Old National Bancorp v. Zdenek Kubik, Ltd. c/o Zdenek Kubik
Claim Number: FA0509000563653
Complainant is Old National Bancorp (“Complainant”), represented by Carrie L. Johnson, of Fullbright & Jaworski LLP, 2100 IDS Center, 80 S. Eighth Street, Minneapolis, MN, 55402. Respondent is Zdenek Kubik, Ltd. c/o Zdenek Kubik (“Respondent”), Shanghai, SH 200135, CHINA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oldnationalbank.org>, registered with eNom.
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 September 16, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 19, 2005.
On Setember 20, 2005, eNom confirmed by e-mail to the National Arbitration Forum that the <oldnationalbank.org> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 September 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 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@oldnationalbank.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 21, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <oldnationalbank.org> domain name is identical to Complainant’s OLD NATIONAL BANK mark.
2. Respondent does not have any rights or legitimate interests in the <oldnationalbank.org> domain name.
3. Respondent registered and used the <oldnationalbank.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Old National Bankcorp, has offered banking services since as early as 1884. Complainant registered the OLD NATIONAL BANK mark on February 6, 1996 (Reg. No. 1,954,327) and the OLD NATIONAL mark on March 11, 2003 (Reg. No. 2,695,267) with the U.S. Patent and Trademark Office (“USPTO”). Complainant offers numerous products and services in a variety of fields under these marks, including credit cards, debit cards, financial and investment consultation, financial planning, investment brokerage, computerized banking, money management, automated teller services, and small business services.
Respondent, Zdenek Kubik, Ltd., registered the <oldnationalbank.org> domain name on November 15, 2004. The resultant website at the disputed domain
name lists “popular categories” for banking and loan services, including, inter
alia, sites of Complainant’s competitors such as First Internet Bank,
Capital One, ING, Countrywide, Bank of America, Hibernia, and Wells Fargo. In addition, other links refer to
pornographic sites, such as <smut.com> offering “Milfs, Grannies, Mature
Ladies All Mature Sex Reviews.”
Respondent has also
registered other domain names that integrate third-parties’ marks such as
<ggoogle.com>, <dallas-cowboys-nfl.com>, <askjeevsocm.com>,
<wwwyamaha-motorcycles.com>, <hotmmail.net>, <yahioo.net>,
<gatorade.org>, and <kraftcanada.org>.
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 offered evidence of its USPTO registrations
of the OLD NATIONAL BANK and OLD NATIONAL marks to establish rights pursuant to
Policy ¶ 4(a)(i). The Panel finds that
Complainant has established rights in the OLD NATIONAL BANK and the OLD
NATIONAL marks. See 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.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that the <oldnationalbank.org>
domain name is identical to Complainant’s OLD NATIONAL BANK mark. See Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching
for a company’s Web site often assume, as a rule of thumb, that the domain name
of a particular company will be the company name or trademark followed by
‘.com.’”); 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).
Complainant has established Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or
legitimate interests. The resultant
website at the disputed domain name lists third-party banking services. The Panel holds that using another’s mark to
offer links to the mark holder’s competitors is not a bona fide offering
of a good or service pursuant to Policy ¶ 4(c)(i) or a legitimate
non-commercial use pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7,
2002) (finding no bona fide offering of goods or services where the
respondent used the complainant’s mark without authorization to attract
Internet users to its website, which offered both the complainant’s products
and those of the complainant’s competitors); see also Chanel, Inc. v. Cologne Zone, D2000-1809
(WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the
complainant’s perfume, as well as other brands of perfume, is not bona fide
use).
There is nothing in the record, including the WHOIS
registration information, that indicates that Respondent is commonly known by
the <oldnationalbank.org> domain name.
The Panel finds that Respondent does not have rights or legitimate
interests pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
Complainant has established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s mark to refer
Complainant’s customers to Complainant’s competitors. Upon arriving at the resultant website, the consumer finds links
to banking and loan services for other banks, such as First Internet Bank, Capital One, ING, Countrywide, Bank of America,
Hibernia, and Wells Fargo. The Panel also
accepts Complainant’s allegation that Respondent is receiving click-through
fees from this website. Therefore, the
Panel finds that Respondent is creating a likelihood of confusion for
commercial gain: it is appropriating Complainant’s mark in an identical domain
name to generate click-through fees.
This is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying
the complainant’s mark on its website and offering identical services as those
offered by the complainant); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109
(eResolution June 12, 2000) (finding that the respondent violated Policy ¶
4(b)(iv) because the respondent admittedly used the complainant’s well-known
mark to attract users to the respondent's website).
Additionally, the disputed domain name offers a link to
pornography. The resultant web page
provides a link to pornographic sites,
such as <smut.com> offering “Milfs, Grannies, Mature Ladies All Mature
Sex Reviews.” The Panel finds that
Respondent is appropriating Complainant’s mark to link to pornography,
presumably to receive referral fees, which is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Nat’l Ass’n of Stock Car Auto Racing, Inc.
v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t
is now well known that pornographers rely on misleading domain names to attract
users by confusion, in order to generate revenue from click-through
advertising, mouse-trapping, and other pernicious online marketing
techniques.”); see also Youtv,
Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad
faith where the respondent attracted users to his website for commercial gain
and linked his website to pornographic websites).
Complainant has established 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 <oldnationalbank.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 2, 2005
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