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Generic Top Level Domain Name (gTLD) Decisions |
BB&T Corporation v. Enom Domain a/k/a
Enom International Corp.
Claim
Number: FA0410000341277
Complainant is BB&T Corporation (“Complainant”), represented
by Larry C. Jones, of Alston & Bird, LLP,
Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC
28280-4000. Respondent is Enom Domain a/k/a Enom International
Corp. (“Respondent”), 96 Mowat Avenue, Toronto ON M6K3M1 Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bbandt.biz>, registered with Tucows
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
14, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 18, 2004.
On
October 15, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <bbandt.biz> is registered with Tucows
Inc. and that Respondent is the current registrant of the name. Tucows Inc. has
verified that Respondent
is bound by the Tucows 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
October 19, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
November 8, 2004 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@bbandt.biz by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
November 17, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
James A. Carmody, Esq., 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 <bbandt.biz>
domain name is confusingly similar to Complainant’s BB&T mark.
2. Respondent does not have any rights or
legitimate interests in the <bbandt.biz> domain name.
3. Respondent registered and used the <bbandt.biz>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
BB&T, and its affiliates are well-known financial institutions in the
United States. Complainant has used the
BB&T mark to identify its banking services since at least 1985. Complainant owns trademark rights for the
BB&T mark through registration with the United States Patent and Trademark
Office (e.g.,
Reg. No. 1,382,662, issued February 11, 1986).
Respondent
registered the <bbandt.biz> domain name on August 21, 2004. Respondent is using the disputed domain name
to host a website that features content that mimics that of Complainant’s
website and
Internet users are prompted to enter personal account
information.
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.
Complainant has
established in this proceeding that it has rights in the BB&T mark through
registration with the United States
Patent and Trademark Office and by
continuous use of its mark in commerce since at least 1985. 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).
The <bbandt.biz>
domain name registered by Respondent is confusingly similar to Complainant’s
BB&T mark because the domain name merely replaces
the ampersand “&”
from Complainant’s mark with the word “and.”
The misspelling of Complainant’s registered mark is insufficient to
negate the confusing similarity of the domain name. See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency
to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Compaq Info. Techs. Group, L.P. v.
Seocho, FA 103879 (Nat. Arb. Forum
Feb. 25, 2002) (finding that the domain name <compq.com> is
confusingly similar to Complainant’s COMPAQ mark because the omission of the
letter “a” in the domain
name does not significantly change the overall
impression of the mark); see
also Hewlett-Packard Co. v. Cupcake
City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name
which is phonetically identical to Complainant’s mark satisfies
¶ 4(a)(i) of
the Policy).
Furthermore, the
addition of the generic top-level domain (gTLD) “.biz” is irrelevant to determining
Policy ¶ 4(a)(i). Therefore, the
addition of a gTLD to a confusingly similar version of Complainant’s registered
BB&T mark is inadequate to distinguish
the domain name. 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 Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the
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").
Thus, the Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges in the Complaint that Respondent has no rights or legitimate interests
in the <bbandt.biz> domain name, which contains a variation in the
spelling of Complainant’s BB&T mark.
Since Respondent failed to respond to the Complaint, the Panel assumes
that Respondent lacks rights and legitimate interests in the
<bbandt.biz>
domain name. Furthermore, once
Complainant makes a prima facie case in support of its allegations, the
burden shifts to Respondent to show that it does have rights to or legitimate
interests in
the domain name pursuant to Policy ¶ 4(a)(ii). 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 Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has
no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate
interest does exist).
Moreover, where
Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See 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); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the
very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Respondent is
using the <bbandt.biz> domain name to redirect Internet users to a
website displaying content similar to the content on Complainant’s website and
Internet
users are prompted to enter personal account information. Respondent’s use of a domain name that is
confusingly similar to Complainant’s BB&T mark to redirect Internet users
interested
in Complainant’s products and services to a website prompting
Internet users to submit personal account information is not a use
in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name
pursuant
to Policy ¶ 4(c)(iii). See
Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13,
2002) (stating that where Respondent copied Complainant’s website in order to
steal account
information from Complainant’s customers, that Respondent’s
“exploitation of the goodwill and consumer trust surrounding the BLIZZARD
NORTH
mark to aid in its illegal activities is prima facie evidence of a lack
of rights and legitimate interests in the disputed domain name”); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's
website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use).
Furthermore,
nothing in the record suggests that Respondent is commonly known by the <bbandt.biz>
domain name, and Complainant did not authorize or license Respondent to use
Complainant’s BB&T mark. Therefore,
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to 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 Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known
by the mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied
The <bbandt.biz>
domain name resolves to a website that prompts users to enter personal account
information. Respondent’s registration and use of
a domain name confusingly
similar to Complainant’s mark to solicit personal account information evidences
bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered
the names primarily for the
purpose of disrupting Complainant's business); see also Vivendi Universal
Games and Davidson & Associates, Inc. v. Ronald A. Ballard, FA 146621
(Nat. Arb. Forum March 13, 2002) (stating that where Respondent copied Complainant’s
website in order to steal account
information from Complainant’s customers,
that Respondent’s “exploitation of the goodwill and consumer trust surrounding
the BLIZZARD
NORTH mark to aid in its illegal activities is prima facie
evidence of a lack of rights and legitimate interests in the disputed domain
name”).
Respondent is
using the <bbandt.biz> domain name, which contains a misspelled
version of Complainant’s BB&T mark, to attract Internet users interested in
Complainant’s
mark to Respondent’s commercial website. Thus, Respondent is using a domain name
confusingly similar to Complainant’s well-known mark to redirect Internet users
to Respondent’s
website for Respondent’s commercial gain. Respondent’s commercial use of the disputed
domain name is evidence of 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 Respondent intentionally attempted to attract
Internet users to his website for commercial
gain by creating a likelihood of
confusion with Complainant’s mark and offering the same chat services via his
website as Complainant);
see also Identigene,
Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where 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 Complainant is the source of or
is sponsoring the
services offered at the site); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where Respondent attracted users to a website
sponsored by Respondent and created
confusion with Complainant’s mark as to the
source, sponsorship, or affiliation of that website).
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is ordered that the <bbandt.biz> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
November 30, 2004
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