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Generic Top Level Domain Name (gTLD) Decisions |
MB Financial Bank, N.A. v. LaPorte
Holdings, Inc.
Claim Number: FA0411000362110
Complainant is MB Financial Bank, N.A. (“Complainant”),
represented by Salvador K. Karottki, 55 East Monroe St., Suite 3700, Chicago,
IL 60603. Respondent is LaPorte
Holdings, Inc. (“Respondent”), 2202 South Figueroa Street, Suite 721, Los
Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mbfinacial.com>, registered with Nameking.com,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
8, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 10, 2004.
On
November 10, 2004, Nameking.com, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <mbfinacial.com> is registered with Nameking.com,
Inc. and that Respondent is the current registrant of the name. Nameking.com,
Inc. has verified
that Respondent is bound by the Nameking.com, 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
November 16, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 6, 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@mbfinacial.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 National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
December 14, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Sandra Franklin 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 <mbfinacial.com>
domain name is confusingly similar to Complainant’s MB FINANCIAL mark.
2. Respondent does not have any rights or
legitimate interests in the <mbfinacial.com> domain name.
3. Respondent registered and used the <mbfinacial.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant
provides banking and financial services under the MB FINANCIAL service mark.
Complainant holds U.S. trademark Reg. No.
2,467,873 for MB FINANCIAL (issued
July 10, 2001). Complainant has been using the mark in commerce continuously
since at least 1999.
Complainant has spent considerable time, money, and
resources developing, promoting, and advertising its mark. Complainant also
operates
a website at the <mbfinancial.com> domain name.
Respondent
registered the <mbfinacial.com> domain name on December 20, 2003.
The disputed domain name resolves to a page that contains links to sites providing
banking
services. Respondent receives advertising revenue from website users
that follow these links. Respondent is not a licensee of Complainant
nor is
Respondent authorized to use Complainant’s marks for any purpose.
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 that it has rights in the MB FINANCIAL mark through registration
with the United States Patent and Trademark
Office and through continuous use
of the mark in commerce. 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 <mbfinacial.com>
domain name is confusingly similar to Complainant’s MB FINANCIAL registered
trademark because the disputed domain name merely
removes a space between the
words of the mark, adds the generic top-level domain “.com,” and removes a
letter “n” from Complainant’s
mark. It is well established that neither the
deletion of a space between words in a trademark nor the addition of a generic
top-level
domain distinguish a domain name from the trademark. See Hannover Ruckversicherungs-AG
v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”; see
also Croatia Airlines v.
Kijong, AF-0302 (eResolution Sept. 25, 2000) finding that the domain name
<croatiaairlines.com> is identical to Complainant's CROATIA
AIRLINES
trademark.
Furthermore, the
intentional misspelling of a famous mark in a domain name does not create a
distinct mark. The removal of an “n”
from Complainant’s MB FINANCIAL mark does
not distinguish the disputed domain name. Respondent’s “typosquatting” results
in a domain
name that is confusingly similar to Complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO
Dec. 1, 2000) holding that the deliberate introduction of errors or changes,
such as the addition of a fourth “w”
or the omission of periods or other such
generic typos do not change respondent’s infringement on a core trademark held
by Complainant;
see also 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 Complainant’s marks; see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s
STATE FARM mark; see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum
July 23, 2002) finding the disputed domain name was a simple misspelling of
Complainant’s mark and was
a classic example of typosquatting, which “renders the domain name confusingly similar to the altered
famous mark”.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments
unrefuted. In the absence of a
Response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly
contradicted by the evidence. Because Respondent has
failed to submit a Response, it has failed to propose any set of circumstances
that could substantiate its rights or legitimate interests in the disputed
domain name. See Parfums Christian
Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) finding that by
not submitting a Response, Respondent has failed to invoke any circumstance
which
could demonstrate any rights or legitimate interests in the domain name; 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 not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i),
nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). The record reveals
that Respondent’s domain name redirects
unsuspecting Internet users to a website that provides links to services that
are in competition
with Complainant’s banking services. The Panel infers that
Respondent commercially benefits from this diversion by receiving pay-per-click
fees from advertisers when Internet users follow the links on its website.
Respondent makes opportunistic use of Complainant’s mark
in order to capitalize
on the goodwill and fame associated with the MB FINANCIAL moniker; thus,
Respondent fails to establish rights
or legitimate interests in the domain
name. See 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; see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t 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”).
No
evidence before the Panel suggests Respondent is commonly known by the domain
name under Policy ¶ 4(c)(ii). Respondent’s WHOIS
information indicates that the
registrant of the disputed domain name is “LaPorte Holdings, Inc.” and not the
confusing second-level
domain that infringes on Complainant’s MB FINANCIAL mark.
Moreover, Respondent is not authorized or licensed to use Complainant’s
mark
for any purpose. 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
MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20,
2003) noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that Respondent was not “commonly known by”
the name GIRLS GON WILD or <girlsgonwild.com>.
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Although
Respondent’s registration and use of the subject domain name satisfies various
bad faith criteria under the Policy, the Panel
finds Respondent acted in bad
faith under Policy ¶ 4(b)(iv). Specifically, Respondent uses a confusingly
similar variation of Complainant’s
famous MB FINANCIAL mark within a domain
name to ensnare unsuspecting Internet users. Respondent then redirects the
users to its
website, which offers links to competing banking services. The
Panel infers that Respondent commercially benefits from this diversion
by
receiving pay-per-click fees from advertisers when Internet users follow the
links on its website. Such infringement is what the
Policy was intended to
remedy. See AutoNation Holding
Corp. v. Rabea Alawneh, D2002-0581 (WIPO May 2, 2002) (“The scope of
an ICANN proceeding is extremely narrow: it only targets abusive
cybersquatting, nothing
else”); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
finding that if Respondent profits from its diversionary use of Complainant's
mark when
the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent
is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
finding that in determining if a domain name has been registered in bad faith,
the Panel
must look at the “totality of circumstances”); see also Do the
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a
respondent to come forward to [contest complainant’s allegations] is tantamount
to
admitting the truth of complainant’s assertion in this regard”.
Respondent’s
removal of a single letter from Complaiant’s MB FINANCIAL mark, resulting in a
domain name that is confusingly similar
to the mark, is evidence of bad faith
registration and use of the disputed domain name. Respondent diverts Internet
users who accidentally
mistype Complainant’s mark to Respondent’s competing
website. The Panel finds that Respondent engaged in the practice of
typosquatting,
and therefore finds that Respondent registered and used the
disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of
the
Policy. See Nat’l Ass’n
of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is inherently parasitic
and of itself evidence of
bad faith”); see also Zone
Labs, Inc. v. Zuccarini, FA 190613 (Nat.
Arb. Forum Oct. 15, 2003) finding that Respondent registered and
used the <zonelarm.com> domain name in bad
faith pursuant
to Policy ¶ 4(a)(iii) because the name was merely a typosquatted
version of Complainant's ZONEALARM mark. "Typosquatting,
itself
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii).". See also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) finding that the
<dermatalogica.com> domain name was a typosquatted version of
Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy 4(a)(iii)”.
Respondent has
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet
users to businesses that offer
competing services with those services offered by Complainant. Respondent’s use
of the <mbfinacial.com> domain name establishes that Respondent
registered the domain name for the purpose of disrupting the business of a
competitor pursuant
to Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding
Respondent acted in bad faith by attracting Internet users to a website that
competes
with Complainant’s business; see
also 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 Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) finding that Respondent has
diverted business from Complainant to a competitor’s website in violation
of Policy
¶ 4(b)(iii).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known registered mark and
simply removes a single letter,
suggests that Respondent knew of Complainant’s rights in the MB FINANCIAL mark.
Additionally, Complainant’s
trademark registration on file at the United States
Patent and Trademark Office gave Respondent constructive notice of
Complainant’s
mark. Thus, the Panel finds that Respondent chose the <mbfinacial.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use
pursuant to Policy ¶
4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that the “domain names are so
obviously connected with the Complainants that the use or
registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”; see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
finding bad faith registration and use where it is “inconceivable that the
respondent could make
any active use of the disputed domain names without
creating a false impression of association with the Complainant”; see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
finding that Respondent demonstrated bad faith where Respondent was aware of
Complainant’s famous
mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the
domain
names; see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) determining that
Policy paragraph 4(b) sets forth certain circumstances, without limitation,
that shall be evidence of registration and use of a domain name in bad faith; see also 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 Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status
that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
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 <mbfinacial.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
December 28, 2004
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