Bay National Corporation v. Unasi Inc.
Claim Number: FA0512000606140
Complainant is Bay National Corporation (“Complainant”), represented by Jonathan M. Holda, of Ober, Kaler, Grimes and Shriver, 120 East Baltimore Street, Baltimore, MD 21202-1643. Respondent is Unasi Inc. (“Respondent”), Galerias 3, Zona 5, Panama, 5235, Panama.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <baynationalbank.com>, registered with Capitoldomains, Llc.
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 December 7, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 9, 2005.
On December 14, 2005, Capitoldomains, Llc confirmed by e-mail to the National Arbitration Forum that the <baynationalbank.com> domain name is registered with Capitoldomains, Llc and that Respondent is the current registrant of the name. Capitoldomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc 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 December 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 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@baynationalbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2006, 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 <baynationalbank.com> domain name is identical to Complainant’s BAY NATIONAL BANK mark.
2. Respondent does not have any rights or legitimate interests in the <baynationalbank.com> domain name.
3. Respondent registered and used the <baynationalbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bay National Corporation, provides banking and related services under the BAY NATIONAL BANK mark. Complainant has continuously operated under the mark since May 12, 2000. Complainant has spent significant amounts of time and money in advertising and marketing expenses relating to its banking services under the mark. Through continuous, extensive and prolonged use of the mark, Complainant has developed substantial goodwill, value, and recognition in the mark as a source identifier for Complainant’s banking services.
Respondent registered the <baynationalbank.com> domain name on October 1, 2005. Respondent is using the disputed domain name to redirect Internet users to a website that features links to various entities providing banking and financial services that compete with Complainant.
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.
Under Policy ¶ 4(a)(i), a complainant does not need to hold a registered trademark to establish rights in a mark. Complainant’s BAY NATIONAL BANK mark has acquired secondary meaning through Complainant’s continuous use of the mark in commerce since 2000 in connection with Complainant’s banking and related services. Thus, the Panel finds that Complainant has established common law rights in the BAY NATIONAL BANK mark. See SeekAm. Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant’s trademark or service mark be registered by a government authority or agency for such rights to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).
Respondent’s <baynationalbank.com> domain name is
identical to Complainant’s BAY NATIONAL BANK mark because the domain name
features Complainant’s mark in its entirety and merely adds the generic
top-level domain “.com” to the mark.
The Panel finds that such a minor addition to Complainant’s mark is
insufficient to negate the identical aspects of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept.
27, 2002) (finding it is a “well established principle that generic top-level
domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see
also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb.
Forum Dec. 6, 2003) (“It has been established that the addition of a generic
top-level domain is irrelevant when considering whether a domain name is
identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <baynationalbank.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or 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 respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <baynationalbank.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <baynationalbank.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).
Furthermore, Respondent is using the <baynationalbank.com>
domain name to redirect Internet users to a website featuring links to various
entities providing banking and financial services that compete with
Complainant. Respondent’s use of a
domain name that is identical to Complainant’s BAY NATIONAL BANK mark to
redirect Internet users interested in Complainant’s goods and services to a
website that offers similar goods and services in competition with Complainant
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 of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see
also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also Or. State
Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001)
(“Respondent's advertising of legal services and sale of law-related books
under Complainant's name is not a bona fide offering of goods and services
because Respondent is using a mark confusingly similar to the Complainant's to
sell competing goods.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <baynationalbank.com> domain name, which is identical to Complainant’s BAY NATIONAL BANK mark, to redirect Internet users to a website that features goods and services that compete with Complainant. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to 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 competes 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)).
The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s BAY NATIONAL BANK mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <baynationalbank.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the 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)); see also 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).
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 <baynationalbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf, Panelist
Dated: January 17, 2006
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