DECISION

LaSalle Bank Corporation v. Domain Active Pty. Ltd.

Claim Number:  FA0404000257756

PARTIES

Complainant is LaSalle Bank Corporation (“Complainant”), represented by Carol A. Genis of Bell Boyd & Lloyd LLC, 70 West Madison, Suite 3300, Chicago, IL 60602.  Respondent is Domain Active Pty. Ltd. “Respondent”), GPO Box 262, Clayfield, Queensland 4011 Australia. 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lasalle-banks.com>, registered with Fabulous.com Pty Ltd.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 20, 2004; the Forum received a hard copy of the Complaint on April 22, 2004.

On April 26, 2004, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that the domain name <lasalle-banks.com> is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 May 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 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@lasalle-banks.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 June 15, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <lasalle-banks.com> domain name is confusingly similar to Complainant’s LASALLE BANK mark.

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

3. Respondent registered and used the <lasalle-banks.com> domain name in bad faith.

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

FINDINGS

Complainant, LaSalle Bank Corporation, is one of the largest bank holding companies in the Midwestern United States. Along with its principal subsidiaries LaSalle Bank N.A. and Standard Federal Bank N.A., Complainant provides banking and financial services to individuals, small businesses, middle market companies and institutions throughout the U.S.

Complainant has exclusively and continuously used its LASALLE BANK mark and its derivatives since at least as early as 1940 for banking and financial-related goods and services.  Complainant owns multiple U.S. Trademark Registrations for its LASALLE BANK marks (Reg. No. 1,306,343 issued November 11, 1984, Reg. No. 1,898,288 issued June 6, 1995 and Reg. No. 2,317,980 issued February 15, 2000) used in conjunction with general banking services.  In addition, Complainant also owns multiple U.S. Trademark Registrations for its LASALLE BANK marks (Reg. No. 2,078,343 issued July 15, 1997, Reg. No. 2,318,091 issued February 15, 2000, Reg. No. 2,734,093 issued July 8, 2003 and Reg. No. 2,739,889 issued July 22, 2003) used in conjunction with its sponsorship of athletic events.

Complainant also owns and operates <lasallebank.com> and <lasallebanks.com>, offering information, products and services related to the Complainant’s financial business. 

Respondent registered the disputed domain name on July 3, 2003 and is using the domain name to redirect Internet users to an advertising portal site for multiple businesses, including companies offering financial services.  Respondent earns a commission each time an Internet user links to one of Respondent’s advertisers. 

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 it has rights in the LASALLE BANK mark through registration with the United States Patent and Trademark Office and through continued use of its marks in commerce for the last sixty-four years.  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 domain name registered by Respondent, <lasalle-banks.com>, is confusingly similar to Complainant’s LASALLE BANK mark because the only difference between the two is the addition of a hyphen in the domain name and the letter “s” at the end.  Neither the hyphen nor the letter “s” significantly distinguish the domain name from the mark under Policy ¶ 4(a)(i).  See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.”); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to Complainant's EASYJET mark and therefore confusingly similar); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).

 

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

Rights or Legitimate Interests

Complainant assets that Respondent has no rights or legitimate interests in the disputed domain name.  Since Respondent did not file a Response, the Panel may accept any reasonable assertions by Complainant as true.  See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent is wholly appropriating Complainant’s mark to advertise services similar to those of Complainant’s.  The Panel finds that this use of a domain name that is confusingly similar to Complainant’s mark is not 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).  SeeYahoo! Inc. v. Web Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

Nothing in the WHOIS domain name registration information suggests that Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 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).

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered the domain name for commercial gain.  Respondent’s domain name diverts Internet users wishing to search under Complainant’s mark to Respondent’s commercial website through the use of a domain name confusingly similar to Complainant’s mark.  Respondent earns a commission each time an Internet user links to one of Respondent’s advertisers.  Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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 Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Respondent’s registration of the domain name, a domain name that incorporates Complainant’s well-known registered mark in its entirety and deviates only with the addition of a hyphen and the letter “s”, suggests that Respondent knew of Complainant’s rights in the LASALLE BANK mark.  The registration of a domain name wholly incorporating another’s trademark, despite actual or constructive knowledge of the trademark owner’s rights is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

The Panel finds that Complainant fulfilled 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 <lasalle-banks.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  June 28, 2004

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