Ohio Savings Bank d/b/a AmTrust v. Manfred
Kempa
Claim Number: FA0512000608684
PARTIES
Complainant is Ohio Savings Bank d/b/a AmTrust (“Complainant”), represented by Peter J. Riebling, of Katten Muchin Rosenman, LLP, 1025 Thomas Jefferson Street, NW, East Lobby, Suite 700, Washington, DC 20007-5201. Respondent is Manfred Kempa (“Respondent”), 2306 Briana Dr., Brandon, FL 33511.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amtrustdirect.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 12, 2005; the National Arbitration Forum received a
hard copy of the Complaint on December 13, 2005.
On December 12, 2005, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <amtrustdirect.com>
domain name is registered with Go Daddy Software, Inc. and that the 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 December 15, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 4, 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@amtrustdirect.com by e-mail.
A timely Response was received and determined to be complete on January
3, 2006.
On January 10, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant contends that it is the seventeenth largest
thrift institution in the U.S. with fifty-six branches and assets of $15
billion. Complainant owns several trademark registrations and/or applications
for the AMTRUST mark, including the registered U.S. trademark No. 1,462,208,
AMTRUST. Complainant uses the AMTRUST trademark in connection with its services
and in commerce throughout the U.S., including directly or physically in eighteen
states. Since 1985 Complainant’s trademark has enjoyed a powerful and respected
reputation. In fact, after over twenty years of use, AMTRUST is a popular,
well-known and trusted brand known by consumers and competitors alike.
Complainant’s trademark is used in commerce in connection with a panoply of
services, inter alia: retail banking services, mortgage banking services,
commercial banking services, telephone and internet banking services,
automobile financing, insurance agency, securities brokerage, residential land
acquisition, development and construction lending, private equity investment,
and financial services.
In connection with its services described above, Complainant has
registered at least twenty-seven domain names which contain the AMTRUST mark.
In an effort to promote these services provided under Complainant’s trademark,
Complainant has engaged in extensive use, marketing, and commercial promotion
of its trademark, not only in connection with the registered and applied
services, but also in advertising and media campaigns. Complainant contends it
has spent approximately $1.8 million in advertising and marketing the AMTRUST
trademarks during the past year and has spent equally significant sums in prior
years. Furthermore, Complainant has a significant presence on the Internet,
especially through its official Internet web site which is located at
<amtrust.com>. Through its ongoing, extensive and costly national
activities and use in commerce, Complainant has created enormous monetary value,
reputation, notoriety and goodwill in the AMTRUST Trademarks. Complainant’s
trademarks have become, through extensive use, famous and well-known
trademarks. Therefore, Complainant’s rights in its mark are indisputable.
Complainant contends that the domain name in dispute contains elements which
are identical or confusingly similar to its AMTRUST trademarks. In this regard,
Complainant contends that the domain name in dispute contains Complainant’s
entire registered trademark, AMTRUST. Complainant contends that the domain name
at issue has the identical commercial meaning and source identification to the
public as Complainant’s trademarks. According to Complainant, members of the
public who find <amtrustdirect.com> on the Internet, on search
engines, or elsewhere, are likely to believe falsely and mistakenly that the
source of origin of the domain name at issue and associated web site is
Complainant, or one of its affiliates, or that the domain name at issue is
sponsored by, endorsed by, approved by, licensed by, connected, associated, or
affiliated with Complainant. Complainant takes the position that these facts
support a finding that the disputed domain name is confusingly similar to
Complainant’s registered mark.
In addition, Complainant contends that Respondent has no rights or
legitimate interests in the disputed domain name. Respondent is not related to
Complainant and has not received any license, permission, or consent to use or
own the AMTRUST trademark. According to Complainant, none of the circumstances
described in the ICANN Policy ¶ 4(c)(i)-(iii) apply to Respondent’s use of the
disputed domain name. Respondent has not used the disputed domain name in
connection with the bona fide offering of goods and services.
Finally, Complainant contends that Respondent has registered and used
the domain name in bad faith. The registration and use of the domain name in
dispute was deliberately designed and calculated to trade on and misappropriate
the enormous monetary value, reputation, notoriety, fame and goodwill in the
AMTRUST Trademarks. Registration of the domain name was made to unjustly enrich
Respondent by enabling it to obtain unfairly the benefits and advantages of
Complainant’s own use of the AMTRUST Trademarks. A domain name consisting of
nothing more than Complainant’s entire trademark and trade name is, by itself,
a proper inference of evidence of bad faith. Respondent’s registration was done
with the blatant and deliberate intent to trade on and procure the goodwill,
fame, renown, reputation, and worldwide notoriety of Complainant. Based on the
foregoing, Complainant contends that Respondent registered, acquired and uses
the domain name at issue primarily for the purpose of selling competing
funding, financial and/or lending services under the AMTRUST Trademarks, for
confusing the public, and/or for the purpose of selling, renting, or otherwise
transferring the domain name at issue to Complainant. Respondent has registered
and uses the domain name at issue primarily for the purpose of disrupting Complainant’s
business.
Respondent contends it has spent a significant amount of time and money in developing and maintaining the goodwill associated with its domain names and the associated business. Losing these domain names will cause severe damage to Respondent’s business. While Respondent is based in Hillsborough County, Florida, Complainant has no presence in this county. Respondent asserts it owns this and other similar domain names and for several years provides mortgage loan origination services on behalf of Amtrust Funding Services, Inc., a Florida corporation since August 2002. Respondent contends that a search of the official public records at the State of Florida website, Florida Department of State, Division of Corporations, revealed that Complainant is known in Florida only as “AMTRUST BANK” or “AMTRUST FINANCIAL SERVICES, INC” but not as “AMTRUST” or “AMTRUST FUNDING SERVICES, INC.” or “AMTRUST.US” or “AMTRUSTDIRECT.COM.” There are many other businesses licensed and/or established in Florida or on the Internet that have “Amtrust” as part of their name. Many other domain names contain the term “Amtrust” like <amtrust.org> or <amtrust.net> which are not owned by Complainant. Respondent’s websites <amtrust.us> and <amtrustdirect.com> do not contain the full term “AMTRUST BANK” or “AMTRUST FINANCIAL SERVICES, INC.”
Furthermore Respondent contends it has for years
been commonly known as AMTRUST.US and AMTRUSTDIRECT.COM, providing bona fide
mortgage loan origination service on behalf of Amtrust Funding Services, Inc.
FINDINGS
The Panel finds that:
1.
the <amtrusdirect.com>
Domain Name is confusingly similar to Complainant’s AMTRUST registered
trademark;
2.
Respondent has
not established any right or legitimate interest in the Domain name and
3.
Respondent has
registered and is using the domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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
AMTRUST mark by registering it with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,462,208 issued October 20, 1987). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); Innomed Tech., Inc. v. DRP
Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of a NASAL-AIRE markwith the USPTO
establishes Complainant’s rights in the mark.”).
The <amtrustdirect.com> domain name is confusingly similar to
Complainant’s AMTRUST mark because the domain name incorporates Complainant’s
mark in its entirety and adds the term “direct” and the generic top-level
domain “.com.” The Panel is of the view that such minor additions to
Complainant’s registered mark are insufficient to negate the confusingly
similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See 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); Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“(n)either the addition of an ordinary descriptive word … nor the suffix “.com”
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus the Policy § 4(a)(i) is satisfied); 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”).
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show, by providing concrete evidence, that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corp. v. Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 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 is not authorized or licensed to register or use a domain name that incorporates Complainant’s mark. Moreover, the Panel finds that Respondent is not commonly known by the <amtrustdirect.com> domain name. Therefore the Panel concludes that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001); Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a Respondent was not commonly known by the mark and never applied for a license or permission from the Complainant to use the trademarked name); Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the Respondent is not a licensee of the Complainant; (2) the Complainant’s prior rights in the mark precede the Respondent’s registration; and (3) the Respondent is not commonly known by the domain name in question).
Furthermore the Panel is of the view that Respondent’s use of the Domain Name that is confusingly similar to Complainant’s AMTRUST mark to redirect Internet users interested in Complainant’s products and services to Respondent’s website 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the Respondent’s diversionary use of the Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
The Panel finds that Respondent is using the <amtrustdirect.com> domain name for Respondent’s commercial gain by diverting Internet users interested in Complainant’s AMTRUST products and services to Respondent’s website featuring financial services that compete with Complainant. Furthermore the Panel is of the view that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to the Respondent’s site).
Furthermore, the Panel finds that Respondent, a provider of mortgage loan origination services, registered the confusingly similar domain name in order to promote services that compete with Complainant. The Panel finds, that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use under 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 competed 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)); see also Gorstew Ltd. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from the Respondent travel agency to the Complainants, who operated Sandals hotels and resorts).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amtrustdirect.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: January 24, 2006
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