MB Financial Bank, N.A. v. Holger Bruggemann
Claim Number: FA0610000819465
Complainant is MB
Financial Bank, N.A. (“Complainant”), represented by Aaron D. Spira, 55 East Monroe St., Suite 3700, Chicago, IL 60603. Respondent is Holger Bruggemann
(“Respondent”), Manolo Tavares Justo 35, Puerto Plata, Puerto Plata 76093
Dominican Republic.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mb-bank.com>, registered with Go Daddy Software, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2006.
On October 16, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <mb-bank.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 October 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 7, 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@mb-bank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <mb-bank.com> domain name is confusingly similar to Complainant’s MB mark.
2. Respondent does not have any rights or legitimate interests in the <mb-bank.com> domain name.
3. Respondent registered and used the <mb-bank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MB Financial Bank, N.A., holds a registration with the United States Patent and trademark Office (“USPTO”) for the MB mark (Reg. No. 2,393,663 issued October 10, 2000). Complainant utilizes the MB mark in connection with its business and personal financial services. Complainant includes the MB mark in numerous domain name registrations, including <mbfinancial.com> and <mbfinancialbank.com> which resolve to Complainant’s primary website at the <mbbank.com> domain name.
Respondent registered the <mb-bank.com> domain name on August 8, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website filled with links to third-party websites. Many of the third-party websites are direct competitors of Complainant, including “Regions Bank” and “U.S. Bank Online.”
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 holds a USPTO registration for the MB mark. The Panel finds that Complaiant’s
registration establishes Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i). See 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.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive.").
Respondent’s <mb-bank.com> domain name is
confusingly similar to Complainant’s MB mark.
The disputed domain name includes Complainant’s mark in its entirety and
adds a hyphen and the descriptive term bank.
The additions of simple punctuation, such as a hyphen, and the generic
top-level domain “.com” do not distinguish the disputed domain name from
Complainant’s mark. Further, the
descriptive term “bank” is clearly related to Complainant’s business in
financial services. The Panel finds
that the disptued domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks.”); see also
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (finding that hyphens and top-level domains are irrelevant for purposes
of the Policy); see also Brown & Bigelow, Inc. v. Rodela, FA 96466
(Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain
name is confusingly similar to the complainant’s HOYLE mark, and that the
addition of “casino,” a generic word describing the type of business in which
the complainant is engaged, does not take the disputed domain name out of the
realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the <mb-bank.com> domain name. Complainant’s assertion constitutes a prima
facie case for purposes of the Policy shifting the buden to Respondent to
demonstrate that it does have rights or legitimate interests pursuant to Policy
¶ 4(a)(ii). The Panel views
Respondent’s failure to submit a Response as evidence that Respondent lacks
rights or legitimate iterests.
Nonetheless, the Panel will evaluate the available evidence to determine
whether Respondent has rights or legitimate interests pursuant to Policy ¶
4(c). 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent is using the disptued domain name to redirect
Internet users to its website featuring links to commercial third-party
websites offering financial services in direct competition with
Complainant. Presumably, Respondent is
receiving pay-per-click referral fees whenever Internet users click on the
links hosted on Respondent’s website.
The Panel finds that such use is neither a bona fide offering of
goods or services as contemplated by Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use 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 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale,
FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the
<24hrsfitness.com>, <24-hourfitness.com> and
<24hoursfitness.com> domain names to redirect Internet users to a website
featuring advertisements and links to Complainant’s competitors could not be
considered a bona fide offering of goods or services or a legitimate
noncommercial or fair use).
There is no available evidence that Respondent is commonly
known by the <mb-bank.com> domain name. Respondent’s WHOIS information identifies Respondent as “Holger
Bruggemann,” a name with no obvious relationship to the disptued domain
name. The Panel finds that Respondent
is not commonly known by the disptued domain name as contemplated by 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 Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <mb-bank.com> domain name is
confusingly similar to Complainant’s MB mark.
This confusing simularity may attract Internet users to Respondent’s
website. Internet users at Respondent’s
website may find themselves mistakenly believing that Complainant is affiliated
with or sponsoring Respondent’s website.
Respondent is capitalizing on this confusion as it is presumably
collecting pay-per-click referral fees from the linked websites hosted on its
website. The Panel finds that such use
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding
bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved
to a website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes); see also TM Acquisition Corp. v.
Warren, FA 204147 (Nat. Arb. Forum Dec. 8,
2003) (“Although Complainant’s principal website is
<century21.com>, many Internet users are likely to use search engines to
find Complainant’s website, only to be mislead to Respondent’s website at the
<century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”).
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 <mb-bank.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 4, 2006
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