DECISION

Whitney National Bank v. Henry Tsung

Claim Number:  FA0401000227652

PARTIES

Complainant is Whitney National Bank (“Complainant”), represented by Raymond G. Areaux, of Carver Darden Koretzky Tessier Finn Blossman & Areauz LLC, 1100 Poydras Street, Suite 2700, New Orleans, LA, USA 70163. Respondent is Henry Tsung (“Respondent”), No. 2, Alley 4, Lane 177, Swei Road, Taipei, Taiwan 356021.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwwhitneybank.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.com (hereinafter “Dotregistrar.com”).

PANEL

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 19, 2004; the Forum received a hard copy of the Complaint on January 19, 2004.

On January 21, 2004, Dotregistrar.com confirmed by e-mail to the Forum that the domain name <wwwwhitneybank.com> is registered with Dotregistrar.com and that Respondent is the current registrant of the name. Dotregistrar.com has verified that Respondent is bound by the 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 January 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 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@wwwwhitneybank.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 February 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <wwwwhitneybank.com> domain name is confusingly similar to Complainant’s WHITNEY BANK mark.

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

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

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

FINDINGS

Complainant, Whitney National Bank, has operated under the WHITNEY BANK mark for over 120 years in connection with banking and financial services. Through its bank and affiliates Complainant offers commercial, retail and international banking services thoughout the Gulf South region of the United States. In addition to its widespread use of the WHITNEY BANK mark in commerce, Complainant has obtained numerous registrations for the WHITNEY mark, also for use in connection with banking services. Complainant’s registrations for the WHITNEY mark, such as U.S. Reg. No. 2,032,935, predate Respondent’s registration of the disputed domain name. Complainant also registered and used the <whitneybank.com> domain name prior to Respondent’s registration and use of the disputed domain name.

Respondent, Henry Tsung, registered the <wwwwhitneybank.com> domain name on October 28, 2003. The website associated with the disputed domain name contains a series of hyperlinks to online coupons, with titles such as “Free Brand Name Coupons” and “Free Local Store Coupons.”

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 WHITNEY BANK mark through use of the mark in commerce for over 120 years. Additionally, Complainant’s rights in the WHITNEY mark (for banking services) are established through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office.

Respondent’s <wwwwhitneybank.com> domain name is confusingly similar to Complainant’s common-law WHITNEY BANK mark. Adding the prefix for the world-wide web to Complainant’s mark does not diguise the fact that the dominant feature of the domain name is Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature).

Accordingly, the Panel finds that the <wwwwhitneybank.com> domain name is confusingly similar to Complainant’s WHITNEY BANK mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Previous Panels have held that a respondent’s use of the “www” prefix in front of a valid trademark for use in a domain name operates as prima facie evidence that respondent has no rights and legitimate interests in the domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant). Respondent has not filed a Response rebutting Complainant’s case, but even if it had, its use of the disputed domain name as a hook to draw Internet users to a commercial coupon website, a website bearing no relation to the term “Whitney Bank,” bolsters Complainant’s unrebutted claim that Respondent lacks rights and legitimate interests in the disputed domain name. See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (finding that Respondent has no rights or legitimate interests in the <wwwremax.com> domain name as it is merely using Complainant’s mark to earn profit from pop-up advertisements).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwwhitneybank.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain name in an attempt to ensnare Internet users seeking Complainant’s <whitneybank.com> domain name. Respondent’s typosquatting activities lead unsuspecting Internet users into accessing Respondent’s commercial coupon website, from which it presumably profits. By registering a domain name that uses Complainant’s mark to attract Internet users to its own website for commerical gain, Respondent registered and used the disputed domain name in bad faith. See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that the absence of a dot between the “www”and “canadiantire.com” in the <wwwcanadiantire.com> domain name was likely to confuse Internet users and evidences bad faith registration and use of the domain name); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements).

The Panel thus finds that Respondent registered and used the <wwwwhitneybank.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

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 <wwwwhitneybank.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 3, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/371.html