IndyMac Bank F.S.B. v. Unasi Inc.
Claim
Number: FA0507000514785
Complainant is IndyMac Bank F.S.B. (“Complainant”), represented
by B. Brett Heavner, of Finnegan, Henderson, Farabow,
Garrett, & Dunner LLP, 901
New York Avenue NW, Washington, DC 20001.
Respondent is Unasi Inc. (“Respondent”),
Galerias Alvear 3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <indymackortgage.com>, <indymacmorgtage.com>,
<indymacmortgaga.com>, <indymacmortgae.com>, <indymacmortgag.com>,
<indymaxmortgage.com>, <indymacmotgage.com>, <indymacbnk.com>,
<wwwindymacmortgage.com>, <indymacmortgages.com>, and
<indimacmortgage.com>, registered with Iholdings.com, Inc.
d/b/a Dotregistrar.com.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 13, 2005.
On
July 15, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain names <indymackortgage.com>,
<indymacmorgtage.com>, <indymacmortgaga.com>, <indymacmortgae.com>,
<indymacmortgag.com>, <indymaxmortgage.com>, <indymacmotgage.com>,
<indymacbnk.com>, <wwwindymacmortgage.com>, <indymacmortgages.com>,
and <indimacmortgage.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 has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
July 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 8, 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@indymackortgage.com, postmaster@indymacmorgtage.com,
postmaster@indymacmortgaga.com, postmaster@indymacmortgae.com, postmaster@indymacmortgag.com,
postmaster@indymaxmortgage.com, postmaster@indymacmotgage.com, postmaster@indymacbnk.com,
postmaster@wwwindymacmortgage.com, postmaster@indymacmortgages.com, postmaster@indimacmortgage.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
August 10, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <indymackortgage.com>,
<indymacmorgtage.com>, <indymacmortgaga.com>, <indymacmortgae.com>,
<indymacmortgag.com>, <indymaxmortgage.com>, <indymacmotgage.com>,
<indymacbnk.com>, <wwwindymacmortgage.com>, <indymacmortgages.com>,
and <indimacmortgage.com> domain names are confusingly similar to
Complainant’s INDYMAC mark.
2. Respondent does not have any rights or
legitimate interests in the <indymackortgage.com>, <indymacmorgtage.com>,
<indymacmortgaga.com>, <indymacmortgae.com>, <indymacmortgag.com>,
<indymaxmortgage.com>, <indymacmotgage.com>, <indymacbnk.com>,
<wwwindymacmortgage.com>, <indymacmortgages.com>, and
<indimacmortgage.com> domain names.
3. Respondent registered and used the <indymackortgage.com>,
<indymacmorgtage.com>, <indymacmortgaga.com>, <indymacmortgae.com>,
<indymacmortgag.com>, <indymaxmortgage.com>, <indymacmotgage.com>,
<indymacbnk.com>, <wwwindymacmortgage.com>, <indymacmortgages.com>,
and <indimacmortgage.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
IndyMac F.S.B., is a leading mortgage lender generating over $37.9 billion
dollars in loan production during 2004.
Complainant offers mortgage services and products to customers through
various channels, including by telephone, over Internet, and through its
nationwide network of mortgage brokers and bankers. In connection with these services and products, Complainant has
registered the INDYMAC mark (Reg. No. 2,212,512 issued December 22, 1998) with
the United States Patent and Trademark Office (“USPTO”).
Respondent
registered the <indymackortgage.com>, <indymacmorgtage.com>,
<indymacmortgaga.com>, <indymacmortgae.com>, <indymacmortgag.com>,
<indymaxmortgage.com>, <indymacmotgage.com>, <indymacbnk.com>,
<wwwindymacmortgage.com>, <indymacmortgages.com>, and
<indimacmortgage.com> domain names between January and May 2005. Respondent’s domain names resolve to websites that feature links
to various competing and non-competing 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. 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.").
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 INDYMAC mark through registration with the USPTO
pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("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."); see also Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Complainant
asserts that Respondent’s <indymackortgage.com>,
<indymacmorgtage.com>, <indymacmortgaga.com>, <indymacmortgae.com>,
<indymacmortgag.com>, <indymaxmortgage.com>, <indymacmotgage.com>,
<indymacbnk.com>, <wwwindymacmortgage.com>, <indymacmortgages.com>,
and <indimacmortgage.com> domain names are confusingly similar to
Complainant’s INDYMAC mark. The <indymackortgage.com>,
<indymacmorgtage.com>, <indymacmortgaga.com>, <indymacmortgae.com>,
<indymacmortgag.com>, <indymacmotgage.com>, and <indymacmortgages.com>
domain names feature Complainant’s entire INDYMAC mark while adding a
typosquatted version of the term “mortgage.”
The addition of a generic term that directly relates to the business in
which Complainant engages is insufficient to distinguish a domain name from the
registered trademark 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 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).
Similarly,
Respondent’s <indymacbnk.com> domain name features the INDYMAC
trademark while adding the letters “bnk.”
Panels have long held that additional letters fail to sufficiently
distinguish Respondent’s domain name from Complainant’s mark. In addition, the letters “bnk” are
associated with the word “bank,” a term closely connected to Complainant’s business. As a result, the Panel finds that the <indymacbnk.com>
domain name is confusingly similar to Complainant’s INDYMAC mark pursuant to
Policy ¶ 4(a)(i). See Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks); see also Kelson Physician Partners,
Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is
identical or confusingly similar to the complainant’s federally registered
service mark, KELSON).
Respondent’s
<wwwindymacmortgage.com> domain name features Complainant’s
entire INDYMAC mark and adds the generic term “mortgage” as well as the letters
“www.” The addition of the letters
“www” fails to sufficiently distinguish the domain name from the INDYMAC
mark. The Panel finds that the <wwwindymacmortgage.com>
domain name is confusingly similar to Complainant’s trademark pursuant to
Policy ¶ 4(a)(i). See 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 the
respondent 's <wwwmarieclaire.com> domain name is confusingly similar to
the complainant's MARIE CLAIRE trademark); 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 the
complainant's NEIMAN-MARCUS mark).
Finally,
Respondent’s <indymaxmortgage.com> and <indimacmortgage.com>
domain names feature typosquatted versions of Complainant’s trademark in
addition to the generic term “mortgage.”
The Panel holds that the misspelling of a trademark fails to distinguish
a respondent’s domain name, as it does not significantly change the overall
impression of the trademark pursuant to Policy ¶ 4(a)(i). See Compaq Info. Techs. Group, L.P. v.
Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain
name <compq.com> is confusingly similar to the complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark); see also Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent lacks rights and legitimate interest in the disputed
domain names. Complainant’s assertion
creates a prima facie case under Policy ¶ 4(a)(ii) and, thus, shifts the
burden of proof onto Respondent. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (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 “concrete evidence that it has
rights to or legitimate interests in the domain name at issue”). Because Respondent failed to respond, the
Panel infers that no rights or legitimate interests exist 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, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names).
Furthermore,
Respondent is using the confusingly similar domain names to operate websites
that feature links to various competing and non-competing commercial websites,
through which Respondent presumably receives referral fees. Such diversionary use does not represent a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
noncommercial or fair use under Policy ¶ 4(c)(iii). See Gardens Alive, Inc. v. D&S
Linx, FA 203126 (Nat. Arb. Forum Nov. 20,
2003) (finding that the respondent used a domain name for commercial benefit by
diverting Internet users to a website that sold goods and services similar to
those offered by the complainant and thus, was not using the name in connection
with a bona fide offering of goods or services or a legitimate
noncommercial or fair use); see also Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services or
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
Finally, no
affirmative evidence has been set forth showing that Respondent is commonly
known by any of the disputed domain names.
Therefore, Respondent has failed to show evidence of rights or
legitimate interests pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept.
25, 2003) (finding that without demonstrable evidence to support the assertion
that a respondent is commonly known by a domain name, the assertion must be
rejected); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses
the <indymackortgage.com>, <indymacmorgtage.com>, <indymacmortgaga.com>,
<indymacmortgae.com>, <indymacmortgag.com>, <indymaxmortgage.com>,
<indymacmotgage.com>, <indymacbnk.com>, <wwwindymacmortgage.com>,
<indymacmortgages.com>, and <indimacmortgage.com>
domain names to divert Internet users to various commercial websites using a
series of hyperlinks from which Respondent presumably receives referral
fees. Because Respondent’s domain names
are confusingly similar to Complainant’s INDYMAC mark, Internet users may
become confused as to Complainant’s sponsorship of or affiliation with the
resulting websites. The Panel finds
that such conduct constitutes bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See Qwest Commc’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to adult
oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website).
Finally,
Respondent registered the disputed domain names with constructive or actual
knowledge of Complainant’s rights in the INDYMAC mark. Due to Complainant’s registration of the
marks with the USPTO, constructive knowledge is conferred onto Respondent. 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 Victoria’s Cyber
Secret Ltd. v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072). Moreover, because of
the similarity between the content of Respondent’s websites and the business in
which Complainant engages, the Panel infers that Respondent had actual
knowledge of Complainant’s rights in the marks. Registration of domain names that are confusingly similar to
another’s mark despite actual or constructive knowledge of the mark holder’s
rights is tantamount to bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
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 <indymackortgage.com>, <indymacmorgtage.com>,
<indymacmortgaga.com>, <indymacmortgae.com>, <indymacmortgag.com>,
<indymaxmortgage.com>, <indymacmotgage.com>, <indymacbnk.com>,
<wwwindymacmortgage.com>, <indymacmortgages.com>, and
<indimacmortgage.com> domain name be TRANSFERRED from
Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: August 24, 2005
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