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Generic Top Level Domain Name (gTLD) Decisions |
World Savings Bank, FSB and Golden West
Financial Corporation v. IWN
Claim
Number: FA0412000376423
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.
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.
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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.
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.
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.
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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