World Savings Bank, FSB and Golden West Financial Corporation v. Kevin Daste
Claim Number: FA0510000580157
Complainants are World Savings Bank, FSB and Golden West Financial Corporation (collectively “Complainant”), represented by Ian K. Boyd of Harvey Siskind Jacobs LLP, Four Embarcadero Center, 39th Floor, San Francisco, CA 94111. Respondent is Kevin Daste (“Respondent”), 5642 Riverstone Dr., Baton Rouge, LA, 0820.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <worldsavingsmortgage.com>, registered with Gogo.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 19, 2005; the National Arbitration Forum received a hard copy of the Complaint October 21, 2005.
On October 19, 2005, Gogo confirmed by e-mail to the National Arbitration Forum that the <worldsavingsmortgage.com> domain name is registered with Gogo and that Respondent is the current registrant of the name. Gogo verified that Respondent is bound by the Gogo registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 2, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 22, 2005, 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@worldsavingsmortgage.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 28, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <worldsavingsmortgage.com>, is confusingly similar to Complainant’s WORLD SAVINGS and WORLD MORTGAGE marks.
2. Respondent has no rights to or legitimate interests in the <worldsavingsmortgage.com> domain name.
3. Respondent registered and used the <worldsavingsmortgage.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been in business as a savings and loan business since at least 1912, providing mortgages and banking services under its WORLD mark. Complainant currently has over $115 billion in assets, more than 280 savings branches in ten states and lending operations in over thirty-five states.
Complainant is the owner of numerous marks registered with the United States Patent and Trademark Office (“USPTO”), including the WORLD SAVINGS and WORLD MORTGAGE marks. Complainant has used its WORLD SAVINGS mark in interstate commerce for more than forty years.
Complainant also holds registrations for numerous domain names incorporating its marks, including <worldsavings.com>, <worldsavingsandloan.com> and many others. Complainant registered the <worldsavings.com> domain name in March 1996, and this domain name has played a large role in Complainant’s promotions and advertising. Through this domain name, Complainant offers online banking services and information about Complainant.
Respondent registered the <worldsavingsmortgage.com> domain name August 16, 2005. Respondent is using the disputed domain name to operate a search engine and directory website that displays links to numerous products and services, including many that compete with Complainant.
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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant’s registrations of its WORLD SAVINGS and WORLD MORTGAGE marks with the USPTO are sufficient to establish Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); 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.”).
The <worldsavingsmortgage.com> domain name comprises each of Complainant’s WORLD SAVINGS and WORLD MORTGAGE marks in its entirety. In addition to being a combination of Complainant’s marks, the domain name can be viewed as including the WORLD SAVINGS mark combined with the common term “mortgage” or the WORLD MORTGAGE mark combined with the term “savings.” Under all of these circumstances, the Panel finds the domain name to be confusingly similar to Complainant’s marks. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also 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 Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleged that Respondent has no such rights. The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds nothing in the record that would indicate that Respondent is commonly known by the <worldsavingsmortgage.com> domain name. Furthermore, Complainant argues that it has not licensed or otherwise authorized Respondent to use any of its marks for any purpose. Without any contradictory evidence from Respondent, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); 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").
Additionally, the <worldsavingsmortgage.com>
domain name resolves to a generic search engine website that provides numerous
links to a variety of websites, including many for products and services in
competition with Complainant.
Respondent’s use of Complainant’s WORLD SAVINGS and WORLD MORTGAGE marks
to attract Internet users to Respondent’s directory website, presumably for the
purpose of earning referral fees for diverted traffic, is not a use in connection
with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also 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).
Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith. The record shows that Respondent is using the <worldsavingsmortgage.com> domain name to operate a directory and search engine website through which Respondent likely derives financial benefit from referrals to numerous websites, including those of Complainant’s competitors. Respondent’s use of Complainant’s registered WORLD SAVINGS and WORLD MORTGAGE marks to divert Complainant’s customers to Complainant’s competitors and other businesses via Respondent’s directory website coupled with Respondent’s financial gain from that conduct permits the inference that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <worldsavingsmortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 9, 2005
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