DECISION

California National Bank v. Emil Banayan

Claim Number:  FA0310000203123

PARTIES

Complainant is California National Bank, Los Angeles, CA (“Complainant”) represented by Jesse Torres, 221 South Figueroa Street, MC 803, Los Angeles, CA 90012.  Respondent is Emil Banayan, P.O. Box 49181, Los Angeles, CA 90049 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <californianationalbank.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 10, 2003; the Forum also received a hard copy of the Complaint on the same day.

On October 15, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <californianationalbank.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has 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 October 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 5, 2003 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@californianationalbank.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 November 7, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 makes the following assertions:

1. Respondent’s <californianationalbank.com> domain name is identical to Complainant’s CALIFORNIA NATIONAL BANK mark.

2. Respondent does not have any rights or legitimate interests in the <californianationalbank.com> domain name.

3. Respondent registered and used the <californianationalbank.com> domain name in bad faith.

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

FINDINGS

Complainant has been continuously using the CALIFORNIA NATIONAL BANK mark in commerce since December 30, 1997, after authorization from the Western District Office of the Comptroller of the Currency.  Complainant’s parent company, FBOP Corporation, filed for registration of the CALIFORNIA NATIONAL BANK mark with the United States Patent and Trademark Office (“USPTO’) on December 4, 1997 and the mark was successfully registered on March 5, 2002 (Reg. No. 75400354). 

Respondent registered the disputed domain name, <californianationalbank.com>, on May 24, 1999.  Respondent does not operate a bank and is not using the domain name to host any substantive website content.  Complainant offered to pay Respondent $1000 for the domain name.  Respondent made a counteroffer of $4700.

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 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.

Identical and/or Confusingly Similar

Complainant has evidenced rights in the CALIFORNIA NATIONAL BANK mark through registration with the USPTO and continuous use in commerce since 1997.  Respondent did not register <californianationalbank.com> until approximately eighteen months after Complainant’s filing with the USPTO.  See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960 (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

Respondent’s <californianationalbank.com> is identical to Complainant’s CALIFORNIA NATIONAL BANK mark because it incorporates the entire mark, with the only distinction being the addition of “.com.”  Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that <bodybyvictoria.com> is identical to Complainant’s BODY BY VICTORIA mark).

Therefore, Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has asserted Respondent lacks rights and legitimate interests in <californianationalbank.com >.  Therefore, the burden shifts to Respondent to provide evidence of its rights or legitimate interests.  Since Respondent has not submitted a Response to the Complaint, this Panel may infer that it lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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); 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 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).

Four years have elapsed since registration of the domain name and Respondent has yet to use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use, pursuant to Policy ¶¶ 4(c)(i) & (iii).  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where Respondent did not prepare to use the domain name in connection with a bona fide offering of goods and services and the domain name was not associated with a website); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that Respondent had not used the domain names in connection with any type of bona fide offering of goods and services).  

Further evidence of Respondent’s lack of rights or legitimate interests is that it offered to sell the domain name to Complainant for a substantial profit.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Am. Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum March 4, 2003) (stating that “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”).

There is no evidence advanced to show Respondent was commonly known by 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 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").

Therefore, Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s passive holding of the disputed domain name can, alone, create the inference of bad faith registration and use.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

Furthermore, Respondent offered to sell the domain name to Complainant, the owner of the CALIFORNIA NATIONAL BANK mark, for $4700, an excessive price in comparison to Respondent’s out-of-pocket expenses relating to the registration of the name.  This activity demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).  Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer, rejected Complainant’s nominal offer of the domain in lieu of greater consideration); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

Therefore, Complainant has satisfied Policy ¶ 4(a)(iii).

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 <californianationalbank.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., , Panelist

Dated:  November 11, 2003

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