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Generic Top Level Domain Name (gTLD) Decisions |
Huntington Bancshares Incorporated v.
Good Domains
Claim Number: FA0208000123867
PARTIES
Complainant
is Huntington Bancshares Incorporated,
Columbus, OH (“Complainant”) represented by Karen K. Hammond, of Porter,
Wright, Morris & Arthur LLP. Respondent is Good Domains,
Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <huntingtonnationalbank.com>,
registered with Enom, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 23, 2002; the Forum received
a hard copy of the
Complaint on August 28, 2002.
On
August 29, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <huntingtonnationalbank.com>
is registered with Enom, Inc. and that Respondent is the current registrant of
the name. Enom, Inc. has verified that
Respondent is bound by the Enom, 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
August 29, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
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@huntingtonnationalbank.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
October 8, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James
A. Carmody, Esq., 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Respondent’s
<huntingtonnationalbank.com> domain name is identical to
Complainant’s HUNTINGTON NATIONAL BANK mark as well as confusingly similar to
its registered Huntington Banks
mark.
2.
Respondent
does not have rights to or legitimate interests in the <huntingtonnationalbank.com>
domain name.
3.
Respondent
registered and used the <huntingtonnationalbank.com> domain name
in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
FINDINGS
Complainant is a well-known bank holding
company founded in 1866 whose subsidiaries provide a wide range of banking and
financial
related services throughout the United States. Complainant provides services in its 300+
regional banking offices and through its website at
<huntington.com>. Complainant
owns registered marks with the United States Trademark and Patent Office
(“USTPO”) for HUNTINGTON, Reg. No. 2,413,905;
HUNTINGTON BANKS, Reg. No.
2,475,384; and HUNTINGTON BANC SHARE Reg. No. 1,288,158. Complainant is also commonly known by its
service mark HUNTINGTON NATIONAL BANK.
Through these marks, Complainant has become well known and identifiable
as a source of goods and services of a certain distinguished
level.
Respondent registered the disputed domain
name on November 1, 2001. Respondent is
in the business of selling domain names on the Internet for profit. Respondent has redirected Internet traffic
from the disputed domain name to no less than five (5) other websites. In November and December 2001, Respondent
linked the disputed domain name to <abortionismurder.org>, which resolves
to a website
that contains graphic and disturbing images of aborted
fetuses. In January 2002, Respondent
linked the disputed domain name to <ewtn.com>. That domain name resolves to a website that advertises the
Eternal World Television Network, a Global Catholic Network. In June 2002, Respondent linked the disputed
domain name to <cyberpills.com>.
That domain name connects to a website that is an online prescription
drug ordering service. In July and
August 2002, Respondent linked the disputed domain name to
<e-scripts-md.com>. That domain
name corresponds with a website that offers online medical consultation and
prescription drug services. And
finally, at the time this action was commenced, Respondent was linking the
disputed domain name to <pillstore.com>, which
resolves to an online
prescription drug ordering service.
Respondent has had a “domain for sale” offer on the WhoIs information
since registration and has offered to sell the domain name several
times for as
much as $5,000.00.
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 it considers appropriate
pursuant to paragraph 14(b) 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 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 and/or Confusingly Similar
Complainant has established rights in
both the HUNTINGTON and HUNTINGTON NATIONAL BANK marks through registration
with the USTPO as
well as continuous use and affiliation with the marks.
Respondent’s <huntingtonnationalbank.com>
domain name is identical to the service mark HUNTINGTON NATIONAL BANK used by
Complainant. It is not sufficient to add “.com” to
make a domain name distinct
from Complainant’s mark. State Fair of Texas v. State Fair Guides,
FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Complainant has rights
in the registered marks, STATE FAIR OF TEXAS and TEXAS
STATE FAIR and
therefore, Respondent’s domain names <statefairoftexas.com> and
<texasstatefair.com> are identical to
Complainant’s marks, except for the
addition of the domain name level designation ".com"); Visit Am., Inc. v. Visit Am., FA 95093
(Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the
Internet address and does not add source identity
significance).
Furthermore, Respondent’s <huntingtonnationalbank.com>
domain name is confusingly similar to the registered mark HUNTINGTON used by
Complainant. The domain name is
confusingly similar since Complainant’s entire mark is used within the disputed
domain name. Customers may believe that
there is an association in fact between both parties when in truth none exists. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb.
Forum Dec. 18, 2000) (finding that confusion would result when Internet users,
intending to access Complainant’s
website, think that an affiliation of some
sort exists between Complainant and Respondent, when in fact, no such
relationship would
exist).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has not submitted a reply to
Complainant’s allegations, thereby permitting the Panel to conclude that all
reasonable inferences
made by Complainant are true and accurate unless there is
evidence that is clearly contradictory.
Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant
to be deemed true); Desotec N.V. v. Jacobi Carbons AB, D2000-1398
(WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that
Complainant’s allegations are true unless
clearly contradicted by the
evidence). There is no evidence that
contradicts the allegations of Complainant.
Complainant has presented evidence that substantiates its claim that
Respondent has no legitimate rights or interests in the contested
domain name.
Complainant has produced substantial
evidence that indicates Respondent has used the disputed domain name to
redirect Internet users
to various websites, including the “abortion is murder”
website, and none of which were affiliated with Complainant. Moreover, Respondent has asked for
compensation well beyond its initial registration fee and out-of-pocket
expenses. Panels have founds such use
fails to demonstrate rights or legitimate interests in similar circumstances. See
Rittenhouse Dev. Co. v. Domains For Sale, Inc.,
FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (“by linking the confusingly similar domain name to an
“Abortion is Murder” website and subsequently asking for compensation beyond
out-of-pocket costs to transfer the domain name, Respondent has not
demonstrated a right or legitimate interest in the disputed domain
name”).
Respondent deliberately registered the
disputed domain name to capitalize on Complainant’s commonly known mark. There are no rights or legitimate interests
when one tries to benefit from the unauthorized use of another’s mark. See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to
profit using the Complainant’s mark by redirecting
Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored
by Respondent hardly seems legitimate”).
There is no evidence before the Panel
that establishes a viable connection between the domain name <huntingtonnationalbank.com>
and Respondent’s business. On the
contrary, Complainant has produced significant evidence to establish itself as
primary holder of all legitimate rights and
interests in the HUNTINGTON and
HUNTINGTON NATIONAL BANK marks. Since
Respondent is not known by, or associated with the HUNTINGTON and HUNTINGTON
NATIONAL BANK marks, it is reasonable to conclude
that Respondent has no rights
to the domain name according 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because
it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering
of goods and services or for a legitimate
noncommercial or fair use).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has thus been satisfied.
Registration and Use in Bad Faith
Based on the fame of Complainant’s
HUNTINGTON and HUNTINGTON NATIONAL BANK marks, coupled with its reputation as a
national banking
institution since 1866 and its listing on the Principal
Register of the USPTO, it can be inferred that Respondent had knowledge of
Complainant’s rights in the HUNTINGTON and HUNTINGTON NATIONAL BANK marks when
it registered the disputed domain name.
Registration of a domain name that incorporates Complainant’s marks,
despite knowledge to the contrary, is an indication of bad faith
pursuant to
Policy ¶ 4(a)(iii). Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can
infer an intent to
confuse"); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly
known mark at the time of registration).
Respondent’s use of the infringing domain
name illustrates bad faith registration and use pursuant to Policy ¶
4(b)(iv). By redirecting unwary
Internet users to other websites, and presumably doing it for monetary gain,
Respondent is acting in bad faith.
Respondent has intentionally attempted to
attract Internet users to its website by creating a likelihood of confusion as
to the sponsorship
of its websites. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding
that Respondent’s expected use of the domain name <redbull.org> would
lead people
to believe that the domain name was connected with Complainant, and
thus is the equivalent to bad faith use); see also Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15,
2001) (finding that Respondent's registration and use of the famous CHANEL mark
suggests opportunistic
bad faith).
Finally, a party has registered and used
the domain name in bad faith if it utilizes the well known mark of someone else
and links
the domain name with a website that depicts patently explicit and odious images. Rittenhouse
Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum
Apr. 8, 2002) (finding that “when a party registers and uses a domain name that
incorporates a well-known
mark and connects the domain name with a website that
depicts offensive images,” the party has registered and used the disputed
domain
name in bad faith). By
connecting <huntingtonnationalbank.com>
to <abortionismurder.org>, Respondent
has deliberately acted in bad faith.
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel hereby concludes that the requested
relief shall
be GRANTED.
Accordingly, it is ordered that the
domain name <huntingtonnationalbank.com> be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 11, 2002
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