IndyMac Bank F.S.B. v. Barry Nelson c/o DesignTech Data Inc.
Claim Number: FA0612000864683
Complainant is IndyMac Bank, F.S.B. (“Complainant”), represented by B.
Brett Heavner, of Finnegan,
REGISTRAR
The domain name at issue is <theloanworx.com>, registered with Schlund+Partner Ag.
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
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <theloanworx.com> domain name is confusingly similar to Complainant’s LOANWORKS mark.
2. Respondent does not have any rights or legitimate interests in the <theloanworx.com> domain name.
3. Respondent registered and used the <theloanworx.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, IndyMac Bank F.S.B., is a wholly-owned
subsidiary of IndyMac Bancorp, Inc.
Complainant has been using the LOANWORKS mark since 1997 in connection
with the offering of mortgage and banking products and services. The LOANWORKS mark is the principal trademark
for Complainant’s mortgage origination services. Complainant holds a service mark registration
with the United States Patent and Trademark Office (“USPTO”) for the LOANWORKS
mark (Reg. No. 2,238,058 issued
Respondent, Barry Nelson, registered the <theloanworx.com> domain name on
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
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’s registrations of the LOANWORKS mark with the
USPTO predate Respondent’s registration of the disputed domain name. Under the Policy, registration of a mark with
an appropriate governmental authority confers rights in that mark to a
complainant. Thus, the Panel finds that
Complainant has established rights in the LOANWORKS mark pursuant to Policy ¶
4(a)(i). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO
Respondent’s <theloanworx.com>
domain name contains a slightly misspelled and phonetically similar
version of Complainant’s LOANWORKS mark, and adds the article “the.” These slight changes do not negate the
confusing similarity between the disputed domain name and Complainant’s mark
under Policy ¶ 4(a)(i). See Vivendi Universal Games, Inc. v.
Cupcake Patrol, FA 196245 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights
or legitimate interests in the <theloanworx.com>
domain name. 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). Because of the Respondent’s failure to
respond to the Complaint, the panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
Complainant has alleged that Respondent has never been
commonly known by the name <theloanworx.com>
domain name. The WHOIS information
identifies Respondent as “Barry Nelson,” and there is no other evidence in the
record suggesting that Respondent is commonly known by the name. Thus, the Panel finds that Respondent is not
commonly known by the <theloanworx.com>
domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum
Respondent previously used the <theloanworx.com> domain name to display hyperlinks to
various third-party websites, some of which related to banking services. Such use does not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i). Furthermore,
Respondent’s past use of Complainant’s LOANWORKS mark in the domain name is not
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent recently offered to sell the <theloanworx.com> domain name
registration to Complainant for $6,000, and Complainant has alleged that this
amount is in excess of Respondent’s out-of-pocket costs. Respondent’s attempt to monetarily profit
from the value of the disputed domain name constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(i). See Neiman
Marcus Group, Inc. v. AchievementTec, Inc.,
FA 192316 (Nat. Arb. Forum
Complainant has alleged that Respondent’s use of the <theloanworx.com> domain name, which
is confusingly similar to Complainant’s LOANWORKS mark, creates a likelihood of
confusion among consumers searching for Complainant’s services. Specifically, consumers could be confused as
to the source, sponsorship, or endorsement of the products advertised on
Respondent’s website, especially those that relate to banking services. Respondent is attempting to commercially gain
from this likelihood of confusion; therefore, Respondent’s use of the disputed
domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum
Complainant has alleged that Respondent receives
click-through fees for diverting Internet users to websites that are advertised
on Respondent’s website. Respondent’s
attempt to monetarily profit from the use of the <theloanworx.com> domain name, which is confusingly
similar to Complainant’s LOANWORKS mark, constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708
(Nat. Arb. Forum
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 <theloanworx.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 23, 2007
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