HCSB v. Country Holding Corp.
Claim
Number: FA0505000472175
Complainant is HCSB (“Complainant”), represented by Cathryn Berryman of Jenkens & Gilchrist, 1445 Ross Ave., Suite 3700, Dallas,
TX 75202. Respondent is Country Holding Corp. (“Respondent”),
1617 Sun Valley Ct., Austin, TX 78734.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hillcountrybank.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
5, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 9, 2005.
On
May 6, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hillcountrybank.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
May 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 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@hillcountrybank.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
June 9, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (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 <hillcountrybank.com>
domain name is confusingly similar to Complainant’s HILL COUNTRY mark.
2. Respondent does not have any rights or
legitimate interests in the <hillcountrybank.com> domain name.
3. Respondent registered and used the <hillcountrybank.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, HCSB, is a Texas State Banking Association
which offers banking services at several branches in Texas as well as
online.
Complainant holds a registration with the United States Patent and
Trademark Office (“USPTO”) for the HILL COUNTRY mark (Reg. No. 2,880,069 filed
October 9, 2002) dated August 31, 2004.
Furthermore, Respondent provides banking services to current and
prospective customers via several domain names, including the <hcsb.com>
domain name.
Respondent registered the <hillcountrybank.com> domain name on January 27, 2004. The domain name resolves to a webpage at the
<texascountrybank.com> domain name, which states “Texas Country Bank In
Org.” The webpage also indicates that
the website is currently being modified and provides an address, telephone
numbers and an e-mail link for a branch bank in Austin, TX.
Upon learning
that Respondent had submitted a banking application to the Texas Department of
Banking under the name “Hill Country Bank,” Complainant contacted Respondent by
telephone and mail to inform Respondent of Complainant’s concern that
Respondent’s use of that name would confuse Complainant’s consumers as to the
origin of banking services offered by Respondent. Respondent replied and indicated that it would change the name of
its bank to “Texas Country Bank.” In
this same response, Respondent indicated that it owned the registration for the
<hillcountrybank.com> domain name and mentioned that it would be
willing to sell the domain name registration to Complainant. After Complainant offered to purchase the
domain name registration at cost, Respondent asked for $1 million for the
domain name registration.
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
submitted evidence of its registration of the HILL COUNTRY mark with the USPTO,
which establishes presumptive rights in Complainant’s mark. Without any response from Respondent, there
is no evidence to dispute Complainant’s prima facie case of rights. Thus, the Panel finds that Complainant has
rights in the HILL COUNTRY mark for the purposes of Policy ¶ 4(a)(i). Furthermore, although Respondent’s
registration of the disputed domain name predates the date of Complainant’s
registration of the mark, once Complainant’s mark has been registered,
Complainant’s rights in the registered HILL COUNTRY mark date back to the date
the mark was filed with the USPTO.
Complainant’s date of filing predates Respondent’s registration. 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 J. C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965)
(registration on the Principal Register is prima facie proof of continual use
of the mark, dating back to the filing date of the application for
registration).
The <hillcountrybank.com>
domain name incorporates Complainant’s HILL COUNTRY mark in its entirety,
adding only the generic or descriptive term “bank” and the generic top-level
domain (gTLD) “.com.” Furthermore, the
term “bank” is descriptive of Complainant’s business. Under the Policy, such minor additions as these are insufficient
to distinguish a domain name that is confusingly similar to a complainant’s registered
mark. Thus, the Panel finds that the
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word or
term); 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).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent has
failed to submit a response, which entitles the Panel to accept all reasonable
allegations and inferences in the Complaint as true unless clearly contradicted
by the evidence. 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
contends that Respondent does not have rights or legitimate interests in the <hillcountrybank.com>
domain name, which contains Complainant’s HILL COUNTRY mark in its
entirety. Since Complainant has made a prima
facie case in support of its allegations, the burden shifts to Respondent
to make a showing of rights or legitmate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). However,
because Respondent failed to respond to Complainant’s assertions and to provide
evidence to contradict these assertions, Respondent has failed to meet its
burden. Therefore, the Panel concludes
that Respondent lacks rights and legitimate interests in the disputed domain
name. See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
the complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); see also 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).
Respondent is
using the <hillcountrybank.com> domain name to redirect Internet
users searching for Complainant’s banking products and services to Respondent’s
webpage that advertises Respondent’s competing business. Such competitive use of a domain name that
is confusingly similar to Complainant’s HILL COUNTRY mark for the purpose of
diverting Complainant’s potential consumers to Respondent’s own business 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 Avery
Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding
that the respondent had no rights or legitimate interests in the disputed
domain name where it used the complainant’s mark, without authorization, to
attract Internet users to its business, which competed with the complainant); 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); see also Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to a financial services
website, which competed with the complainant, was not a bona fide offering of
goods or services).
There is nothing
in the record which suggests that Respondent is commonly known by the <hillcountrybank.com>
domain name. In fact, there is evidence
that Respondent’s business is, in fact, known as “Texas Country Bank.” Furthermore, Complainant asserts that
Respondent is in no way associated with Complainant and that Respondent is not
authorized to use Complainant’s HILL COUNTRY mark. Therefore, the Panel finds that Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when the respondent is not known by the mark); 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").
Furthermore,
Complainant has provided evidence that Respondent offered to sell the <hillcountrybank.com>
domain name to Complainant.
Respondent’s willingness to dispose of any purported rights in the
disputed domain name is further evidence that Respondent lacks rights and
legitmate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See The
American Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA 143684
(Nat. Arb. Forum March 4, 2003) (stating that “Respondent’s lack of rights and legitimate interests in the
domain name is further evidenced by Respondent’s attempt to sell its domain
name registration to Complainant, the rightful holder of the RED CROSS mark”); see
also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat.
Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s
apparent willingness to dispose of its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
alleges and provides evidence that Respondent offered to sell the <hillcountrybank.com>
domain name registration to Complainant for $1 million, an amount in excess of
Respondent’s out-of-pocket expenses associated with the disputed domain
name. Under the circumstances of this
case in which Respondent offered to sell the disputed domain name to the holder
of a mark confusingly similar to the disputed domain name for $1 million and
where the two parties had been in contact regarding the confusing similarity of
the proposed name of Respondent’s competing business, the Panel finds that
there is sufficient evidence that Respondent registered the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(i). See World Wrestling
Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO
Jan. 14, 2000) (finding that the respondent used the domain name in bad faith
because he offered to sell the domain name for valuable consideration in excess
of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26,
2000) (finding that the respondent demonstrated bad faith when he requested monetary
compensation beyond out-of-pocket costs in exchange for the registered domain
name); see also Hitachi, Ltd. v.
Fortune Int’l Dev. Ent, D2000-0412
(WIPO July 2, 2000) (finding the respondent’s offer to sell the domain name for
$100,000 constitutes bad faith).
Complainant is
in the banking services business and have provided evidence that Respondent is
also attempting to form a bank in the same business. Thus, it appears that by using the <hillcountrybank.com>
domain name, Respondent is attempting to attract Complainant’s potential
customers to Respondent’s own website by confusing the customers as to
Complainant’s affiliation with the resulting website at the disputed domain
name. This type of diversion for
Respondent’s commercial gain is evidence of bad faith registration and use
under 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 Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain); see also 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).
The Policy lists
four circumstances under Policy ¶ 4(b), which constitute evidence of bad faith
registration and use. However, this
list is not intended to be comprehensive, and the Panel has, therefore, chosen
to consider additional factors which support its finding of bad faith
registration and use. 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 a domain name that incorporates Complainant’s HILL COUNTRY mark
in its entirety and adds only a generic or descriptive term obviously
associated with Complainant’s business suggests that Respondent had actual
knowledge of Complainant’s rights in the mark when it registered the domain
name. Furthermore, Respondent is located
in the same geographic area as Complainant and purports to be involved in the
same business. All of these
circumstances suggest that Respondent registered the <hillcountrybank.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the mark, which is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse."); 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 Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”).
The Panel finds
that 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 <hillcountrybank.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
June 24, 2005
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