DECISION

Western Financial Bank v. Henry Chan

Claim Number: FA0311000213458

PARTIES

Complainant is Western Financial Bank (“Complainant”) represented by DeAnne H. Ozaki of Latham & Watkins LLP, 633 West 5th Street, Los Angeles, CA 90017. Respondent is Henry Chan, P.O. Box SS-6348/A124, Nassau, Bahamas (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <westernfinancialbank.com> registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

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

On November 25, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <westernfinancialbank.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 December 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 22, 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@westernfinancialbank.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 December 30, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <westernfinancialbank.com> domain name is identical to Complainant’s WESTERN FINANCIAL BANK mark.

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

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

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

FINDINGS

Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WESTERN FINANCIAL BANK mark (Reg. No. 2,516,670 registered on December 11, 2001) in relation to, inter alia, banking services.

Respondent registered the <westernfinancialbank.com> domain name on December 29, 2002. Respondent is using the disputed domain name to redirect Internet traffic to a website that offers information and links to Complainant’s competitors.

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 demonstrated its rights in the WESTERN FINANCIAL BANK mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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.  Respondent has the burden of refuting this assumption).

Complainant contends that Respondent’s <westernfinancialbank.com> domain name is identical to Complainant’s WESTERN FINANCIAL BANK mark under Policy ¶ 4(a)(i) because the disputed domain name appropriates Complainant’s entire mark and simply adds the generic top-level domain (“gTLD”) “.com” to the end of the mark. The addition of a gTLD fails to sufficiently differentiate the domain name from the mark because gTLDs are required of domain names on the Internet. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not come forward to challenge Complainant’s contentions. Therefore, the Panel accepts all reasonable allegations and inferences in the Complaint to be true. See 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, the Panel presumes Respondent lacks all rights to and legitimate interests in the disputed domain name because Respondent has failed to contest the Complaint and the record discloses no apparent right or interest. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent is using the <westernfinancialbank.com> domain name to redirect Internet traffic to a website that offers information and links to Complainant’s competitors. Respondent’s use of the disputed domain name represents neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“It would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Furthermore, Respondent has offered no evidence and the record nowhere indicates that Respondent is commonly known by WESTERN FINANCIAL BANK or <westernfinancialbank.com>. Complainant has not licensed or otherwise authorized Respondent to use the mark or the domain name. Accordingly, the Panel finds that Complainant has no rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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); 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").

The Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Respondent’s registration and use of a domain name identical to Complainant’s mark to offer information and links to Complainant’s direct competitors demonstrates bad faith because Respondent’s attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Moreover, Respondent’s registration and use of a domain name identical to Complainant’s federally registered trademark to offer information and links to Complainant’s direct competitors suggests that Respondent had actual or constructive knowledge of Complainant’s rights in the WESTERN FINANCIAL BANK mark at the time the domain name was registered. Registration and use of a domain name identical to a trademark holder’s mark despite actual or constructive knowledge of the trademark holder’s rights evidence bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

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

Hon. Ralph Yachnin, Panelist

Justice Supreme Court, NY (Ret.)

Dated:  January 7, 2003

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