Generic Top Level Domain Name (gTLD) Decisions

The Complainant is MBNA America Bank, Wilmington, DE, USA ("Complainant") represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn. The Respondent is John Zuccarini aka Cupcake Patrol, Andalusia, PA, USA ("Respondent").

The domain name at issue is "mbnanetacess.com" registered with CORE.

On Feburary 5, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 4, 2001; the Forum received a hard copy of the Complaint on January 8, 2001.

On January 5, 2001, CORE confirmed by e-mail to the Forum that the domain name "mbnanetacess.com" is registered with CORE and that the Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE 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 January 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 29, 2001 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@mbnanetacess.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.

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 the Respondent.

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

A. Complainant alleges the following:

Complainant owns a federal trademark registration for the mark MBNA since 1985. In addition, Complainant owns numerous federal trademark registrations, and pending trademark applications, for marks that incorporate the name and mark MBNA. Complainant uses the MBNA Marks in connection with banking and related services.

Complainant uses several of its MBNA Marks in connection with domain names to provide various services over the Internet. For example, Complainant operates Web sites under the domain names mbna.com and mbnanetaccess.com. The MBNA Marks, including the mark MBNA NET ACCESS, are used extensively at these Web sites, which are a significant method of promoting Complainant’s services.

Because of substantial advertising expenditures and sales, the distinctive MBNA Marks have become well-known and famous among members of the purchasing public. Each year millions of Complainant’s customers obtain services offered under the MBNA Marks; millions more are exposed to said marks through advertising and promotion.

In July, 2000, many years after Complainant's adoption and first use of its MBNA Marks, and long after the MBNA Marks became well-known and famous, Respondent registered the domain name mbnanetacess.com for the bad faith purpose of profiting from the goodwill Complainant has created in its MBNA Marks. The domain name is confusingly similar to the MBNA Marks and is nearly identical to the mark MBNA NET ACCESS.

Respondent has no rights or legitimate interests in respect to the domain name. Respondent’s bad faith use of the domain name is demonstrated by Respondent’s activation of the domain name by linking it to a series of commercial Web sites that automatically open when an Internet user types in the domain name "mbnanetacess.com." Respondent intentionally chose this domain name in the hopes that innocent consumers attempting to visit MBNA’s Web site will inadvertently misspell the legitimate domain name "mbnanetaccess.com" and be led unknowingly to Respondent's commercial sites. Many of the Web sites that open under the Infringing Domain are operated by Respondent and promote his services; the other Web sites are operated by unrelated entities that pay Respondent a referral fee for each new visitor that Respondent directs to the sites.

Respondent has shown a significant pattern of registering domain names that infringe upon famous names and marks. For example, Respondent registered the following domain names:

Domain Name Mark Infringed

"usatodaysports.com" USA TODAY

"tacobelldog.com" TACO BELL

"starwarspics.com" STAR WARS

At least four similar proceedings were filed against Respondent under ICANN’s Uniform Domain Name Dispute Resolution Policy. In all four proceedings, the arbitration panels found that Respondent had registered and used the domain names in bad faith. Similarly, the United States District Court for the Eastern District of Pennsylvania has held in two separate federal lawsuits that Respondent is a bad faith cybersquatter. In each of these cases, Respondent’s actions were nearly identical to those in this proceeding.

B. No submission from Respondent has been received by the Panel.

The Rules for Uniform Domain name Dispute Resolution Policy (the "Rules") state the following with regard to default cases:

In this case, Respondent has not submitted a response, and therefore this Panel may infer, for the purposes of this decision, that the averments in the complaint are 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").

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The domain name mbnanetacess.com is confusingly similar to the mark MBNA NET ACCESS. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark); State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s mark "State Farm"). Therefore, Complainant has met the requirement of Policy ¶ 4(a)(i).

Respondent’s use of the domain name to redirect Internet users to his own commercial web sites and other commercial web sites is neither a bona fide offering of goods or services, nor a legitimate noncommercial use. Policy ¶ 4(c)(i), 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. The Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); North Coast Medical, Inc. v Allegro Medical, FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its website). Moreover, Respondent is not commonly known by the domain name. Policy ¶ 4(c)(ii). Thus, Complainant has satisfied the Policy ¶ 4(a)(ii) requirement.

Respondent’s use of the domain name to attract Internet users to his own web site and other on-line locations, for commercial gain, demonstrates his bad faith. Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v Jaspreet Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its website, consequently the Respondent has violated Policy ¶4(b)(iv) by attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark); Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).

names and marks. This fact demonstrates Respondent’s bad faith. Policy ¶ 4(b)(ii). See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent engaged in a pattern of conduct, by registering over fifty domain names such as <amazondirect.com> and <lycosdirect.com>, and intended to prevent holders from using their marks in corresponding domain names); Encyclopaedia Britannica Inc. v Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others). Therefore, Complainant has met the bad faith requirement under Policy ¶ 4(a)(iii).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, mbnanetacess.com, be transferred from the Respondent to the Complainant.