DECISION

MBNA America Bank, N.A. v. xcsquare@hotmail.com 225225225

Claim Number: FA0211000133635

PARTIES

Complainant is MBNA America Bank, N.A., Wilmington, DE, USA (“Complainant”) represented by James R. Davis, of Arent Fox Kintner Plotkin & Kahn.  Respondent is xcsquare@hotmail.com 225225225, Moscow, RUSSIAN FEDERATION (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <mbnaaccessnet.com> and <mbnaaccess.com>, registered with OnlineNIC, 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 November 14, 2002; the Forum received a hard copy of the Complaint on November 18, 2002.

On November 14, 2002, OnlineNIC, Inc. confirmed by e-mail to the Forum that the domain names <mbnaaccessnet.com> and <mbnaaccess.com> are registered with OnlineNIC, Inc and that Respondent is the current registrant of the names. OnlineNIC, Inc. verified that Respondent is bound by the OnlineNIC, Inc registration agreement and that Respondent 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 November 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 9, 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@mbnaaccessnet.com and postmaster@mbnaaccess.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 December 26, 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <mbnaaccessnet.com> and <mbnaaccess.com> domain names are confusingly similar to Complainant’s registered MBNA mark.

Respondent does not have any rights or legitimate interests in the <mbnaaccessnet.com> and <mbnaaccess.com> domain names.

Respondent registered and used the <mbnaaccessnet.com> and <mbnaaccess.com> domain names in bad faith.

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

FINDINGS

Complainant, MBNA America Bank, N.A., established in this proceeding that it owns a federal trademark registration for the MBNA mark (U.S. Reg. No. 1,362,384, registered on September 24, 1985). In addition, MBNA owns numerous trademark registrations and applications for marks incorporating the MBNA mark, including the MBNA NET ACCESS mark (U.S. Ser. No. 75-672,425).

Complainant uses its marks in connection with banking and related services and has registered various domain names to provide services over the Internet, such as its websites at <mbna.com> and <mbnanetaccess.com>. Sale of services under the MBNA marks has amounted to many millions of dollars, and Complainant has spent millions of dollars advertising and promoting its marks.

Respondent, xcsquare@hotmail.com 225225225, registered the <mbnaaccessnet.com> and <mbnaaccess.com> domain names on August 24, 2002, but is not licensed or authorized to use the MBNA family of marks for any purpose. The websites created by Respondent are comprised of a series of links to such websites as online casinos, websites offering financial services, and other commercial websites. The disputed websites also contain “pop-up” advertisements for various products.

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the MBNA mark through registration with the United States Patent and Trademark Office and through widespread use and promotion of the mark. Complainant has also sufficiently established rights in its MBNA NET ACCESS mark through continuous and widespread use of the mark in commerce, as well as through its application for a federal trademark registration of the mark. See Phone-N-Phone Serv. (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to Complainant’s pending service mark application); see also 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).

The domain names at issue that were registered by Respondent, <mbnaaccessnet.com> and <mbnaaccess.com>, are both confusingly similar to Respondent’s registered MBNA and common law MBNA NET ACCESS marks. The disputed domain names incorporate the entire MBNA mark, creating confusing similarity between the domain names and Complainant’s mark.

The addition of the generic words “access” and “net” both fail to distinguish the disputed domain names from Complainant’s mark. Alternatively, the <mbnaaccessnet.com> domain name merely transposes the words “net” and “access” in Complainant’s common law MBNA NET ACCESS mark in which Complainant has established that it has rights.  While Respondent’s <mbnaaccess.com> domain name omits the word “net” from Complainant’s MBNA NET ACCESS mark, this does not create a distinguishable mark. Under either line of analysis, the disputed domain names are confusingly similar to marks in which Complainant has rights under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).

Accordingly, the Panel finds that the <mbnaaccessnet.com> and <mbnaaccess.com> domain names are confusingly similar to Complainant’s MBNA and MBNA NET ACCESS marks, and Policy ¶ 4(a)(i) is satisfied.

Rights to or Legitimate Interests

Complainant met the burden of showing that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(i)-(iii). At that point, the burden shifts to Respondent to rebut Complainant’s allegations, and without a response to rely upon, the result will be a finding for Complainant. See 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 in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Through its lack of response to the Complaint, Respondent has not only failed to challenge Complainant’s proof and meet its burden, but has at the same time affirmatively suggested that it has no rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <mbnaaccessnet.com> and < mbnaaccess.com> domain names to misdirect Internet users to its own websites (which includes links to competitors of Complainant). By this conduct Respondent does not make a bona fide offering of goods or services and does not qualify for protection under Policy ¶ 4(c)(i). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with 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); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Likewise, the Panel may presume that Respondent’s capitalization on the confusing similarity between the infringing domain names and Complainant’s mark is for the purpose of profitting from commissions or advertising profits in the process. This conduct does not equate with a legitimate noncommercial or fair use of the domain names, and Policy ¶ 4(c)(iii) is inapplicable to Respondent. See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Nothing on the infringing domain name’s website references either “mbna” or “mbna access net,” and Respondent appears to be known only as “xcsquare@hotmail.com 225225225.” Thus, Respondent is not “commonly known by” the name MBNA ACCESS NET, MBNA ACCESS, <mbnaaccessnet.com> or < mbnaaccess.com>. As Respondent submitted no evidence to the contrary, the Panel finds Policy ¶ 4(c)(ii) inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); 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").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <mbnaaccessnet.com> and < mbnaaccess.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent uses the infringing <mbnaaccessnet.com> and < mbnaaccess.com> domain names to misdirect Internet users to its own website. Complainant uncontestedly asserts that Respondent’s direction of Internet consumers who seek Complainant’s goods and services to Respondent’s sites is motived by profit, either from commissions for pop-up advertising or from referral fees for websites to which the disputed domain names link. This diversion of Internet consumers, done for commerical gain, qualifies as bad faith use and registration of the domain names under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, the Panel may conclude that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Furthermore, Respondent has shown a pattern of infringing on famous marks and then using them to mislead Internet users into viewing pop-up advertisements. Both infringing domain names were registered on the same day, exhibiting a pattern of registration that would prevent Complainant from reflecting its mark legitimately on the Internet. The pattern of preventing trademark holders from reflecting their mark on the Internet evidences bad faith use and registration pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others).

Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <mbnaaccessnet.com> and < mbnaaccess.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: January 7, 2003           

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