national arbitration forum

 

DECISION

 

IndyMac Bank F.S.B. v. Barry Nelson c/o DesignTech Data Inc.

Claim Number: FA0612000864683

 

PARTIES

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.  Respondent is Barry Nelson c/o DesignTech Data, Inc. (“Respondent”), 4001 Hillcrest Dr., Suite 1002, Hollywood, FL 33021.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theloanworx.com>, registered with Schlund+Partner Ag.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 13, 2006.

 

On December 13, 2006, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <theloanworx.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name.  Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 December 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2007 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@theloanworx.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 November 25, 1997).  Complainant also owns a service mark with the USPTO for its <loanworks.com> domain name that it uses to promote its services.

 

Respondent, Barry Nelson, registered the <theloanworx.com> domain name on March 6, 2006.  Respondent previously used the disputed domain name to display hyperlinks to various third-party websites, some of which related to banking services and some that did not.  The disputed domain name currently leads to a website that displays the phrase “[w]ebsite currently unavailable.”  Respondent recently offered to sell the disputed domain name registration to Complainant for $6,000.                         

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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 June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”).

 

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 Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.”); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark).  Furthermore, the use of the generic top-level domain “.com” is without significance to this analysis.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word … nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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 Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO, Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

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 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

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 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

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 Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

 

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 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 Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

 

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 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)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

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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