DECISION

MBNA America Bank, N.A. v. Vertical Axis, Inc.

Claim Number: FA0211000133632

PARTIES

Complainant is MBNA America Bank, N.A., Wilmington, DE, USA (“Complainant”) represented by James R. Davis, II, of Arent Fox Kintner Plotkin & Kahn.  Respondent is Vertical Axis, Inc., Central, Hong Kong, CHINA (“Respondent”)

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <mbnaaccess.net>, registered with The Registry at Info Avenue d/b/a IA Registry.

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, The Registry at Info Avenue d/b/a IA Registry confirmed by e-mail to the Forum that the domain name <mbnaaccess.net> is registered with The Registry at Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the name. The Registry at Info Avenue d/b/a IA Registry verified that Respondent is bound by the The Registry at Info Avenue d/b/a IA Registry 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 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@mbnaaccess.net 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 23, 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <mbnaaccess.net> domain name is confusingly similar to Complainant’s registered MBNA mark.

Respondent does not have any rights or legitimate interests in the <mbnaaccess.net> domain name.

Respondent registered and used the <mbnaaccess.net> domain name in bad faith.

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

FINDINGS

Complainant, MBNA America Bank, N.A., 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, Vertical Axis, Inc., registered the <mbnaaccess.net> domain name on August 25, 2002, and is not licensed or authorized to use the MBNA family of marks for any purpose. Respondent links the disputed domain name to a series of commercial pop-up advertisements promoting various goods and services, from automobiles and travel, to Strayer University, as well as to a page containing a series of links to various commercial Internet websites.

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 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).

Respondent’s <mbnaaccess.net> domain name is confusingly similar to Complainant’s registered MBNA mark. The disputed domain name incorporates the mark in its entirety, while adding the generic word “access.” The addition of this generic word does not erase the confusion that exists between Complainant’s mark and Respondent’s domain name. 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 Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with Complainant; Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or endorsement of Respondent’s website). 

Furthermore, Respondent’s <mbnaaccess.net> domain name is confusingly similar to Complainant’s MBNA NET ACCESS mark. Between the top-level domain name (“.net”) and the second-level domain name (“mbnaaccess”) Respondent’s domain name entirely incorporates Complainant’s mark. The only difference is the transposition of the words “net” and “access.” While Respondent’s method of transposing the words of Complainant’s mark is unique, Internet users confronting the disputed domain name will nonetheless be confused by its similarity to Complainant’s mark.

Accordingly, Policy ¶ 4(a)(i) is satisfied. 

Rights to or Legitimate Interests

Respondent failed to submit a Response to the Complaint in this dispute, giving rise to the inference that Respondent has no rights or legitimate interests in the disputed domain name. 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 has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

If Complainant presents a prima facie case against Respondent, the burden shifts to Respondent to demonstrate rights and legitimate interests. 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). Complainant’s burden will be met by submitting evidence sufficient to show that Respondent does not qualify for the protections listed in Policy ¶¶ 4(c)(i)-(iii).

Respondent uses its domain name to re-direct Internet users into accessing websites containing pop-up advertisements and a series of links to other commercial websites. Such use is not a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name under 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 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 Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

Nothing on the infringing domain name’s website references either “mbna” or “mbna access,” and Respondent appears to be known as Vertical Axis, Inc. Thus, Respondent is not “commonly known by” the name MBNAACCESS or <mbnaaccess.net>. 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 <mbnaaccess.net> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent uses the infringing <mbnaaccess.net> domain name to misdirect Internet users to its own website. Complainant asserts without contest that this redirection is motived by profit, either from commissions for pop-up advertising or referral fees for websites that the disputed domain name links to. The Panel agrees. This diversion of Internet consumers, done for commerical gain, qualifies as bad faith use and registration of a domain name 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, it may be concluded 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 established a pattern of infringing on famous marks and then using them to mislead Internet users into viewing pop-up advertisements. See Harvey Casino Resorts v. Vertical Axis, Inc. FA 117320 (Nat. Arb. Forum Oct. 10, 2002 (transferring <harveys-tahoe> to Complainant on facts nearly identical to this dispute). The pattern of preventing trademark holders from reflecting that 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).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: January 6, 2003

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