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Generic Top Level Domain Name (gTLD) Decisions |
Manufacturers and Traders Trust Company
v. Michael Huang
Claim
Number: FA0411000367681
Complainant is Manufacturers and Traders Trust Company (“Complainant”),
represented by Paul I. Perlman, of Hodgson Russ LLP,
One M&T Plaza, Suite 2000, Buffalo, NY 14203. Respondent is Michael Huang (“Respondent”), 5 Newton
Road #8, Singapore, SG 307944.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwmandtbank.com>, registered with Moniker
Online Services, 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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
22, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 24, 2004.
On
November 22, 2004, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <wwwmandtbank.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services,
Inc. has verified that
Respondent is bound by the Moniker Online Services, 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 29, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 20, 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@wwwmandtbank.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 30, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Honorable Paul A. Dorf (Ret.) 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 <wwwmandtbank.com>
domain name is confusingly similar to Complainant’s M&T BANK mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwmandtbank.com> domain name.
3. Respondent registered and used the <wwwmandtbank.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant, Manufacturers and Traders Trust Company,
provides a wide range of banking services. Complainant holds several
registrations with the
United States Patent and Trademark Office for the M
& T mark (Reg. No. 918,217 issued August 10, 1971 and Reg. No. 2,656,920
issued December 3, 2002) and other M&T-related marks. Complainant first
began operations in 1856 under the mark MANUFACTURERS
AND TRADERS BANK.
Complainant’s banking network includes 650 branches and it provides ATM access
at more than 1,500 locations.
Complainant provides Internet banking to its customers through its
website at the <mandtbank.com> domain name. Additionally,
Complainant
owns registrations for the <mandtbank.net>, <mandtbank.org> and
<mandtbank.biz> domain names.
Complainant has used the M&T BANK mark in commerce since January 1,
1930 and has used its mark in its national advertising and
on its
<mandtbank.com> website.
Respondent registered the the <wwwmandtbank.com> domain name on April 30, 2003. Respondent is using the domain name to
divert Internet users to a website that features a generic search engine and
links to various banking organizations
unrelated to Complainant. Users who
reach the website also encounter numerous pop-up advertisements, which suggests
that Respondent
is benefiting financially based on the number of “hits” to its
website.
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 M&T mark through registration with
the United States Patent and Trademark
Office and by continuous use of its 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 and that Respondent has the
burden
of refuting this assumption).
Furthermore,
Complainant has also established common law rights in the M&T BANK mark.
Complainant has used the mark in commerce
since at least 1930 and has used the
mark in its national advertising for banking services. Complainant has also
reflected its mark
in its <mandtbank.com> website which it has promoted
in its national advertising. Thus, Complainant has provided evidence of
secondary meaning associated with its M&T BANK mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary
meaning was established); see also
S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum
March 13, 2003) (holding that Complainant established rights in the descriptive
RESTORATION GLASS mark
through proof of secondary meaning associated with the
mark).
The <wwwmandtbank.com>
domain name registered by Respondent is confusingly similar to Complainant’s
M&T BANK mark because the domain name incorporates
Complainant’s mark in
its entirety, deviating from the mark with irrelevant differences such as the
addition of the letter combination
“www” and the replacement of the “&”
symbol with the word “and.” The
addition of the letter combination “www” is insufficient to distinguish the
domain name, because it merely takes advantage of
a common typing error among
Internet users in omitting a period. Furthermore, replacing the ampersand with
the word “and” does not
negate the confusing similarity of the domain name,
because it is a common way of dealing with the fact that the ampersand symbol
cannot be used in a domain name. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that
the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT
&
LATO mark, because the ampersand symbol (&) is not reproducible in a
URL); see also 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”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <wwwmandtbank.com>
domain name. Respondent failed to respond to the Complaint and, therefore, the
Panel assumes that Respondent lacks rights and legitimate
interests in the
disputed domain names. Once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have rights or legitimate interests 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 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).
The <wwwmandtbank.com>
domain name registered by Respondent is a typosquatted version of
Complainant’s M&T BANK mark, which is evidence that Respondent
lacks rights
and legitimate interests in the disputed domain name. Furthermore, Respondent
is using the disputed domain name to divert
Internet users to a website that
features a generic search engine and displays links to various other banking
organizations in competition
with Complainant. Respondent’s use of a
typosquatted domain name to redirect Internet users seeking Complainant’s
products and services
to Respondent’s unrelated website featuring links to
Complainant’s competitiors is not 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 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-à-vis
Complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding
no rights or legitimate interests where Respondent used the typosquatted
<wwwdewalt.com>
domain name to divert Internet users to a search engine
webpage, and failed to respond to the Complaint); see also Nat’l
Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting as a means of redirecting consumers against their will to
another site, does not
qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”).
There is no
evidence in the record to suggest that Respondent is commonly known by the <wwwmandtbank.com>
domain name and Respondent has offered no proof that it is commonly known
by the domain name pursuant to Policy ¶ 4(c)(ii). Additionally,
Complainant has
not authorized Respondent to use its M&T BANK mark for any purpose. See
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark
and never applied
for a license or permission from Complainant to use the trademarked name); 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 Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
attempted to attract Internet users seeking Complainant’s M&T BANK goods
and services to Respondent’s commercial
website at the <wwwmandtbank.com>
domain name by creating a likelihood of confusion between Complainant’s mark
and the domain name. Respondent’s website presumably
generates income for
Respondent through the use of sponsored links to Complainant’s competitors and
pop-up advertisements. Therefore,
the Panel finds that Respondent’s practice of
diversion for commercial gain is evidence of bad faith registration and use
pursuant
to Policy ¶ 4(b)(iv). See 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)); see also Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract
users to a website sponsored by Respondent); 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).
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 registration and use. 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) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
Respondent’s
registration and use of the <wwwmandtbank.com> domain name to
divert Internet users interested in Complainant’s products and services to
Respondent’s website takes advantage of
a common typographical error made by
Internet users who inadvertently omit the period in the Internet address. This
practice is known
as typosquatting and it is evidence of bad faith registration
and use pursuant to Policy ¶ 4(a)(iii). See Black &
Decker Corp. v. Azra 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 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 RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb.
Forum Feb. 25, 2003) (inferring that Respondent’s registration of the
<wwwremax.com> domain name, incorporating
Complainant’s entire mark, was
done with actual notice of Complainant’s rights in the mark prior to
registering the infringing domain
name, evidencing bad faith).
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 <wwwmandtbank.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
January 13, 2005
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