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IndyMac Bank F.S.B. v. Ted Ebeyer d/b/aIndymax [2003] GENDND 916 (19 September 2003)


National Arbitration Forum

DECISION

IndyMac Bank F.S.B. v. Ted Ebeyer d/b/a Indymax

Claim Number:  FA0307000175292

PARTIES

Complainant is IndyMac Bank F.S.B., Pasadena, CA, (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P.  Respondent is Ted Ebeyer d/b/a Indymax, Greenwood, IN, (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <indymax.com>, <indymax.biz> and <indymax.info> registered with Go Daddy Software, 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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 29, 2003; the Forum received a hard copy of the Complaint on July 30, 2003.

On August 1, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <indymax.com>, <indymax.biz> and <indymax.info> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 25, 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@indymax.com, postmaster@indymax.biz,  and postmaster@indymax.info 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 September 5, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf, (Ret.) 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:

1. Respondent’s <indymax.com>, <indymax.biz> and <indymax.info> domain names are confusingly similar to Complainant’s INDYMAC mark.

2. Respondent does not have any rights or legitimate interests in the <indymax.com>, <indymax.biz> and <indymax.info> domain names.

3. Respondent registered and used the <indymax.com>, <indymax.biz> and <indymax.info> domain names in bad faith.

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

FINDINGS

Complainant is one of the leading mortgage lenders in the U.S. and offers a full array of web-enhanced banking services through its websites located at the <indymac.com> and <indymacmortgage.com> domain names.  The Internet quality measurement firm, Gomez, recently named the website hosted by the <indymacmortgage.com> domain name as the number one overall Internet mortgage website. 

Complainant holds several registrations with the U.S. Patent and Trademark Office (“USPTO”) for the INDYMAC mark, including Reg. Nos. 2,522,907 and 2,212,512 registered on December 25, 2001 and December 22, 1998, respectively. 

Respondent was a contact person for the United Home Mortgage Corp. account, which was a customer of Complainant.  Respondent signed a customer agreement in relation to this account in 1999.

Respondent registered the <indymax.com> domain name on April 17, 2002.  On August 29, 2002, Complainant informed Respondent of its INDYMAC mark and requested Respondent to transfer the <indymax.com> domain name.   Subsequently, Respondent agreed to sell the <indymax.com> domain name to Complainant for $500 but this transaction never materialized.  After that, Respondent registered the <indymax.biz> and <indymax.info> domain names on May 21, 2003.  Respondent uses the disputed domain names to display a “coming soon” notice on a “registrar placeholder” website that advertises the services of GoDaddy.com, the registrar of the disputed domain names.

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 established that it has rights in the INDYMAC mark through registration of the mark with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s disputed domain names are confusingly similar to Complainant’s mark because the domain names fully incorporate the INDYMAC mark with the exception that the letter “c” in the mark has been replaced with the letter “x.”  Respondent’s mere misspelling of Complainant’s INDYMAC mark is insufficient to avoid finding that the disputed domain names are confusingly similar to Complainant’s mark.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to Complainant’s mark BEANIE BABIES).

Furthermore, Respondent’s disputed domain names are confusingly similar to Complainant’s mark because the domain names are phonetically the same as the INDYMAC mark.  See VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer); see also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in sound and, thus, that Respondent’s <mapcrest.com> domain name and Complainant’s MAP QUEST mark are confusingly similar).

In addition, the use of the generic top-level domains “.com,” “.biz” and “.info” in the disputed domain names is insufficient to avoid a finding of “confusingly similar” pursuant to Policy ¶ 4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "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").

The Panel concludes that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Due to Respondent’s failure to Respond to the allegations of the Complaint, the Panel may presume that Respondent lacks rights or legitimate interests in the disputed domain names.  See 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); 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).

Furthermore, Respondent is not authorized or licensed to use or register domain names that incorporate Complainant’s INDYMAC mark.  The WHOIS information for the disputed domain names list Respondent, Ted Ebeyer d/b/a Indymax, as the registrant of the disputed domain names but the information is insufficient to establish Respondent as one commonly known by the disputed domain names or by the INDYMAC mark.  Therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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); see also Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Yoga Works, Inc. v.  Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

In addition, Respondent has engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant’s <indymac.com> website but mistakenly misspell Complainant’s mark by typing the letter “x” instead of the letter “c.”  Due to the close proximity of the “x” and “c” keys on a standard keyboard, this is an easy typographical error to make.  Respondent’s practice of typosquatting is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.  See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Encyclopedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).

Also, the disputed domain names automatically default to a “registrar placeholder” because a personalized website for the domain names has not been developed.  The “registrar placeholder” website belongs to the registrar that the Respondent registered the disputed domain names with and does not belong to Respondent.  Therefore, the combination of Respondent’s failure to respond to the Complaint, failure to develop a website for the disputed domain names and failure to present to the Panel demonstrable preparations to use the disputed domain names, is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.  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 disputed domain name where there is no proof that Respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and Respondent is not commonly known by the disputed domain name).

Lastly, Respondent’s willingness to sell the <indymax.com> domain name to Complainant for $500 is evidence that Respondent lacks rights or legitimate interests in the disputed domain name.  See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 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”).

The Panel concludes that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

The Panel concludes that Respondent had actual or constructive knowledge of Complainant’s mark because prior to the registration of the <indymax.com> domain name, Respondent was a contact for one of Complainant’s customer accounts and Respondent registered the <indymax.biz> and <indymax.info> domain names after receiving a request from Complainant to transfer the <indymax.com> domain name.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l, Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Furthermore, Respondent has engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant’s website but mistakenly enter the letter “x” instead of the letter “c.”  Respondent’s typosquatting is evidence that Respondent used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith).

In addition, the Panel finds that there is no conceivable way Respondent could use the disputed domain names such that they would not infringe on Complainant’s INDYMAC mark, and therefore it is illogical to await Respondent’s use of the domain names to find bad faith use.  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “[I]t makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

Lastly, Respondent’s attempt to sell the <indymax.com> domain name for $500 is evidnece of bad faith use and registration purusant to Policy ¶ 4(b)(i).  See World Wrestling Fed’n Entm’t., 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); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where Respondent made no use of the domain names except to offer them to sale to Complainant).

The Panel concludes 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 <indymax.com>, <indymax.biz> and <indymax.info> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  September 19, 2003


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