First Busey Corporation v. Registrant(187640)
Claim Number: FA0602000645999
Complainant is First Busey Corporation (“Complainant”), represented by Michael A Berns, of Maloney, Parkinson & Berns, 135 W. Main, Urbana, IL 61801. Respondent is Registrant(187640) (“Respondent”), P.O. Box 71826 KCPO, Hong Kong, Hong Kong 852, HK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <buseybank.com>, registered with Onlinenic, Inc.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 23, 2006.
On February 17, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <buseybank.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. 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 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 2006 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@buseybank.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 22, 2006 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin 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 <buseybank.com> domain name is confusingly similar to Complainant’s BUSEY mark.
2. Respondent does not have any rights or legitimate interests in the <buseybank.com> domain name.
3. Respondent registered and used the <buseybank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, First Busey Corporation, owns and operates several banks under the name “Busey Bank.” Complainant and its predecessors in interest have operated banks under the BUSEY mark since 1868, and Complainant has registered the BUSEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,128,468 issued January 13, 1998) for “banking services and the management of banks.” That registration (which was filed on September 27, 1996) has expired and a new registration request was filed on September 30, 2005. Complainant also operates a website for its electronic banking services under the <busey.com> domain name.
Respondent registered the <buseybank.com> domain name on December 4, 2001. Internet users who access this domain name are taken to what appears to be a banking website, with buttons labeled “e bank,” “employment” and “online bank.” However, these buttons direct Internet users to web pages that feature links to other websites offering a variety of services, which are unrelated to 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 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 and its predecessors have used the BUSEY mark in connection with its banking business continuously since 1868. Furthermore, Complainant has continued to use the BUSEY mark, and has filed for another registration of the mark. The Panel determines that Complainant has established secondary meaning in the BUSEY mark for the purpose of demonstrating common law rights in the mark pursuant to Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also 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). Additionally, although Complainant’s registration of the BUSEY mark has expired, Complainant registered the BUSEY mark before Respondent registered the <buseybank.com> domain name.
Respondent’s <buseybank.com> domain name is confusingly similar to Complainant’s BUSEY mark because it incorporates Complainant’s mark along with a descriptive term, and the top-level domain “.com.” The Panel finds that the addition of a descriptive term to Complainant’s registered mark that bears an obvious relation to Complainant’s business does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). Additionally, since all domain names require a top-level domain, the addition of “.com” to Complainant’s mark fails to distinguish Respondent’s domain name from the mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
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 <buseybank.com> domain name. Under Policy ¶ 4(a)(ii), once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests. Respondent has failed to respond to the Complaint, and Complainant’s assertions are unopposed. Therefore, the Panel will evaluate the evidence to determine if Respondent has rights or legitimate interests in the disputed domain names. See 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent uses the <buseybank.com> domain name to direct Internet users to a website that appears to be an Internet banking website. However, Internet users who click links or buttons on the website are directed to lists of links to other websites. The Panel presumes that Respondent receives click-through fees for directing Internet users to these other websites. Such use of the disputed domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
There is no evidence that Respondent has ever been commonly known by the <buseybank.com> domain name, or that Respondent is affiliated with Complainant. Furthermore, the WHOIS database lists Respondent as “Registrant (187640) info@fashionid.com +1.25255572,” and contains no information implying that Respondent is commonly known by the <buseybank.com> domain name. The Panel infers that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See 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"); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <buseybank.com> domain
name, which includes Complainant’s BUSEY mark, to present Internet users with
links to other websites unrelated to Complianant. The Panel presumes that Respondent does this for the purpose of
generating click-through fees for itself.
Such use of the disputed domain name constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum
June 3, 2003) (stating that “[s]ince the disputed domain names contain entire
versions of Complainant’s marks and are used for something completely unrelated
to their descriptive quality, a consumer searching for Complainant would become
confused as to Complainant’s affiliation with the resulting search engine
website” in holding that the domain names were registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where the respondent registered and
used a domain name confusingly similar to the complainant’s mark to attract
users to a website sponsored by the respondent).
Additionally, Complainant asserts that Respondent has registered the <buseybank.com> domain name in order to prevent Complainant from using the domain name. Respondent has been involved in other disputes where it has been ordered to transfer an infringing domain name to a complainant who owns the mark on which it infringes. See British Broadcasting Corp. v. Registrant (187640) info@fashionid.com +1.25255572, D2005-1143 (WIPO Dec. 20, 2005) (Respondent ordered to transfer the <bbcweather.com> domain name to the complainant, which owned the BBC mark); see also UBS PaineWebber Inc. v. info@fashionid.com 9876543210, D2003-0349 (WIPO Aug. 16, 2002) (Respondent ordered to transfer the <usbpainewebber.com> domain name to the complainant, which owned the UBS PAINEWEBBER mark). The Panel finds that Respondent’s activities in the past and in the case at hand establishes a pattern of registering domain names that infringe on existing marks, in order to prevent the owners of the marks from using domain names that reflect their marks. As a result, Respondent’s registration of the <buseybank.com> domain name amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
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 <buseybank.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 4, 2006
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