Guaranty Bank v. LaPorte Holdings c/o Admin
Claim Number: FA0601000635739
Complainant is Guaranty Bank (“Complainant”), represented by Sherri L. Eastley, of Wong Cabello, LLP, PO Box 685108, Austin, TX 78768-5108. Respondent is LaPorte Holdings c/o Admin (“Respondent”), 5482 Wilshire Blvd #1928, Los Angeles, CA 90036.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <gurantygroup.com> and <gaurantygroup.com>, registered with Nameking.com, Inc.
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 January 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 26, 2006.
On January 26, 2006, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <gurantygroup.com> and <gaurantygroup.com> domain names are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 January 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 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@gurantygroup.com and postmaster@gaurantygroup.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gurantygroup.com> and <gaurantygroup.com> domain names are confusingly similar to Complainant’s GUARANTY mark.
2. Respondent does not have any rights or legitimate interests in the <gurantygroup.com> and <gaurantygroup.com> domain names.
3. Respondent registered and used the <gurantygroup.com> and <gaurantygroup.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Guaranty Bank, owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the GUARANTY mark. Complainant first registered the mark with the USPTO on August 20, 1991 (Reg. No. 1,654,486). Complainant also holds valid trademark registrations for several other marks that include the GUARANTY mark.
Since at least 1921, Complainant has engaged in the business of banking and financial services in the United States under the name “Guaranty Bank.” Guaranty Bank, along with its related companies, Guaranty Business Credit, Guaranty Insurance Services, Inc., and related subsidiaries, form the “Guaranty Group.” Complainant has spent millions of dollars advertising and promoting its banking and financial services under the GUARANTY mark. In addition, Complainant is the registrant of the domain name <guarantygroup.com> and uses this domain name to operate a website related to its business.
Respondent registered the <gurantygroup.com> and <gaurantygroup.com> domain names on December 9, 2003. Respondent has used both of the disputed domain names to operate websites that provide both sponsored and unsponsored links to financial service businesses 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.
Complainant’s registration of its GUARANTY mark with the
USPTO sufficiently demonstrates Complainant’s rights in the mark under Policy ¶
4(a)(i). 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 has also established that Respondent’s <gurantygroup.com> and <gaurantygroup.com> domain names are confusingly similar to Complainant’s GUARANTY mark. Respondent’s <gurantygroup.com> domain name misspells Complainant’s mark by omitting the first letter “a,” and adds the common term “group” and the generic top-level domain name “.com.” Similarly, Respondent’s <gaurantygroup.com> domain name misspells Complainant’s mark by transposing letters and adds the common term “group” and the generic top-level domain name “.com.” In light of these slight similarities between the disputed domain names and Complainant’s mark, Respondent’s <gurantygroup.com> and <gaurantygroup.com> domain names are classic examples of typosquatting, whereby Respondent sought to take advantage of a typing error that Internet users may make when trying to reach Complainant’s <guarantygroup.com> domain name. Consequently, Respondent’s typosquatting demonstrates that the disputed domain names are confusingly similar to Complainant’s mark. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark); see also Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially prove that Respondent does not have rights or legitimate interests with respect the disputed domain names. Nevertheless, once Complainant establishes a prima facie case, the burden then shifts to Respondent to demonstrate that it does have rights or legitimate interests in the domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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”). The Panel finds that Complainant has presented a prima facie case and will evaluate whether the evidence on record establishes rights or legitimate interests for Respondent under Policy ¶ 4(c).
The evidence on record fails to show that Respondent is commonly known by either the <gurantygroup.com> or <gaurantygroup.com> domain name. According to the WHOIS information, Respondent conducts business as LaPorte Holdings. Consequently, Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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.”); see also 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).
Furthermore, the evidence indicates that Respondent is using the <gurantygroup.com> and <gaurantygroup.com> domain names for websites that provide links to businesses that compete with Complainant. Respondent’s use of slight misspellings of Complainant’s mark in the disputed domain names suggests that Respondent engaged in typosquatting, intentionally utilizing a misspelling of Complainant’s mark for the purpose of diverting Internet consumers searching for Complainant’s products and services to Respondent’s website. Such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor make a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); 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.
Pursuant to Policy ¶ 4(a)(iii), Complainant sufficiently establishes that Respondent’s domain names have been registered and are being used in bad faith. Respondent utilizes Complainant’s GUARANTY mark in the <gurantygroup.com> and <gaurantygroup.com> domain names to capitalize on typographical errors of Internet users seeking Complainant’s website. Thus, Respondent’s use of Complainant’s mark in an effort to engage in typosquatting constitutes registration and use of the domain names in bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Additionally, Respondent’s use of confusingly similar
versions and misspellings of Complainant’s GUARANTY mark in the <gurantygroup.com>
and <gaurantygroup.com> domain names to operate websites that
offer links to competitors of Complainant illustrates Respondent’s intent to
disrupt Complainant’s business. The
Panel finds that such use is evidence of bad faith registration and use under
Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites).
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 <gurantygroup.com> and <gaurantygroup.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 10, 2006
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