DECISION

Nevada State Bank v. Modern Limited - Cayman Web Development a/k/a Administrator Domain

Claim Number:  FA0310000204063

PARTIES

Complainant is Nevada State Bank (“Complainant”), represented by Ronald D. Green Jr., of Quirk & Tratos, 3773 Howard Hughes Parkway, Suite 500 North, Las Vegas, NV 89109.  Respondent is Modern Limited - Cayman Web Development a/k/a Administrator Domain  (“Respondent”), P.O. Box 908, George Town, Grand Cayman KY, Cayman Islands.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nevadastatebank.com>, registered with Address Creation.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 20, 2003; the Forum received a hard copy of the Complaint on October 24, 2003.

On October 27, 2003, Address Creation confirmed by e-mail to the Forum that the domain name <nevadastatebank.com> is registered with Address Creation and that Respondent is the current registrant of the name. Address Creation has verified that Respondent is bound by the Address Creation 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 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 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@nevadastatebank.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 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 <nevadastatebank.com> domain name is identical to Complainant’s NEVADA STATE BANK mark.

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

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

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

FINDINGS

Complainant, Nevada State Bank, is a full service bank. Complainant has continuously used the NEVADA STATE BANK mark since 1959 in connection with advertising and promoting the bank in the United States and around the world.  Complainant is also the holder of a pending trademark application (application number 76,485,036, filed for application on February 27, 2003) for the NEVADA STATE BANK mark with the United States Patent and Trademark Office (“USPTO”).  

Today, Complainant has sixty-three branches throughout the State of Nevada and is the fourth largest commercial bank in Nevada.  Complainant’s clientele is extremely diverse, hailing from all fifty states and numerous international countries.  Complainant has served hundreds of thousands of customers and has handled millions of transactions under its NEVADA STATE BANK mark.

Respondent has no connection or affiliation with Complaint and has not received any license or consent, express or implied, to use Complainant’s NEVADA STATE BANKS mark. 

Respondent registered the <nevadastatebank.com> domain name on April 16, 2002.  Since Respondent registered the domain name, it has not used the domain in connection with an active website or for any other purpose.

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

Registration of a trademark is not required for Complainant to establish rights in the mark under the Policy.  Rather, Complainant can establish rights in the mark through long and substantial use of the mark in commerce in connection with its business, and by pending trademark applications.  Accordingly, the Panel finds that Complainant has established rights in the NEVADA STATE BANK mark through its continuous use of the mark in commerce in connection with its banking business since 1959, and by its pending trademark applications with the USPTO.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“on account of long and substantial use of the [KEPPEL BANK] name in connection with its banking business, [Complainant] has acquired rights under the common law”).

In its <nevadastatebank.com> domain name, Respondent incorporates Complainant’s entire NEVADA STATE BANK mark and merely adds the generic top-level domain “.com”.  It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.  In light of the fact that the addition of the “.com” does not distinguish the domain name from Complainant’s mark, the Panel concludes that Respondent’s domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark).

            Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

By not submitting a Response, Respondent has failed to rebut Complainant’s allegations that Respondent does not have rights or legitimate interests in the <nevadastatebank.com> domain name.  Since there is no evidence before the Panel establishing that Respondent has rights or legitimate interests in the domain name, the Panel finds that Respondent lacks rights and legitimate interests in the domain name 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 because this information is “uniquely within the knowledge and control of the respondent”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a eesponse, it is appropriate to accept as true all allegations of the Complaint”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise).

Respondent is not connected to or affiliated with Complainant, nor has it received a license or consent to use Complainant’s mark.  In addition, Respondent has not demonstrated that is has been or is now commonly known by the domain name.  Accordingly, the Panel concludes that Respondent is not commonly known by the mark for purposes of 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Since Respondent registered the <nevadastatebank.com> domain name in April 2002, Respondent has failed to develop a website or use the domain name in any manner.  Respondent has also failed to submit to the Panel any evidence of demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Thus, the Panel finds that Respondent’s mere holding of the domain name is not evidence of rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

In addition to the specific circumstances of bad faith use and registration of a domain name listed in ¶ 4(b) of the Policy, the Policy also permits the Panel to consider other factors evidencing bad faith use and registration.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

Respondent has not used the <nevadastatebank.com> domain name for any purpose since it registered the domain name in April 2002.  Such passive holding is a prima facie case of bad faith under the Policy.  Thus, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  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, given Complainant’s long and substantial use of its NEVADA STATE BANK mark and its notoriety in the banking business, it can be inferred that Respondent had knowledge of Complainant’s rights in its mark when Respondent registered the infringing domain name.  In addition, there is no evidence before the Panel asserting that Respondent did not have knowledge of Complainant’s rights in its mark or that Respondent registered the domain name in good faith.  Thus, the Panel finds that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

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 concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <nevadastatebank.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  December 6, 2003

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