American Interbanc Mortgage LLC v. Cayman Trademark Trust
Claim Number: FA0701000882184
Complainant is American Interbanc Mortgage, LLC (“Complainant”), represented by David
A. Segal, of Gibson, Dunn & Crutcher LLP, 4 Park
Plaza, Suite 1500, Irvine, CA 92614, USA. Respondent is Cayman Trademark Trust (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <americaninterbank.com>, registered with Enom.
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 January 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 8, 2007.
On January 8, 2007, Enom confirmed by e-mail to the National Arbitration Forum that the <americaninterbank.com> domain name is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 January 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 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@americaninterbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2007, 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 <americaninterbank.com> domain name is confusingly similar to Complainant’s AMERICAN INTERBANC mark.
2. Respondent does not have any rights or legitimate interests in the <americaninterbank.com> domain name.
3. Respondent registered and used the <americaninterbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Interbanc Mortgage LLC, has used the AMERICAN INTERBANC mark in connection with the offering of lending and mortgage services since 1998. Since its inception, Complainant has served over 5,000 customers and built a loan volume of over one billion dollars. Complainant earns annual revenues of approximately two million dollars, almost all of which it generates from Internet advertising. Complainant generates almost 100% of its business online, and has registered the <americaninterbanc.com> domain name to provide more information about its services and offer those services online to potential customers.
Respondent, Cayman Trademark Trust, registered the <americaninterbank.com> domain name on March 30, 2002. Respondent is using the disputed domain name to redirect Internet users to its website which displays links to the websites of Complainant’s competitors.
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.
It is not necessary for Complainant to hold a registered trademark in order to establish rights in the AMERICAN INTERBANC mark. Common law rights are sufficient to satisfy Policy ¶ 4(a)(i). See 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); see also 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”).
Complainant has established common law rights in its AMERICAN INTERBANC mark through extensive and continuous use. Complainant has prominently displayed the mark on its website since 1998 to promote its lending and mortgage services. Complainant has serviced over 5,000 customers and built a loan volume of over one billion dollars to date using the AMERICAN INTERBANC mark. Therefore, the Panel finds that Complainant has created sufficient consumer recognition in the AMERICAN INTERBANC mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); 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 <americaninterbank.com>
domain name is confusingly similar to Complainant’s AMERICAN INTERBANC
mark. The words “Interbank” in the
disputed domain name and “Interbanc” in Complainant’s mark are the same except
for the last letter, and the two words are phonetically similar. This slight misspelling renders the disputed
domain name confusingly similar to the mark.
Furthermore, the lack of a space between “American” and “Interbank,” as
well as the addition of the generic top-level domain “.com,” do not avoid a
finding of confusing similarity. Thus,
the Panel finds that Respondent’s <americaninterbank.com>
domain name is confusingly similar to Complainant’s AMERICAN INTERBANC mark
pursuant to 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 Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain
name <victoriasecret.com> to be confusingly similar to the complainant’s
trademark,
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 <americaninterbank.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 Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. 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 pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the <americaninterbank.com> domain name. The WHOIS information identifies Respondent as “Cayman Trademark Trust,” and Complainant has alleged that Respondent is not licensed or authorized to use the AMERICAN INTERBANC mark. The Panel finds no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <americaninterbank.com> domain name pursuant to 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 is using the <americaninterbank.com> domain name to redirect Internet
users to its website which displays links to the websites of Complainant’s
competitors. Respondent presumably
receives click-through referral fees for each redirected Internet user. Respondent is using Complainant’s AMERICAN
INTERBANC mark for its own commercial benefit, and such use constitutes neither
a bona fide offering of goods and
services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the
domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the
respondent used the domain name to take advantage of the complainant's mark by
diverting Internet users to a competing commercial site); see also Gardens Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <americaninterbank.com> domain name to redirect Internet users to Respondent’s website which displays links to the websites of Complainant’s competitors. This use of the disputed domain name is likely to disrupt Complainant’s business by diverting business away from Complainant. Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s use of the <americaninterbank.com> domain name, which is confusingly similar to Complainant’s AMERICAN INTERBANC mark, is likely to cause confusion among customers searching for Complainant’s lending and mortgage services. Specifically, customers could become confused as to the affiliation, endorsement, or sponsorship of the competing lending and mortgage services advertised on Respondent’s website. Respondent presumably profits from this confusion by receiving click-through referral fees for each redirected Internet user. The Panel finds that such registration and use of the disputed domain name constitutes bad faith 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americaninterbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 22, 2007
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