IndyMac Bank F.S.B. v.
Claim Number: FA0703000944110
PARTIES
Complainant is IndyMac Bank F.S.B. (“Complainant”), represented by
REGISTRAR
The domain name at issue is <indymacs.com> (the “Domain Name”),
registered with Namesdirect.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On March 27, 2007, Namesdirect confirmed by e-mail to the National
Arbitration Forum that the <indymacs.com> domain name is
registered with Namesdirect and that
Respondent is the current registrant of the name. Namesdirect
has verified that Respondent is bound by the Namesdirect
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
A Response was received late in hard copy on
On
On Friday, April 27, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
IndyMac Bank, F.S.B. (“Complainant”) is a federally chartered savings
bank, a leading mortgage lender, and a wholly-owned subsidiary of the publicly
traded company IndyMac Bancorp, Inc.
Complainant claims to have been extensively promoting its products and
financial services under the INDYMAC and INDY
Complainant also owns the domain name <indymac.com> which it
registered on March 25, 1996 and which it claims to have been using for its
website since on or around that date.
Complainant showcases its products and services on its main website
located at the domain names <indymac.com> and <indymacbank.com>.
Complainant alleges that Steve McCormick (“Respondent”) registered the
disputed Domain Name <indymacs.com>
on
Complainant first contends that the Domain Name <indymacs.com> is confusingly similar to its mark INDYMAC as
the addition of a single letter “s” is a clear misspelling of Complainant’s
mark.
Additionally, Complainant argues that Respondent has no rights or
legitimate interests in the Domain Name <indymacs.com>
because it is being used as a “pay-per-click” portal website linking users to other
websites, several of which may compete with Complainant. Complainant alleges that such behavior
constitutes neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use under
the Policy. Furthermore, Complainant
avers that Respondent is not and has not been commonly known by the Domain Name
and thus cannot have a legitimate right or interest in it.
Finally, Complainant argues that Respondent’s registration and use of
the Domain Name constitute bad faith under Policy ¶ 4(b)(iv). Complainant maintains that use of this Domain
Name to attract, for commercial gain, those users seeking Complainant’s website
by creating a likelihood of confusion with Complainant’s INDYMAC mark is indicative
of Respondent’s bad faith registration.
Complainant also argues that Respondent’s use of this registration
constitutes bad faith under Policy ¶ 4(b)(iii) as it disrupts Complainant’s
business by providing potential customers with links to competing companies’
websites. This “typosquatting” behavior
alleged by Complainant is indicative of Respondent’s bad faith. Given that the INDYMAC mark has been
registered for a decade, Complainant further asserts that Respondent likely
knew of Complainant’s rights and proceeded with registration and use of this
Domain Name in violation of those rights.
For the above reasons, Complainant alleges that Respondent should be
ordered to transfer the Domain Name to Complainant.
B. Respondent
Respondent submitted the hard copy of its Response to the National
Arbitration Forum after the deadline.
Pursuant to Supplemental Rule 5(a) therefore, the National Arbitration
Forum considers this Response deficient.
Whether to consider this Response is therefore in the discretion of this
Panel. This Panel has elected to
consider the contents of the Response and to decide this dispute on the merits
of each party’s evidence and argument.
Respondent contends that he registered the Domain Name <indymacs.com> solely for the
purpose of establishing e-mail addresses for his family and that the name
itself derives from the family’s home town (Indianapolis shortened to “indy”),
the family name (McCormick shortened to “mac”), and the fact that there is more
than one person in the family (“s”).
Respondent also asserts that, upon registering this domain name, he was
unaware of the existence of the IndyMac Bank and was in no way intentionally
capitalizing upon the name of Complainant.
Respondent further contends that he has used the Domain Name
exclusively to forward personal e-mail and has never been associated with
commercial use of this Domain. Finally,
Respondent contends that he was unaware that such use of the Domain Name as a
pay-per-click portal site was occurring and posits that the search engine is a
default page provided by <revenuedirct.com> with which Respondent holds
no association.
Accordingly, Respondent requests that the Domain Name remain within his
control and suggests that any claim for infringement be brought against
<revenuedirect.com>.
C. Additional Submissions
In its Additional Submission pursuant to Supplemental Rule 7,
Complainant maintains that nothing stated in Respondent’s Response alters the
basic fact that Respondent has registered the Domain Name <indymacs.com> which is confusingly similar to Complainant’s
registered mark and which now directs users to a pay-per-click advertising
website.
Complainant reaffirms that its rights in the INDYMAC mark are in full
force and effect in the
Complainant further contends that, regardless of Respondent’s assertion
that he registered the Domain Name for personal e-mail purposes, Respondent has
not rebutted the fact that the Domain Name is now unquestionably being used as
a commercial, pay-per-click, portal website.
The fact that Respondent contends that he was unaware of such use and in
no way receives financial compensation from this website does not justify
Respondent’s registration and use of this Domain Name. Complainant provides the Namesdirect.com
Registration Agreement as evidence that Respondent, in registering the Domain
Name, consented to and authorized the use of a “parked” domain name for
websites containing advertisements which may be “un-parked” at will. By this agreement the registrant is in control
and responsible for uses of its Domain Name by third parties.
Again, Complainant asserts that its federal registration for the mark
INDYMAC gave Respondent constructive notice of IndyMac Bank’s rights in its
mark and that Respondent either knew or should have known of such rights. Accordingly, Complainant maintains that
registration of the Domain Name constituted bad faith.
FINDINGS
The Panel has read and considered
Respondent’s submission despite the fact that it was filed in an untimely
manner. In reaching its decision, the
Panel has also taken into consideration the Additional Submission filed by
Complainant.
Based upon the evidence submitted, this Panel
finds Complainant has provided sufficient evidence to prove, (1) Complainant
has rights both at common law and through federal registration to the INDYMAC
mark; (2) the Domain Name is confusingly similar to Complainant’s mark; (3)
Respondent has no rights or legitimate interests in the Domain Name; and (4)
Respondent has registered and used the Domain Name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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 provided printouts evidencing its registrations for the
marks INDYMAC and INDY
Respondent makes no attempt to rebut the presumption that Complainant’s
mark is valid.
The disputed Domain Name <indymacs.com> is confusingly similar to Complainant’s
registered mark INDYMAC pursuant to Policy ¶ 4(a)(i) as the disputed Domain
Name fully incorporates Complainant’s mark excepting the addition of the letter
“s” and the addition of the generic top-level domain “.com.” Neither of these additions sufficiently
distinguishes the Domain Name from Complainant’s mark so as to avoid a
likelihood of confusion between the two. See
Cream Pie Club v. Halford,
FA 95235 (Nat. Arb. Forum
For the above stated reasons the Panel finds
Complainant satisfies Paragraph 4(a)(i) of the Policy.
Under Policy ¶ 4(a)(ii), Complainant bears
the burden of establishing a prima facie case
that Respondent lacks rights and legitimate interests in the disputed Domain
Name. See
Complainant contends, and the evidence
indicates, that the disputed Domain Name held by Respondent resolves to a
pay-per-click, portal website redirecting users to various other sites, several
of which may be Complainant’s competitors.
Several panels have established that such use of a domain name
constitutes 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). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality
Domains For
While Respondent argues that he did not create this website
and is not associated with it in any way, the fact remains that the disputed
Domain Name is registered to Respondent and is being used as a portal
website. Respondent must be presumed to
have control over the use of his domain name, and has provided no evidence to
rebut or otherwise challenge these facts.
Respondent has provided a printout of a computer screen image showing
“Resource Usage” for an unnamed subscription.
It appears that Respondent is attempting to demonstrate that he is using
something solely for the purpose of mail hosting, however this printout
presents no identifying information whatsoever.
This Panel finds no evidence that this screen image and the information
contained therein is in any way associated with the disputed Domain Name <indymacs.com>.
Furthermore, there is no evidence that Respondent is or has
been commonly known by the disputed Domain Name. Respondent’s name,
For the above
stated reasons, the Panel finds Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
Under Policy ¶ 4(a)(iii) Complainant must
demonstrate that Respondent has registered and used the disputed Domain Name in
bad faith. Bad faith may be evidenced in
a number of ways under Policy ¶ (4)(b), including a demonstration that the
domain name is being used to attract, for commercial gain, Internet users to
the disputed domain name website by creating a likelihood of confusion with the
complainant’s mark. (See Policy ¶ (4)(b)(iv)).
The evidence provided shows that this Domain
Name, which is confusingly similar to Complainant’s mark, misleadingly directs
users to a portal website presumably used to accumulate revenue through
“click-through fees.” Such use of the
disputed Domain Name is evidence of bad faith.
See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum November 19, 2003)
(“Respondent’s prior use of the <mailonsunday.com> domain name is
evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy because the
Domain Name provided links to the Complainant’s competitors and the Respondent
presumably commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum
Furthermore,
Complainant has federally registered its mark INDYMAC with the United States
Patent and Trademark Office. As such,
Complainant has provided actual or constructive notice of its rights in this
mark. Adoption of a domain name using
this or any confusingly similar mark in disregard of a federal registration is
evidence of bad faith. See
Again, while Respondent avers that he has
played no knowing or intentional role in the formation, maintenance, or
commercial gain of this website, he has presented no evidence to refute his responsibility
for such usage. The attachment to
Complainant’s supplemental submission suggests that Namesdirect may have
obtained Respondent’s authorization to place advertisements on the site to
which the Domain Name resolves.
Respondent has offered no contrary evidence, and in any event must be
presumed to have authorized, and to be responsible for, any usage made of his
domain name. In sum, the evidence before
this Panel demonstrates that the disputed Domain Name is being used in bad
faith.
For the above stated reasons, the Panel finds Complainant satisfies Paragraph 4(a)(iii) of the Policy.
DECISION
Complainant having established all three elements required under the
Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indymacs.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dated:
National
Arbitration Forum
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