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Generic Top Level Domain Name (gTLD) Decisions |
IndyMac Bank F.S.B. v. Ted Ebeyer d/b/a
Indymax
Claim
Number: FA0307000175292
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.
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.
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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
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.
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.
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.
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.
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.
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.
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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