Guaranty Bank v. Registerfly.com - REF# 19164340 c/o Whois Protection Service - ProtectFly.com
Claim Number: FA0510000586864
Complainant is Guaranty Bank (“Complainant”), represented by H. Lisa Calico, of Wong Cabello, LLP, P.O. Box 685108, Austin, TX 78768. Respondent is Registerfly.com - REF# 19164340 c/o Whois Protection Service - ProtectFly.com (“Respondent”), P.O. Box 969, Margaretville, NY 12455.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <guarantymail.com>, registered with Enom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 27, 2005.
On October 28, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <guarantymail.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 31, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 21, 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@guarantymail.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 28, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <guarantymail.com> domain name is confusingly similar to Complainant’s GUARANTY mark.
2. Respondent does not have any rights or legitimate interests in the <guarantymail.com> domain name.
3. Respondent registered and used the <guarantymail.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Guaranty Bank, and its predecessors-in-interest have offered banking and financial services in the United States under the GUARANTY mark since as early as 1921. Complainant is one of the biggest financial institutions owned by a Texas-based company, with assets of over $17 billion. Complainant operates more than 140 banking centers in Texas and California, serving over 300,000 families. Complainant is active throughout the United States as a major real estate construction lender and as a provider of financing to middle market businesses. Over the years, Complainant has emphasized the GUARANTY mark in the presentation of its name in signs, advertising and other promotional materials. Complainant has used the GUARANTY mark both standing alone and in other forms, to refer to itself in newspaper advertising and other promotional material. As a result of such extensive use, the consuming public has come to recognize Complainant under the GUARANTY mark.
Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GUARANTY family of marks (e.g., Reg. No. 1,331,254, issued April 16, 1985).
Complainant provides online banking services via its website at <guarantygroup.com>, where Complainant also displays advertising materials and information regarding its banking services. Additionally, Complainant uses “guarantymail” in connection with offering e-mail communications with its customers.
Respondent registered the <guarantymail.com> domain name on June 27, 2005. Respondent is using the disputed domain name for phishing purposes to obtain personal and financial information by sending fraudulent e-mail solicitations regarding financial transactions.
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 asserts that it has established rights in the
GUARANTY mark through registration with the USPTO. See 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.”); 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 the <guarantymail.com> domain name is confusingly similar to Complainant’s GUARANTY mark pursuant to Policy ¶ 4(a)(i), as the domain name incorporates Complainant’s mark with the addition of the generic or descriptive term “mail.” The mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); 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).
Furthermore, the addition of the generic top-level domain “.com” does not negate the confusing similarity of Respondent’s domain name to Complainant’s GUARANTY mark, pursuant to 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <guarantymail.com> domain name. When a complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. 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 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.”).
Additionally, Respondent is not commonly known by the <guarantymail.com> domain name. Thus, the Panel concludes that respondent has not established rights or legitimate interests in the disputed domain name 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 G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Moreover, Respondent is using the <guarantymail.com>
domain name to commit fraud for commercial gain through various phishing
tactics in order to obtain personal and financial information from Internet
users. The Panel finds that
Respondent’s use of a domain name that is confusingly similar to Complainant’s
mark to divert Internet users for Respondent’s own commercial gain does not
constitute 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 HOPE worldwide, Ltd.
v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (defining “phishing” as
fooling “Internet users into sharing personal financial data so that identities
can be stolen, fraudulent bills are run up, and spam e-mail is sent”); see
also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website); see
also Juno Online Servs., Inc. v.
Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a
domain name in a fraudulent scheme to deceive Internet users into providing
their credit card and personal information is not a bona fide offering of goods or services nor a legitimate
noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <guarantymail.com> domain
name, which is a confusingly similar variation of Complainant’s GUARANTY mark,
to fraudulently retrieve personal and financial information from Complainant’s
customers. Such use is evidence that
Respondent registered and used the domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Monsanto Co.
v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that
Respondent's use of <monsantos.com> to misrepresent itself as Complainant
and to provide misleading information to the public supported a
finding of bad faith); see also Juno
Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004)
(“The domain name <billing-juno.com> was registered and used in bad faith
by using the name for fraudulent purposes.”).
Furthermore, Respondent presumably commercially benefits by taking advantage of consumer confusion to acquire personal and financial information via the confusingly similar domain name. This is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <guarantymail.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 6, 2005
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