IndyMac Bank F.S.B. v. Lee Gil-young
Claim Number: FA0602000637925
Complainant is IndyMac Bank, F.S.B. (“Complainant”), represented by B. Brett Heavner, of Finnegan Henderson Farabow Garrett & Dunner, L.L.P., 901 New York Avenue NW, Washington, DC 20001. Respondent is Lee Gil-young (“Respondent”), 1309 Hiberas Bld, 908-29, Mok 5-Dong, Yangcheon-gu, Seoul 158055, KR.
The domain name at issue is <indimac.com>, registered with Cydentity, Inc. d/b/a Cypack.com.
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 February 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 2, 2006.
On February 7, 2006, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the National Arbitration Forum that the <indimac.com> domain name is registered with Cydentity, Inc. d/b/a Cypack.com and that Respondent is the current registrant of the name. Cydentity, Inc. d/b/a Cypack.com has verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.com 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 February 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 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@indimac.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2006, 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 <indimac.com> domain name is confusingly similar to Complainant’s INDYMAC mark.
2. Respondent does not have any rights or legitimate interests in the <indimac.com> domain name.
3. Respondent registered and used the <indimac.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, IndyMac Bank, F.S.B., is a mortgage lender located in the United States. Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the INDYMAC mark. Complainant first registered the INDYMAC mark with the USPTO on December 25, 2001 (Reg. No. 2,522,907).
In addition to its core mortgage products and services, Complainant offers a wide variety of Internet banking services through its website located at the <indymac.com> domain name. Complainant registered the <indymac.com> domain name on March 25, 1996, and has used that domain name for Complainant’s website to the present date.
Respondent registered the <indimac.com> domain name on January 16, 2005. Respondent has used the disputed domain name to administer a website that earns revenue through pay-per-click fees. Respondent’s website offers links to Complainant’s website, links to third party websites advertising Complainant’s services, and links to mortgage and finance related 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 INDYMAC mark with the
USPTO sufficiently establishes Complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i). 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.”).
Complainant has also demonstrated that Respondent’s <indimac.com> domain name is confusingly similar to Complainant’s INDYMAC mark. Respondent’s domain name consists of a misspelling of Complainant’s mark, substituting the letter “y” in the mark with the letter “i,” and the addition of the generic top-level domain “.com.” Respondent’s misspelling of Complainant’s mark and the addition of a generic top-level domain name do not avoid the creation of confusing similarity between the disputed domain name and Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
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 to the disputed domain name. Nevertheless, once Complainant establishes a prima facie case, the burden accordingly shifts to Respondent to demonstrate that it does have rights or legitimate interests in the domain name. See 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”); see also 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.”). The Panel finds that Complainant has presented a prima facie case and will evaluate whether the evidence on record demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Based on the evidence on record, Respondent is not commonly
known by the <indimac.com> domain name. The WHOIS information does not indicate that Respondent is
currently, or has ever been commonly known by the disputed domain name. Consequently, Respondent does not
demonstrate rights or legitimate interests in the disputed domain name under
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 RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
Additionally, the evidence demonstrates that Respondent is
using the disputed domain name to administer a website featuring links to
businesses that compete with Complainant, presumably for the purpose of
generating click-through-fees for Respondent.
Such use of a confusingly similar version of Complainant’s mark by
Respondent does not constitute either a bona fide offering of goods or
services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of
the complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that the respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to the complainant
and presumably with the purpose of earning a commission or pay-per-click
referral fee did not evidence rights or legitimate interests in the domain
name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent utilizes a confusingly similar version of
Complainant’s INDYMAC mark in the <indimac.com> domain name to
capitalize on typographical errors of Internet users seeking Complainant’s
website. Consequently, Respondent’s use
of a typosquatted version of Complainant’s mark constitutes registration and
use of the domain name in bad faith under Policy ¶ 4(a)(iii). See Zone
Labs, Inc. v. Zuccarini, FA 190613
(Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of
[the <zonelarm.com> domain name] that capitalizes on the typographical
error of an Internet user is considered typosquatting. Typosquatting, itself is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see
also Dermalogica, Inc. v. Domains to Develop,
FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding
that the <dermatalogica.com> domain name was a “simple misspelling” of
the complainant's DERMALOGICA mark which indicated typosquatting
and bad faith pursuant to Policy 4 ¶ (a)(iii)).
Furthermore, Respondent’s domain name makes use of a common
misspelling of Complainant’s mark in order to divert Internet users seeking
Complainant’s website, for Respondent’s financial gain. Consequently, such registration and use of
the disputed domain name by Respondent illustrates bad faith pursuant to Policy
¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); 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 <indimac.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 22, 2006
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