DECISION

Domain Bank, Inc. v. John Smith

Claim Number:  FA0402000239687

PARTIES

Complainant is Domain Bank, Inc. (“Complainant”) represented by Bret A. Fausett, of Hancock, Rothert & Bunshoft, LLP, 515 So. Figueroa Street, 17th Floor, Los Angeles, CA 90071-3334.  Respondent is John Smith (“Respondent”), Strada Gazduirii numarul 99 Bucaresti, Bucaresti 7000, Romania.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bestdomainbank.com>, registered with Wild West Domains, 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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 24, 2004; the Forum received a hard copy of the Complaint on February 23, 2004.

On February 24, 2004, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <bestdomainbank.com> is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 March 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 22, 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@bestdomainbank.com by e-mail.

Subsequently, the Panel received information from Respondent which was not submitted in accordance with the rules and did not consider that material.

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 March 25, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 <bestdomainbank.com> domain name is confusingly similar to Complainant’s DOMAIN BANK mark.

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

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

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

FINDINGS

Complainant, Domain Bank, Inc., is an ICANN-accredited domain name registrar founded in 1997. Complainant is one of the oldest domain name registrars in the world. Complainant provides online domain name recovery, domain appraisal services, and online telephone customer support.

Complainant holds a trademark registration with the United States Patent and Trademark Office for the DOMAIN BANK mark (Reg. No. 2238699, issued April 13, 1999).

Complainant’s main website is located at the <domainbank.com> domain name where customers can conduct their business online with Complainant.

Respondent registered the disputed domain name on August 5, 2001. Respondent is also in the business of providing domain name registration services. Respondent is using the website to divert Internet users to Respondent’s website which offers nearly identical services to those offered by Complainant.

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 that is has rights in the DOMAIN BANK mark through registration with the United States Patent and Trademark Office and through the use of its mark in commerce for the last five years. Respondent’s <bestdomainbank.com> domain name is confusingly similar to Complainant’s  DOMAIN BANK mark because the domain name incorporates Complainant’s mark in its entirety and only deviates with the addition of the generic term “best.” The mere addition of this generic term to Complainant’s mark does not remove the domain name from the realm of confusing similarity with regard to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry.”); see also; see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant urges that Respondent has no rights or legitimate interests in the disputed domain name. Based on Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); 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).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as 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 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 the domain name to benefit from Complainant’s goodwill and to intercept Internet traffic intended for Complainant. The use of a domain name confusingly similar to Complainant’s mark to redirect Internet users interested in Complainant’s services to a directly competing website that offers domain name registration services identical to Complainant’s services 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 pursuant to Policy ¶ 4(c)(iii). See Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[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.”).

Moreover, Respondent has offered no proof and no evidence in the record suggests that Respondent is commonly known by <bestdomainbank>. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); 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).

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

Registration and Use in Bad Faith

Respondent registered the domain name for its own commercial gain. Respondent’s domain name diverts Internet users who intend to search under Complainant’s mark to a website sponsored by Respondent that directly competes with Complainant’s business through the use of a domain name confusingly similar to Complainant’s mark. This practice of diversion for commercial gain evidences bad faith registration of and use of a domain name pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); 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).

Respondent registered the domain name for the primary purpose of disrupting Complainant’s business by diverting Internet traffic intended for Complainant to Respondent’s website which offers directly competing domain name registration services. Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business); see also Puckett, Individually 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)).

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <bestdomainbank.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  April 7, 2004

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