IndyMac Bank F.S.B. v. Tsuyama Norihiko d/b/a Indyimak Trading Co. Ltd.
Claim Number: FA0607000755062
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, USA. Respondent is Tsuyama Norihiko d/b/a Indyimak Trading Co. Ltd (“Respondent”), Minami-1-Jou-Nishi Tyuou-Ku, Sapporo-shi 064-0801 Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indymak.com>, registered with Vivid Domains, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 20, 2006.
On July 21, 2006, Vivid Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <indymak.com> domain name is registered with Vivid Domains, Inc and that Respondent is the current registrant of the name. Vivid Domains, Inc has verified that Respondent is bound by the Vivid Domains, 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 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 14, 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@indymak.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 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <indymak.com> domain name is confusingly similar to Complainant’s INDYMAC mark.
2. Respondent does not have any rights or legitimate interests in the <indymak.com> domain name.
3. Respondent registered and used the <indymak.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, IndyMac Bank F.S.B., is one of the largest mortgage lenders and thrift institutions in the United States. Complainant earned $1.1 billion in revenue from its financial operations in 2005, up from $752 million in 2004. Complainant is a wholly-owned subsidiary of IndyMac Bancorp, a publicly-held corporation in the United States. Complainant maintains websites at the <indymac.com> (registered March 25, 1996) and <indymacbank.com> domain names.
Complainant owns several trademark registrations from the INDYMAC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,357,857 issued June 13, 2000; Reg. No. 2,522,907 issued December 25, 2001; Reg. No. 2,212,512 issued December 22, 1998).
Respondent registered the <indymak.com> domain name on February 18, 2006. Respondent is using the disputed domain name to operate a commercial search engine page that displays links to other financial services websites. Complainant is the previous owner of the <indymak.com> domain name, which it acquired through a previous UDRP decision. See IndyMac Bank, F.S.B. v. Carpenter, FA 474818 (Nat. Arb. Forum Nov. 24, 2005) (transferring the <indymak.com> and <indimacloan.com> domain names to Complainant). Complainant claims its registration of the <indymak.com> domain name was “inadvertently deleted for nonpayment.”
Respondent’s e-mail address matches the e-mail address of respondents in previous UDRP decisions in which Complainant successfully sought the transfer of domain names containing variations of its INDYMAC marks, including the <indymakbank.com> domain name. See IndyMac Bank F.S.B. v. Yi, FA 603024 (Nat. Arb. Forum Jan. 11, 2006) (transferring the <indymakbank.com> domain name to Complainant); see also Indy Mac Bank v. Xiao, FA 603023 (Nat. Arb. Forum Jan. 10, 2006) (transferring the <indimacbank.com> domain name to 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 has established rights in the INDYMAC mark through registration of the mark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Because the <indymak.com> domain name is a mere
misspelling of Complainant’s INDYMAC mark and has a similar pronunciation,
Respondent’s domain name is confusingly similar to the mark pursuant to Policy
¶ 4(a)(i). In Belkin Components v.
Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001), the panel found the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the respondent merely substituted the letter “i” in the
complainant’s mark for a letter “e.”
Likewise, the mere substitution of one letter in Respondent’s domain
name does not sufficiently distinguish the <indymak.com> domain
name from the INDYMAC mark. See
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); see also Pfizer Inc. v. Phizer's
Antiques, D2002-0410 (WIPO July 3, 2002) (finding the
<phizer.com> domain name phonetically equivalent and
confusingly similar to the PFIZER mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent lacks rights and
legitimate interests in the <indymak.com>
domain name. Complainant must
first make a prima facie case in support of its allegations, and then
the burden 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 <indymak.com> domain name. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, 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).
Respondent has registered the domain name under the name “Tsuyama
Norihiko d/b/a/ Indiyimak Trading Co. Ltd,” and despite the inclusion of “Indiyimak”
in Respondent’s trade name, there is no other evidence in the record suggesting
that Respondent is commonly known by the <indymak.com>
domain name. As a result,
Respondent has not established rights or legitimate interests in the <indymak.com> domain name pursuant to
Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Systems, LLC v.
Snowden, FA 715089 (Nat. Arb.
Forum Jul. 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat.
Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its
name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate
that Respondent is, in fact, commonly known by the disputed domain name
<citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Furthermore, Respondent’s <indymak.com> domain
name resolves to a commercial web directory displaying links to other financial
services websites that compete with Complainant. In Citigroup Inc. v. Horoshiy, Inc., FA 290633
(Nat. Arb. Forum Aug. 11, 2004), the panel found that the respondent’s use of
domain names that were confusingly similar to the complainant’s CITIBANK marks
to redirect Internet users seeking the complainant’s products to a website with
links offering products that competed with the complainant did not represent 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). In this case, then, Respondent’s use of the
<indymak.com> domain name to redirect Internet users to competing
websites, presumably for profit by earning “click-through fees” for each
consumer it redirects to other financial services websites, is not a bona
fide offering of goods or services within Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use within Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006)
(finding that the respondent’s use of domain names confusingly similar to the
complainant’s WAL-MART mark to divert Internet users seeking the complainant’s
goods and services to websites competing with the complainant did not
constitute 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)).
The Panel also finds that Respondent’s registration of the
<indymak.com> domain name after Complainant failed to renew the
disputed domain name registration suggests that Respondent has no rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See RH-Interactive
Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003)
(“Complainant’s prior registration of the domain name, coupled with
Respondent’s failure to respond to this dispute, is evidence that Respondent
has no rights or legitimate interests in the domain name pursuant to Policy
4(a)(ii).”); see also Zappos.com, Inc. v. Turvill Consultants, FA 404546
(Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously
held the <wwwzappos.com> domain name registration and has mistakenly
allowed it to expire is further evidence that Respondent lacks rights and
legitimate interests in the domain name under Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <indymak.com> domain
name, which is confusingly similar to Complainant’s INDYMAC mark, to redirect
Internet users seeking Complainant’s financial services to a search engine
displaying links to Complainant’s direct competitors and to other content. In Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003), the respondent registered the
<mailonsunday.com> domain name, which included the complainant’s THE MAIL
ON SUNDAY mark, and was using the domain name to provide links to competing
newspapers and to third-party websites.
The panel held that such use provided evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv), because Respondent “presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’” In this case,
Respondent also likely receives referral fees for each consumer it
diverts to other websites and is, therefore, taking advantage of the confusing
similarity between the disputed domain name and Complainant’s mark. Such use of the disputed domain name to
profit off of the goodwill associated with Complainant’s mark is indicative of
bad faith registration and use under Policy ¶ 4(b)(iv). See 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)).
Furthermore, Respondent has registered and used the disputed domain name for the sole purpose of disrupting the business of Complainant by providing links on its website to Complainant’s competitors in the financial services industry. Therefore, Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Additionally, the
Panel finds that Respondent’s registration and use of the a domain name
Complainant previously held but failed to renew constitutes bad faith under
Policy ¶ 4(a)(iii). See BAA plc v. Spektrum Media Inc.,
D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took
advantage of the complainant’s failure to renew a domain name); see also RH-Interactive
Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003)
(holding that the complainant’s prior registration and use of the disputed
domain name and the respondent’s registration of the domain name immediately
after the complainant failed to timely renew its registration “gives rise to an
inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii)”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indymak.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 30, 2006
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