First Mariner Bank v. Richard Jones
Claim Number: FA0604000692491
Complainant is First Mariner Bank (“Complainant”), represented by David R. Hale, of Astrachan Gunst Thomas, P.C., 217 E. Redwood Street, Suite 2100, Baltimore, MD 21201. Respondent is Richard Jones (“Respondent”), Residence Emeraude, Apt 160 Building D5, Rue Insel, Toulouse, France 31 020.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <1stmariner.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2006.
On April 27, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <1stmariner.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 23, 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@1stmariner.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 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a regional bank headquartered in Baltimore, Maryland.
Complainant was founded in 1995 and has continuously done business under its 1ST MARINER mark since that time.
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO) for the 1ST MARINER mark (Reg. No. 3,082,675 issued April 18, 2006), with a first use in commerce date of May 19, 1995.
The 1ST MARINER mark has acquired sufficient secondary meaning to establish common law rights in Complainant based on its substantial use of the mark in commerce since 1995.
Respondent registered the <1stmariner.com> domain name on June 19, 2001.
Respondent is not authorized or licensed to use Complainant’s mark in a domain name.
Respondent is using the disputed domain name to redirect Internet users to its commercial website that features links to Complainant’s competitors.
Respondent’s <1stmariner.com> domain name is identical to Complainant’s 1ST MARINER mark.
Respondent does not have any rights or legitimate interests in the <1stmariner.com> domain name.
Respondent registered and uses the <1stmariner.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts that the 1ST MARINER mark has acquired
sufficient secondary meaning to establish common law rights to it based on
Complainant’s substantial use of the mark in commerce since 1995, over ten
years before the registration of the disputed domain name. The Panel concludes Complainant’s 1ST
MARINER mark has been sufficiently and substantially used in commerce since
1995. Thus Complainant has proven
adequate secondary meaning and common law rights in the mark. See
SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a
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
[KEPPEL BANK] in connection with its banking business, it has acquired rights
under the common law.”
Respondent’s <1stmariner.com>
is identical to Complainant’s 1ST MARINER mark because Respondent’s domain name incorporates
Complainant’s entire mark and merely adds the generic top-level domain
“.com.” The Panel finds that such an
addition to Complainant’s mark does not negate the identical aspects of
Respondent’s domain name. Thus, the
Panel finds that the disputed domain name is identical to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see
also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165
(WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is
identical to a complainant’s ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference").
The Panel therefore concludes that Policy ¶ 4(a)(i) is satisfied.
Under Policy ¶ 4(a)(ii), the burden is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. However, once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (concluding that once a complainant asserts that a 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”).
Apropos of this question, Complainant asserts, without contradiction from Respondent, that Respondent is neither commonly known by the <1stmariner.com> domain name nor authorized to use a domain name featuring Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed 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 a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where the respondent is not known by the mark).
Moreover, it is undisputed that Respondent is using the <1stmariner.com>
domain name to direct Internet users to Respondent’s commercial website
featuring links to third-party websites offering products and services
competitive with those of Complainant.
Respondent’s use of a domain name that is identical to Complainant’s 1ST
MARINER mark to direct Internet users interested in Complainant’s products and
services to a website that offers products and services in competition with
those of 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a
respondent was not using disputed domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services competing with those offered by a complainant under its marks); 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.
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel infers that Respondent receives click-through fees for diverting Internet users to a website offering links to competing websites. The fact that Respondent’s domain name incorporates Complainant’s mark in its entirety may create confusion as to Complainant’s affiliation with the disputed domain name and resulting website. Thus, Respondent’s use of the <1stmariner.com> domain name amounts to 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 a respondent profits from its diversionary use of a 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 a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain).
Moreover,
Respondent’s failure to respond to the Complaint herein supports a finding of
bad faith on its part under the Policy.
See, for example, MC Enterprises v. Mark Segal (Namegiant.com), D2005-1270 (WIPO Jan. 27, 2006):
Although a respondent is not obliged to
participate in a domain name dispute, if it were to fail to do so, it would be
vulnerable to the inferences that flow naturally from a complainant’s not
unreasonable assertions of fact.
The Panel thus finds that Policy ¶ 4(a)(iii) is satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <1stmariner.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 12, 2006
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