Sparbank Vest A/S v. Alexander Petrov c/o Petrov Bankvest
Claim Number: FA0606000741638
Complainant is Sparbank Vest A/S (“Complainant”), represented by Edward O'Hara, of Jupiter Nordic, Hovedgaden 43.1, Horsholm 2970, Denmark. Respondent is Alexander Petrov c/o Petrov Bankvest (“Respondent”), 12 Sovetskaya St., Nizhny Novgorod 603005, Russia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sparbankvest.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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 5, 2006.
On June 29, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <sparbankvest.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 July 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 3, 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@sparbankvest.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 2006 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.
On August 21, 2006, the Panel received a late Response, which was not in compliance with the Rules. The Panel notified the National Arbitration Forum on August 24, 2006 that it would not consider the deficient Response.
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 <sparbankvest.com> domain name is confusingly similar to Complainant’s SPARBANK VEST A/S mark.
2. Respondent does not have any rights or legitimate interests in the <sparbankvest.com> domain name.
3. Respondent registered and used the <sparbankvest.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sparbank Vest A/S is a regulated bank under the auspices of the “finanstilsyn” in Denmark, offering retail financial services in Denmark since 1857. Complainant is registered with the Danish Commerce & Companies agency with company registration number CVR 12523580 and is listed on the Copenhagen Stock Exchange as a financial institution with the identifier Isinfondskode DK0010305820.
Respondent registered the <sparbankvest.com> domain name on September 8, 2004. Respondent is using the disputed domain name to operate a website featuring adult-orientated content and links to other adult-orientated websites.
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 has continuously and extensively used the SPARBANK VEST A/S mark since 1857 in connection with financial services in Denmark. Under Policy ¶ 4(a)(i), Complainant is not required to hold a trademark registration to establish rights in the SPARBANK VEST A/S mark. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
For the purposes of Policy ¶ 4(a)(i), Complainant has established common law rights in the SPARBANK VEST A/S mark through continuous and extensive use of the mark in connection with its services since 1857. Accordingly, the Panel finds that Complainant has proven substantial goodwill and recognition of the mark in connection with its goods and services to establish secondary meaning and common law rights in the SPARBANK VEST A/S mark for the purposes of Policy ¶ 4(a)(i). See Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982); 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 <sparbankvest.com> domain name is confusingly similar to Complainant’s SPARBANK VEST A/S mark pursuant to Policy ¶ 4(a)(i), because it contains the dominant features of Complainant’s mark and merely omits the “A/S.” Panels have concluded that the omission of a term in a domain name does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s SPARBANK VEST A/S mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <sparbankvest.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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).”); see also 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”).
Respondent’s failure to answer the complaint raises a presumption that Respondent has no rights or legitimate interests in the <sparbankvest.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence in the record to suggest that Respondent has ever been commonly known by the disputed domain name. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in a domain name when the respondent was not known by the mark. 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.”). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Moreover, Respondent is using the <sparbankvest.com> domain name, which includes Complainant’s SPARBANK VEST A/S mark, in order to operate a website featuring adult-orientated content and links to other adult-orientated websites. In Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel found that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a bona fide offering of goods or services or a noncommercial or fair use. See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”). Consequently, the Panel finds that the Respondent’s use of the disputed domain name to open a website featuring adult-orientated content with links to other adult-orientated websites does not establish rights or legitimate interests in the <sparbankvest.com> domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to display
adult-orientated content as well as to display links to other adult-orientated
websites. Based on the uncontested
evidence presented by Complainant, the Panel infers that Respondent receives
click-through fees for diverting Internet users to third-party websites. See Qwest
Comm’ns Int’l Inc. v. Ling Shun Shing, FA
187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to
commercially benefit from the misleading <qwestwirless.com> domain name
by linking the domain name to adult oriented websites, gambling websites, and
websites in competition with Complainant.
Respondent’s attempt to commercially benefit from the misleading domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also 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.’”). Therefore, the Panel infers that
Respondent’s use of the disputed domain name provides evidence of bad faith registration
and use under Policy ¶ 4(b)(iv).
The Panel also finds that
Respondent’s use of Complainant’s SPARBANK VEST A/S mark in the disputed website creates a likelihood of
confusion. Use of Complainant’s
trademark is likely to lead Internet users to associate the disputed domain
name with the Complainant. The Panel
finds that this likelihood of confusion provides further evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
See 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 Anne of Green Gable Licensing Auth., Inc. v. Internetworks,
AF-0109 (eResolution June 12, 2000) (finding that the respondent violated
Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s
well-known mark to attract users to the respondent's website).
Furthermore, panels have found that use of domain names to display adult-orientated material and links to other adult-oriented sites constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). In Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003), the panel found that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith. See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name).
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 <sparbankvest.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: August 23, 2006
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