DECISION

TransOcean Bank & Trust, Ltd. v. Erica Ojaruwedia

Claim Number:  FA0305000158163

PARTIES

Complainant is TransOcean Bank & Trust, Ltd., Grand Cayman, Cayman Islands, BRITISH WEST INDIES (“Complainant”) represented by Brian G. Gilpin, of Godfrey & Kahn, S.C.. Respondent is Erica Ojaruwedia, Atherton, CA, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <transoceanbank.com>, registered with Go Daddy Software, Inc.

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.

The Honorable Charles K. McCotter, Jr. (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 20, 2003; the Forum received a hard copy of the Complaint on May 22, 2003.

On May 20, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <transoceanbank.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 May 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 17, 2003 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 @transoceanbank.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <transoceanbank.com> domain name is confusingly similar to Complainant’s TRANSOCEAN mark.

2. Respondent does not have any rights or legitimate interests in the <transoceanbank.com> domain name.

3. Respondent registered and used the <transoceanbank.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, TransOcean Bank & Trust, Ltd., has been a banking and trust company using the TRANSOCEAN name and mark in international commerce since 1983.  Complainant offers banking services designed to meet the financial needs of high net worth individuals seeking private offshore banking. 

Complainant is a subsidiary of Johnson Financial Group, Inc., (“Johnson”) a Wisconsin-based financial services corporation.  Johnson is a global financial services company with more than $2 million in traditional bank assets and approximately $1 billion in assets under management.  Johnson owns banks in the United States, Switzerland, and the Cayman Islands.

Complainant and its parent, Johnson, use the TRANSOCEAN mark in advertising and promoting unique services offered to high net worth individuals seeking private offshore banking.

Complainant never permitted or authorized Respondent to use its TRANSOCEAN mark.  There is no evidence that Respondent is associated with any registered bank or other financial institution in any country.

Respondent, Erica Ojarwedia, registered the <transoceanbank.com> domain name on November 28, 2002.  Respondent purportedly offers banking services based in the Cayman Islands on the website at the <transoceanbank.com> domain name.  However, the website at the disputed domain name lists Complainant’s street address, while displaying Respondent’s e-mail address, telephone number and fax number.

Respondent requires potential customers to submit a host of personal information, such as social security number, birth date, address and length of residency, through the website at the <transoceanbank.com> domain name in order to set up an account.  Respondent also requires potential customers to transfer an “account setup fee” which ranges from $1,000 to $25,000. 

Several consumers have attempted to open accounts with Respondent and have sent money to Respondent.  Complainant has also received checks totaling millions of dollars from potential customers who thought that they had set up an account with Complainant, through the website at <transoceanbank.com> domain name.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established common law rights in the TRANSOCEAN mark through continuous use of the mark in commerce since 1983.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).

Respondent’s <transoceanbank.com> domain name is confusingly similar to Complainant’s mark.  The disputed domain name contains Complainant’s entire TRANSOCEAN mark with the addition of the word “bank.”  The use of the word “bank” is a generic term that describes the type of business in which Complainant is engaged.  Thus, the disputed doman name is not significantly distinguishable from Complainant’s mark for purposes of Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Complainant asserts that Respondent does not have any rights or legitimate interests in the <transoceanbank.com> domain name, which effectively shifts the burden to Respondent to demonstrate such rights or legitimate interests.  Respondent, however, has failed to submit a response in this proceeding.  In the absence of a response, the Panel accepts as true all reasonable allegations contained in the Complainant’s submission.  Further, since Respondent has failed to submit a response, Respondent has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

 

Respondent is using Complainant’s mark to capitalize on users who are attempting to reach Complainant’s services.  Respondent is diverting Complainant’s potential customers to the <transoceanbank.com> domain name which hosts a website that has appropriated Complainant’s mark and address in an attempt to appear to be offering services for Complainant.  There is no evidence that Respondent is associated with any registered bank or other financial institution in any country.  It can be inferred that Respondent is using the personal information it gathers to misappropriate the identity of potential customers.  It can also be inferred that Respondent is keeping the fees it collects without providing any services to potential customers.  Therefore, Respondent’s use of the disputed domain name does not evidence a bona fide offering of services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, in hopes of attracting Complainant’s customers, thus finding no rights or legitimate interests); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).

There is no evidence before the Panel that suggests that Respondent is commonly known by either the TRANSOCEAN mark or the <transoceanbank.com> domain name.  Respondent’s WHOIS information indicates that the registrant of the <transoceanbank.com> domain name is Erica Ojaruwedia, who appears to be an individual, not a bank or other entity .  Furthermore, Respondent is not authorized or licensed to use Complainant’s mark for any purpose.  Thus, Respondent could not establish rights or legitimate interests in the domain name under 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) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent intentionally attempts to attract, for commercial gain, Internet users to the <transoceanbank.com> domain name, by creating a likelihood of confusion with Complainant’s mark as to the sponsorship or affiliation of Respondent’s website.  Respondent’s disputed domain name incorporates Complainant’s entire mark and adds a generic term that is directly associated with Complainant’s business.  Furthermore, Respondent purports to offer the same services as Complainant by using Complainant’s own address and the disputed domain name.  The Panel infers that Respondent has commerically benefited by attracting Internet users to the disputed domain name when it gathered personal information and collected fees from potential customers.  Therefore, Respondent registered and used the <transoceanbank.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).

Moreover, Respondent’s competing use of the <transoceanbank.com> domain name gives Internet users the impression that Complainant is affiliated with Respondent’s website.  The infringing domain name is deliberately creating a likelihood of confusion as to the source or sponsorship of the domain name.  Such use not only violates Policy ¶ 4(b)(iv), but it also violates Paragraph 2(c) of the UDRP which requires the Registrant to agree that it is not registering a domain name “for any unlawful purpose.”  Respondent’s violations of Policy ¶ 4(b)(iv) and ¶ 2(c) are evidence of bad faith use and registration of a domain name.  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the <drmath.com> domain name, which contains Complainant’s Dr. Math mark, was linked to a website unassociated with Complainant, creating confusion for Internet users regarding the endorsement, sponsorship, or affiliation of the website).

Furthermore, Respondent registered the disputed domain name in bad faith because it had constructive knowledge of Complainant’s mark prior to registering the <transoceanbank.com> domain name.  Respondent registered the disputed domain name infringing on Complainant’s well-known mark for the purpose of attracting users to its website which purports to offer the same services as Complainant.  Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith because it presumably knew about Complainant’s mark prior to registering the disputed domain name.  See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).

Accordingly, the Panel finds that Policy ¶ 4 (a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <transoceanbank.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 7, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/697.html