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World Savings Bank, FSB and Golden West Financial Corporation v. IWN [2005] GENDND 5 (27 January 2005)


National Arbitration Forum

national arbitration forum

DECISION

World Savings Bank, FSB and Golden West Financial Corporation v. IWN

Claim Number:  FA0412000376423

PARTIES

Complainant is World Savings Bank, FSB and Golden West Financial Corporation (“Complainant”), represented by Ian K. Boyd of Harvey Siskind Jacobs LLP, Four Embarcadero Center, 39th Floor, San Francisco, CA 94111.  Respondent is IWN (“Respondent”), P.O. Box 53, Lake Forest, CA 92609.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <worldsavings.net>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically December 7, 2004; the National Arbitration Forum received a hard copy of the Complaint December 13, 2004.

On December 9, 2004, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <worldsavings.net> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, 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 December 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2005, 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@worldsavings.net 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 January 12, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name that Respondent registered, <worldsavings.net>, is identical to Complainant’s WORLD SAVINGS mark.

2. Respondent has no rights to or legitimate interests in the <worldsavings.net> domain name.

3. Respondent registered and used the <worldsavings.net> domain name in bad faith.

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

FINDINGS

Complainant is in the savings and loan business, including mortgages and banking.  Complainant, World Savings, is a wholly owned subsidiary of Complainant, Golden West, a Fortune 500 company and one of the largest financial institutions in the United States.  Complainant, World Savings, is the nation’s second largest thrift operation having more than 100 billion dollars in assets, 276 savings branches in 10 states and lending outlets in 38 states.  Complainant is headquartered in California and has well over 100 savings branches and loan offices throughout the state. 

Complainant holds registrations with the United States Patent and Trademark Office for the WORLD SAVINGS mark (including Reg. No. 1,541,875 issued May 30, 1989; Reg. No. 2,604,651 issued August 6, 2002; and Reg. No. 2,876,514 issued August 24, 2004), the WORLD SAVINGS AND LOAN ASSOCIATION mark (Reg. No. 1,188,909 issued February 2, 1982) and other WORLD marks.  Furthermore, Complainant has used the WORLD SAVINGS mark in commerce since at least 1960. 

Complainant also owns domain name registrations for the <worldsavings.com>, <worldsavings.biz>, <worldsavings.info>, <worldsavings.org>, <worldsavingsandloan.com>, <worldsavingsandloan.net>, <worldsavingsandloan.org>, <worldsavingsandloan.biz>, <worldsavingsandloan.info>, <worldsavingsbank.com>, <worldsavingsbank.net>, <worldsavings.org>, <worldsavingsbank.biz>, <worldsavingsbank.info> and <worldfinancial.com> domain names.  The website at the <worldsavings.com> domain name is Complainant’s primary location where Complainant offers its on-line banking services and information about Complainant to its customers and potential customers. 

Respondent registered the <worldsavings.net> domain name November 4, 2001.  Respondent is using the website to divert Internet users to a website that features a generic search engine and offers links to various services in competition with Complainant’s financial products and services.  Additionally, the website contains a link to an advertisement for Complainant’s certificates of deposit.  Clicking on the advertisement directs the user directly to Complainant’s website.

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 Complainant to 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 to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights in the WORLD SAVINGS mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last forty-five 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 and that Respondent has the burden of refuting this assumption).

The <worldsavings.net> domain name registered by Respondent is identical to Complainant’s WORLD SAVINGS mark as the domain name incorporates Complainant’s mark in its entirety, differing only by the omission of a space and the addition of the generic top-level domain (gTLD) “.net.”  The Panel concludes that the omission of a space in a mark and the addition of a gTLD are both irrelevant to determining this element of the Policy and do not negate the identical nature of the domain name.  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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant established that it has rights and alleged that Respondent has no such rights or legitimate interests in the <worldsavings.net> domain name, which contains an identical version of Complainant’s WORLD SAVINGS mark.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  However, Respondent has failed to respond to the Complaint and the Panel assumes as a result that Respondent lacks rights and legitimate interests in the disputed domain name.  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); 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).

The Panel further finds that Respondent is using the <worldsavings.net> domain name to acquire referral fees by linking Internet users to a website that displays a generic search engine and numerous links to various products and services, including Complainant’s products and services and financial products and services in competition with Complainant.  The Panel finds that Respondent’s use of a domain name identical to Complainant’s registered WORLD SAVINGS mark to divert Internet users seeking Complainant’s products and services to Respondent’s website designed to offer Complainant’s products and services without authorization and products and services in competition with Complainant is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods, is not a bona fide use); 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).   

Additionally, no evidence in the record suggests that Respondent is commonly known by the <worldsavings.net> domain name and Respondent has provided no such proof to establish that it has rights to or legitimate interests in the disputed domain name.  Furthermore, no relationship has been shown to exist between Complainant and Respondent and Complainant alleged that it has not authorized Respondent to use its WORLD SAVINGS mark.  Therefore, the Panel concludes that Respondent has not established that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleged that Respondent registered and used the disputed domain name in bad faith.  Respondent is using the <worldsavings.net> domain name to intentionally attempt to attract Internet users interested in reaching Complainant’s <worldsavings.com> website who type the gTLD “.net” instead of “.com.”  Furthermore, Respondent presumably reaps commercial benefit from these diversions through referral fees from links to other commercial websites, some of which offer Complainant’s products and services without authorization or, alternatively, offer the products and services that compete with those of Complainant.  Therefore, the Panel determines that Respondent’s attempts to divert Internet users for commercial gain by attracting Internet users to Respondent’s website through a likelihood of confusion with Complainant’s mark is evidence of 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); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website).

Complainant is a provider of financial services, including mortgages and banking.  Respondent’s <worldsavings.net> domain name links to a website that that offers links to products and services related to savings, personal finances, home improvement mortgages and many others in competition with those of Complainant.  The Panel finds that Complainant’s use of a domain name identical to Complainant’s WORLD SAVINGS mark to offer products and services in direct competition with Complainant is evidence of bad faith registration and use 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 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 Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name that was confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site). 

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 <worldsavings.net> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: January 27, 2005.


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