Coutts & Co. v. Hyeran Kim
Claim Number: FA0604000672078
Complainant is Coutts & Co. (“Complainant”), represented by James A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P., Post Office Box 389, Raleigh, NC 27602. Respondent is Hyeran Kim (“Respondent”), 2306 Hwamyungdong Bukgu, Busan, KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <couttsprivatebank.com>,
registered with Abdomainations.ca.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2006.
On April 6, 2006, Abdomainations.ca confirmed by e-mail to the National Arbitration Forum that the <couttsprivatebank.com> domain name is registered with Abdomainations.ca and that Respondent is the current registrant of the name. Abdomainations.ca has verified that Respondent is bound by the Abdomainations.ca 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 April 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 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@couttsprivatebank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <couttsprivatebank.com> domain name is confusingly similar to Complainant’s COUTTS mark.
2. Respondent does not have any rights or legitimate interests in the <couttsprivatebank.com> domain name.
3. Respondent registered and used the <couttsprivatebank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Coutts & Co., is the international banking arm of The Royal Bank of Scotland Group. Complainant is based in the United Kingdom and provides personal and business banking services to more than 98,000 clients worldwide. Complainant also operates websites at the <coutts.com> (registered on January 28, 1995) and <couttsbanking.com> (registered on August 18, 2003) domain names.
Complainant owns numerous trademark registrations for the COUTTS mark worldwide, including several trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,096,845 issued September 16, 1997; Reg. No. 2,098,866 issued September 23, 1997) and also with the United Kingdom Patent Office (“UKPO”) (Reg. No. 1,300,775 issued November 15, 1989).
Respondent registered the disputed domain name on November 27, 2005. The <couttsprivatebank.com> domain name resolves to a web directory featuring links to websites offering 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.
Because Complainant has registered the COUTTS mark with the UKPO, Complainant has established 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <couttsprivatebank.com> domain name is
confusingly similar to Complainant’s COUTTS mark because it contains
Complainant’s entire mark and merely adds the common terms “private” and
“bank.” In Arthur Guinness Son &
Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), the
panel found that the respondent’s domain names, all of which contained the
complainant’s entire GUINNESS mark but merely added common terms to the end,
such as “irish stout,” “guide,” “tours” and “jazz festival,” were confusingly
similar to the mark because each featured the complainant’s GUINNESS mark
“prominently.” Therefore, Respondent
has not sufficiently distinguished the <couttsprivatebank.com>
domain name from Complainant’s COUTTS mark by simply adding two common terms to
the end. See PG&E Corp. v.
Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does
not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and
‘2000’ following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by
Complainant”); see also Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain names. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
domain names. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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 has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); 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’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the disputed
domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also 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). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Because the WHOIS information lists Respondent as “Hyeran
Kim” and there is no other evidence in the record suggesting that Respondent is
commonly known by the disputed domain names, the Panel finds that Respondent
has not established rights or legitimate interests in the disputed domain names
under Policy ¶ 4(c)(ii). See Great S.
Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that the respondent
was not commonly known by the domain name <greatsouthernwood.com> where
the respondent linked the domain name to <bestoftheweb.com>); see also
Hartford Fire Ins. Co. v.
Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that
the respondent has no rights or legitimate interests in domain names because it
is not commonly known by the complainant’s marks and the respondent has not
used the domain names in connection with a bona fide offering of goods
and services or for a legitimate noncommercial or fair use).
Furthermore, Respondent’s <couttsprivatebank.com> domain name, which is confusingly similar to Complainant’s COUTTS mark, resolves to a web page containing links to Complainant’s competitors in the financial services industry. In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel found that the respondent’s use of a domain name to divert Internet users to a website selling goods and services similar to the services the complainant offered was not 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). Respondent is diverting Internet users seeking Complainant’s financial services to a web page displaying links to the websites of Complainant’s competitors. Respondent likely receives click-through fees for diverting consumers to these websites. Therefore, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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 is using the disputed domain name to manage a web page displaying links to the websites of Complainant’s competitors. The Panel infers that Respondent receives click-through fees for each consumer it diverts to these websites. As a result, Respondent is redirecting Internet users seeking Complainant’s financial services under the COUTTS mark to competing websites for its own commercial gain. Such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s COUTTS mark in order to profit from the goodwill associated with the mark. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also 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)).
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 <couttsprivatebank.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 22, 2006
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