Whitney National Bank v. Unasi Management
Inc.
Claim
Number: FA0503000449357
Complainant is Whitney National Bank (“Complainant”),
represented by Raymond G. Areaux of Carver, Darden, Koretzky, Tessier, Finn, Blossman and Areaux, LLC, 1100 Poydras Street, Suite 2700, New
Orleans, LA, 70163. Respondent is Unasi
Management Inc. (“Respondent”), Galerias Alvear, Via Argentina 2, Oficina
#3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <whitneybnak.com> and <whitneynationalbankcard.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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 March
30, 2005; the National Arbitration Forum received a hard copy of the Complaint March
31, 2005.
On
April 1, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain names <whitneybnak.com>
and <whitneynationalbankcard.com> are registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of
the names. Iholdings.com, Inc. d/b/a Dotregistrar.com verified that Respondent
is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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
April 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 26,
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@whitneybnak.com and postmaster@whitneynationalbankcard.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
April 29, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson 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
(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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent
registered, <whitneybnak.com> and <whitneynationalbankcard.com>,
are confusingly similar to Complainant’s WHITNEY mark.
2. Respondent has no rights to or legitimate
interests in the <whitneybnak.com> and <whitneynationalbankcard.com>
domain names.
3. Respondent registered and used the <whitneybnak.com>
and <whitneynationalbankcard.com> domain names in bad faith.
B. Respondent failed to submit a response in
this proceeding.
Complainant has
used the WHITNEY mark in connection with banking services since 1883.
Complainant has also used the WHITNEY BANK and WHITNEY NATIONAL BANK marks in
connection with its services. Complainant is the oldest continuously operating
bank in New Orleans, Louisiana. Complainant has spent large sums of money
promoting and advertising its services under the WHITNEY mark. Complainant
holds several trademark registrations on the Principal Register of the United
States Patent and Trademark Office for the WHITNEY mark, including Reg. No.
1,311,441 (issued December 25, 1984).
Respondent
registered the <whitneybnak.com> and <whitneynationalbankcard.com>
domain names in January of 2005. The domain names resolve to websites that
contain links to providers of financial services that compete with Complainant.
Complainant has not licensed or authorized Respondent to use any of
Complainant’s marks for any purpose.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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 to and/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
established with extrinsic proof in this proceeding that it has rights in the
WHITNEY mark through registration with the United States Patent and Trademark
Office and by continuous use of the mark in commerce since 1883. 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 and that a respondent has the burden of refuting this assumption).
The <whitneybnak.com>
and <whitneynationalbankcard.com> domain names are confusingly
similar to Complainant’s WHITNEY registered trademark. The domain names fully
incorporate the mark while simply adding the generic phrase “national bank
card,” which is descriptive of services that Complainant offers, or a
misspelling of the generic word “bank,” which is descriptive of Complainant’s
business, and the “.com” generic top-level domain (“gTLD”). Adding a generic or
descriptive phrase, a misspelled descriptive word, and a gTLD do not
distinguish the domain names from Complainant’s mark. Thus, the Panel finds
that the domain names are confusingly similar to Complainant’s mark under
Policy ¶ 4(a)(i). See 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 Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combined the complainant’s mark
with a generic term that had an obvious relationship to the complainant’s
business); see also Parfums
Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding
that four domain names that added the descriptive words “fashion” or
“cosmetics” after the trademark were confusingly similar to the trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to submit a response in this proceeding. In the absence of a response,
the Panel accepts as true all reasonable allegations contained in the Complaint
unless clearly contradicted by the evidence. Complainant has alleged that
Respondent lacks rights and legitimate interests in the <whitneybnak.com>
and <whitneynationalbankcard.com> domain names. No filing by
Respondent and no evidence contradict this allegation. Furthermore, because
Respondent has failed to submit a response, Respondent failed to propose any
set of circumstances that could substantiate a claim of rights or legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that a respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of a complaint to be deemed
true); see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that a complainant’s allegations are true unless
clearly contradicted by the evidence); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Respondent is
not using the <whitneybnak.com> and <whitneynationalbankcard.com>
domain names in connection with a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and is not making a legitimate noncommercial or fair use of
the domain names under Policy ¶ 4(c)(iii) because the domain names are
confusingly similar to Complainant’s mark and redirect unsuspecting Internet
users to websites that offer financial services that compete with Complainant.
The Panel infers that Respondent receives pay-per-click fees when Internet
users follow the links on its websites and that Respondent makes opportunistic
use of Complainant’s mark in order to capitalize on the goodwill associated
with the WHITNEY mark. See Yahoo! Inc. v. Web Master, FA 127717 (Nat.
Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly
similar domain name to operate a pay-per-click search engine, in competition
with the complainant, was not a bona fide offering of goods or services); see
also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June
23, 2003) (holding that the respondent’s appropriation of the complainant’s
mark to market products that compete with the complainant’s goods does not
constitute a bona fide offering of goods and services); see also Winmark
Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding
that the respondent had no rights or legitimate interests in a domain name that
used the complainant’s mark to redirect Internet users to a competitor’s
website).
No evidence
before the Panel suggests that Respondent is commonly known by the <whitneybnak.com>
or <whitneynationalbankcard.com> domain name. The domain
names’ WHOIS information indicates that the registrant of the disputed domain
names is known as “Unasi Management Inc.” and therefore, Respondent is not
known by either of the confusingly similar second-level domains that infringe
on Complainant’s WHITNEY mark. Moreover, Respondent is not licensed to use
Complainant’s mark. Thus, Respondent lacks rights and legitimate interests in
the domain names under Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the
respondent’s WHOIS information implies that the respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail”).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses
confusingly similar variations of Complainant’s WHITNEY mark in its domain
names to ensnare unsuspecting Internet users. Respondent then redirects the
users to websites that link to various providers of financial services. The
Panel infers that Respondent receives pay-per-click fees when Internet users
follow the links on its websites. Thus, Respondent is profiting from the
unauthorized use of Complainant’s registered mark in its domain names. Such
infringement is evidence of bad faith registration and use under Policy ¶
4(b)(iv). See Drs. Foster &
Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad
faith where the respondent directed Internet users seeking the complainant’s
site to its own website for commercial gain); see also Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits
from its diversionary use of the complainant’s mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv).
The disputed
domain names, which are confusingly similar to Complainant’s registered mark,
resolve to websites that provide links to websites that offer services that
compete with Complainant. Respondent’s use of the <whitneybnak.com> and
<whitneynationalbankcard.com> domain names permits the inference that
Respondent registered and used the domain names for the purpose of disrupting
the business of a competitor, which evidences bad faith registration and use
under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competed with the complainant’s
business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain names, additional
factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also 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.”).
Respondent’s
registration of the disputed domain names, which are confusingly similar to
Complainant’s mark, suggests that Respondent knew of Complainant’s rights in
the WHITNEY mark. Additionally, Complainant’s trademark registration on the
Principal Register of the United States Patent and Trademark Office gave
Respondent constructive notice of Complainant’s mark. Moreover, the disputed
websites promote services that compete with Complainant’s services and this
evidences Respondent’s knowledge of Complainant’s rights in the mark. Thus, the
Panel finds that Respondent chose the <whitneybnak.com> and
<whitneynationalbankcard.com> domain names based on the distinctive
qualities of Complainant’s mark, which evidences bad faith registration and use
under Policy ¶ 4(a)(iii). See Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad
faith registration and use where it was “inconceivable that the respondent
could make any active use of the disputed domain names without creating a false
impression of association with the complainant”); see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when the respondent reasonably should have been aware
of the complainant’s trademarks, actually or constructively.”); see also
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 the complainant’s mark and the content advertised on the
respondent’s website was obvious, the 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 <whitneybnak.com> and <whitneynationalbankcard.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 13, 2005
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