& Moritz, LTD, 55 East Monroe Street, Suite 3700, Chicago, IL 60603. Respondent is mbfinancialmortgage.com (“Respondent”), 14455 N. Hayden Rd., Suite
219, Scottsdale, AZ 85260.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mbfinancialmortgage.com>, registered with
Go Daddy Software, 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 January
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 20, 2005.
On
January 19, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <mbfinancialmortgage.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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 26, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 15, 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@mbfinancialmortgage.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 25, 2005, 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." 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 <mbfinancialmortgage.com>
domain name is confusingly similar to Complainant’s MB FINANCIAL mark.
2. Respondent does not have any rights or
legitimate interests in the <mbfinancialmortgage.com> domain name.
3. Respondent registered and used the <mbfinancialmortgage.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, MB
Financial Bank, N.A., is a national banking association in the business of
providing a full selection of banking and financial services, including
mortgage financing. Complainant has
registered its MB FINANCIAL mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,467,873 issued July 10, 2001).
Respondent
registered the <mbfinancialmortgage.com> domain name on September
13, 2004. Respondent’s domain name
resolves to a website that offers competing mortgage financing services.
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 rights in the MB FINANCIAL mark through registration with the
USPTO. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark); 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).
Respondent’s <mbfinancialmortgage.com>
domain name is confusingly similar to Complainant’s MB FINANCIAL mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety and merely adds the term “mortgage,” which
is descriptive of Complainant and Complainant’s business. Additionally, Respondent’s domain name adds
the generic top-level domain “.com” to Complainant’s mark. Such minor additions are insufficient to
negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075
(WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to
Complainant's mark since it merely adds the word "auction" used in
its generic sense); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Isleworth Land Co. v. Lost in
Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as being true and accurate. 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).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <mbfinancialmortgage.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a Response, Respondent has failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name); see
also Bank of Am. Corp. v.
McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”).
Respondent is
using the <mbfinancialmortgage.com> domain name, which features a
confusingly similar variation of Complainant’s MB FINANCIAL mark, to offer
competing mortgage financing services.
Such use 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 fair
use pursuant to Policy ¶ 4(c)(iii). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services); see also DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
Furthermore, the Panel finds that despite being listed in the
WHOIS information as “mbfinancialmortgage.com,” Respondent is not commonly
known by this domain name nor is authorized to register domain names featuring
Complainant’s MB FINANCIAL mark. Thus,
the Panel concludes that Respondent lacks rights and legitimate interests in
the domain name pursuant to Policy ¶ 4(c)(ii).
See Yoga
Works, Inc. v. Arpita,
FA 155461 (Nat. Arb. Forum June 17, 2003)
(finding that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”); see also Web House USA, Inc. v. eDollarShop Hostmaster,
FA 155180 (Nat. Arb. Forum June 10, 2003)
(finding that Respondent was not “commonly known by” the
<edollarshop.com> domain name, despite naming itself “eDollarShop,”
because Respondent’s website was almost identical to Complainant’s “first in
use” website and infringed on Complainant’s marks).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <mbfinancialmortgage.com> domain name, which is a
confusingly similar variation of Complainant’s mark, to operate a website
offering competing mortgage financing services. Such use constitutes disruption and is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation
from Complainant's marks suggests that Respondent, Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business); see also 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).
Respondent is
using a domain name that is confusingly similar to Complainant’s MB FINANCIAL
mark to offer competing mortgage financing services. Consumers accessing Respondent’s domain name are likely to become
confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the <mbfinancialmortgage.com>
domain name is evidence of bad faith registration and use 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 Identigene,
Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where Respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that Complainant is the source of or is sponsoring the
services offered at the site).
Furthermore,
Respondent registered the <mbfinancialmortgage.com> domain name
with actual or constructive knowledge of Complainant’s rights in the MB
FINANCIAL mark due to Complainant’s registration of the mark with the
USPTO. Moreover, the Panel infers that
Respondent registered the domain name with actual knowledge of the mark due to
the obvious link between Complainant’s business and the content presented at
Respondent’s website. Registration of a
domain name that includes another’s mark, with actual or constructive knowledge
of the mark holder’s rights in the mark, is tantamount to bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register
of the USPTO, a status that confers constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof.”); see
also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between Complainant’s mark and the content advertised on
Respondent’s website was obvious, Respondent “must have known about the
Complainant’s mark when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <mbfinancialmortgage.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 11, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page