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Generic Top Level Domain Name (gTLD) Decisions |
First United Bank & Trust Company v.
Jinseok Yang
Claim Number: FA0206000114649
PARTIES
Complainant
is First United Bank & Trust Company,
Durant, OK, USA (“Complainant”) represented by Michael D. McClintock, of McAfee
& Taft. Respondent is Jinseok Yang, Seoul, SOUTH KOREA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <firstunited.com>,
registered with Hangang Systems, 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 (the “Forum”) electronically
on June 19, 2002; the Forum received
a hard copy of the Complaint on June 24,
2002. The Complaint was provided in
both English and Korean.
On
June 21, 2002, Hangang Systems, Inc. confirmed by e-mail to the Forum that the
domain name firstunited.com is
registered with Hangang Systems, Inc. and that Respondent is the current
registrant of the name. Hangang
Systems, Inc. has verified that Respondent is bound by the Hangang Systems,
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
June 28, 2002, a Korean language Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of July 18, 2002 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@firstunited.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
July 24, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon.
Carolyn Marks Johnson 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.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Korean language Complaint
and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
The
<firstunited.com> domain name is identical to Complainant's FIRST
UNITED mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent failed to submit a Response.
FINDINGS
Complainant owns a trademark registration
on the Principal Register of the United States Patent and Trademark Office for
the mark
FIRST UNITED (Reg. No. 2,208,341).
Complainant uses the trademark in relation to banking and financing services. Complainant has used its FIRST UNITED mark
since 1997. Complainant operates an
online banking service at the domain name <firstunitedbank.com>.
Respondent registered the disputed domain
name on May 20, 2001. Respondent is
using the <firstunited.com> domain name to divert Internet users
to its hard-core pornography websites located at <real-porn.com> and
<sexyadong.com>. Complainant has
received numerous complaints from its customers after they have mistakenly gone
to <firstunited.com> instead of Complainant’s website located at
<firstunitedbank.com> and been routed to Respondent’s sites containing
material
they consider to be pornographic.
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 the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences as 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 through
registration with the United States Patent and Trademark Office and subsequent
continuous use
that it has rights in the FIRST UNITED mark. The domain name registered by Respondent,
<firstunited.com>, is identical to Complainant’s mark because it
incorporates Complainant’s entire FIRST UNITED mark and merely adds the generic
top-level domain name “.com.” The
addition of a generic top-level domain name is irrelevant when determining
whether a domain name is identical or confusingly similar
to Complainant’s
mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain
“.com” after the name POMELLATO is not relevant); see
also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1146 (9th
Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . .
assume, as a rule of thumb, that the domain name
of a particular company will
be the company name [or trademark] followed by ‘.com.’”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights to or Legitimate Interests
Respondent has failed to come forward
with a Response. Therefore it is presumed that Respondent has no rights or
legitimate interests
in the disputed domain name. See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no
legitimate interest in the domain names).
Furthermore, when Respondent fails to submit
a Response the Panel is permitted to make all inferences in favor of
Complainant. 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”).
Respondent is using a domain name that is
identical to Complainant’s FIRST UNITED mark to divert Internet users to a
website that
is unconnected to Complainant’s business, which features
pornographic material. The use of an
identical to domain name to divert Internet users interested in Complainant to
Respondent’s website is not considered
to be a bona fide offering good 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 Vapor Blast Mfg. Co. v.
R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding
that Respondent’s commercial use of the domain name to confuse and divert
Internet
traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding
that, because the Respondent's sole purpose in selecting the domain names was
to cause confusion with the
Complainant's website and marks, it's use of the
names was not in connection with the offering of goods or services or any other
fair use). Furthermore, the use of
Complainant’s mark in a domain name that diverts Internet users to a
pornographic website is also does not
create rights or legitimate interests
pursuant to Policy ¶¶ 4(c)(i) and (iii).
See Nat’l Football League Prop., Inc. v. One
Sex Entm’t Co.,
D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or
legitimate interests in the domain names <chargergirls.com>
and
<chargergirls.net> where the Respondent linked these domain names to its
pornographic website); see also MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial
gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material where such use is calculated
to mislead consumers and to tarnish the
Complainant’s mark).
No evidence in the record suggests that
Respondent is commonly known by the mark and domain name in dispute and
Respondent has not
come forward with any proof to establish that it is commonly
known as FIRST UNITED or <firstunited.com>. Therefore Respondent has not established
that it has rights or legitimate interests in the disputed domain name pursuant
to Policy
¶ 4(c)(ii). See 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); see also
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by
the disputed domain name
or using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s use of a domain name
identical to Complainant’s mark to divert Internet users to a pornographic
website is evidence of
bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to
provide a link to a pornographic site is evidence of
bad faith registration and
use); see also Ty, Inc. v. O.Z.
Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary
evidence, linking the domain names in question to graphic, adult-oriented
websites is evidence of bad faith).
Furthermore, Respondent’s use of a domain
name that is identical to Complainant’s FIRST UNITED mark in order to divert
Internet users
to a website unconnected to Complainant’s business is evidence
of bad faith use because Respondent is creating a likelihood of confusion
for
its own commercial gain. Therefore,
Respondent’s use of <firstunited.com> to divert Internet users to
<real-porn.com> and <sexyadong.com> is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv). See Drs.
Foster & Smith, Inc. v. 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 own website for commercial gain); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe
on Complainant’s
goodwill and attract Internet users to Respondent’s website).
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 the requested relief
shall be hereby
granted.
Accordingly, it is Ordered that the
domain name <firstunited.com> be transferred from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: August 7, 2002.
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