IndyMac Bank, F.S.B. v. Yoon Jinsoo
Claim Number: FA0702000921304
Complainant is IndyMac Bank, F.S.B. (“Complainant”), represented by B.
Brett Heavner, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <indmac.com>, registered with Cydentity, Inc. d/b/a Cypack.com.
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. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 22, 2007. The Complaint was submitted in both Korean and English.
On February 22, 2007, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the National Arbitration Forum that the <indmac.com> domain name is registered with Cydentity, Inc. d/b/a Cypack.com and that Respondent is the current registrant of the name. Cydentity, Inc. d/b/a Cypack.com has verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.com 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 February 22, 2007, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 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@indmac.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2007, persuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <indmac.com> domain name is confusingly similar to Complainant’s INDYMAC mark.
2. Respondent does not have any rights or legitimate interests in the <indmac.com> domain name.
3. Respondent registered and used the <indmac.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, IndyMac Bank F.S.B., holds several trademark registrations for the INDYMAC mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 2,522,907 issued on December 25, 2001), which have been used in connection with financial services, including mortgage banking services. Complainant also registered the <indymac.com> domain name on March 25, 1996 to promote its mortgage banking services online.
Respondent, Yoon Jinsoo, registered the <indmac.com> domain name on June 28, 2006. Internet users who access this domain name are directed to a website that features links to competing websites and other commercial websites.
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 pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. Complainant’s registration of its INDYMAC mark preceded Respondent’s registration of the <indmac.com> domain name. Under the Policy, registration of a mark with an appopriate governmental authority confers rights in that mark to Complainant. Thus, the Panel finds that Complainant has established rights in the INDYMAC mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., 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.”); see also 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.”).
Respondent’s <indmac.com> domain name is confusingly similar to Complainant’s INDYMAC mark pursuant to Policy ¶
4(a)(i), because Respondent’s domain name is simply a misspelled variation of
the INDYMAC mark, as it differs from Complainant’s mark by omitting the letter
“y.” Thus, Respondent is taking
advantage of a common typographical error, which is insufficient to avoid a
finding of confusing similiarity under Policy ¶ 4(a)(i). Furthermore, the addition of a top-level
domain “.com” does not avoid a finding of confusing simlarity under Policy ¶
4(a)(i). See Valpak Direct Mktg. Sys., Inc.
v.
The Panel finds that the Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <indmac.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 name. 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 once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <indmac.com> domain name. The WHOIS information identifies Respondent as “Yoon Jinsoo,” and Complainant has alleged that Respondent has no rights or legitimate interests in the INDYMAC mark. The Panel cannot find any other evidence in the record suggesting that Respondent is commonly known by the domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <indmac.com> domain name pursuant to 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)); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Respondent is using the <indmac.com> domain name to attract Internet users to a website that offers links to financial services websites and other commercial websites, including links to Complainant’s competitors. Presumably, Respondent receives referral fees for each redirected Internet user. Thus, Respondent’s use of the domain name to redirect Internet users to competitor websites, presumably for commercial gain, does 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). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <indmac.com>
domain name to redirect Internet users to a website that displays links to
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 registration and use of the
<indmac.com> domain name constitutes bad
faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”).
Respondent’s use of the <indmac.com> domain name, which is confusingly similar to
Complainant’s INDYMAC mark, is likely to cause confusion among customers
searching for Complainant’s mortgage services.
Furthermore, Respondent presumably profits from this confusion by
receiving referral fees for each Internet user it redirects to other
websites. The Panel finds that such
registration and use of the disputed domain name consitutes bad faith pursuant
to Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v.
Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used
<land-cruiser.com> to advertise its business, which sold goods in
competition with Complainant. This establishes bad faith as defined in Policy ¶
4(b)(iv).”); see
also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat.
Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially
benefit from the misleading <qwestwirless.com> domain name by linking the
domain name to adult oriented websites, gambling websites, and websites in
competition with Complainant.
Respondent’s attempt to commercially benefit from the misleading domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
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 <indmac.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: April 2, 2007
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