Old National Bancorp v. Terence Tsang
Claim Number: FA0612000869455
Complainant is Old National Bancorp (“Complainant”), represented by Carrie
L. Johnson of Fulbright & Jaworski, 2100 IDS
Center, 80 S. Eighth Street, Minneapolis, MN, 55402. Respondent is Terence Tsang (“Respondent”), 11 Rupert Law Close, Quorn 0000,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <olddnational.com>, registered with Moniker Online Services, Inc.
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 December 14, 2006; the National Arbitration Forum received a hard copy of the Complaint December 15, 2006.
On December 19, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <olddnational.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. 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 December 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 16, 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@olddnational.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2007, 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, <olddnational.com>, is confusingly similar to Complainant’s OLD NATIONAL mark.
2. Respondent has no rights to or legitimate interests in the <olddnational.com> domain name.
3. Respondent registered and used the <olddnational.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Old National Bancorp, has been using its OLD NATIONAL mark in commerce since 1999 to promote its banking and financial services. Complaint holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for its OLD NATIONAL mark (Reg. No. 2,695,267 issued March 11, 2003). Complainant also registered the domain name <oldnational.com> on June 7, 1996, and is using the domain name to promote its banking and financial services online.
Respondent, Terence Tsang, registered the <olddnational.com> domain name June 12, 2006. Respondent is using the disputed domain name to display hyperlinks that lead 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 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.
Complainant’s registration of its OLD NATIONAL mark with the USPTO preceded Respondent’s registration of its <olddnational.com> domain name. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to Complainant. Thus, the Panel finds that Complainant established rights in the OLD NATIONAL mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., 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.”).
The disputed domain name that Respondent registered, <olddnational.com>, incorporates Complainant’s OLD NATIONAL mark in its entirety with the addition of an extra ‘d’. The addition of an extra letter renders a domain name confusingly similar to a complainant’s mark; and the addition of the generic top-level domain “.com” is without relevance to this analysis. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s OLD NATIONAL mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has rights to and legitimate interests in the domain name used in its entirety within the disputed domain name. Complainant alleged that Respondent has no such rights to or legitimate interests in the <olddnational.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 Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights to 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 examines the record to determine if the record shows that Respondent has rights to or legitimate interests in the mark and domain name pursuant to Policy ¶ 4(c).
Complainant alleged that Respondent has never been commonly known by the <olddnational.com> domain name. The WHOIS information identifies Respondent as “Terence Tsang.” The Panel finds no evidence in the record suggesting that Respondent is commonly known by Complainant’s mark of the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <olddnational.com> domain name under 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 <olddnational.com> domain name to display hyperlinks that lead to
the websites of Complainant’s competitors and does so, presumably, to generate
referral fees for each misdirected Internet user. Respondent is using Complainant’s OLD
NATIONAL 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary
use of the complainant’s marks to send Internet users to a website which
displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see also Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet
users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith in registering and using Complainants mark in a domain name. The disputed domain name that Respondent registered, <olddnational.com>, displays a list of hyperlinks that lead Internet users to websites of Complainant’s competitors. This 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 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)); see also 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).
Respondent’s use of the <olddnational.com> domain name, which is confusingly similar to Complainant’s OLD NATIONAL mark, is likely to cause confusion among customers searching for Complainant’s products. Specifically, customers accessing the Internet to find Complainant’s products may become confused as to the affiliation, endorsement, or sponsorship of competitors’ products. Complainant has alleged that Respondent likely receives click-through fees for each rerouted Internet user. The Panel thus finds that Respondent’s attempt to monetarily profit from this likelihood of confusion between the disputed domain name and Complainant’s OLD NATIONAL mark constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that 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 <olddnational.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 2, 2007.
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