DECISION

IndyMac Bank F.S.B. v. David a/k/a David Bakers

Claim Number:  FA0407000296598

PARTIES

Complainant is IndyMac Bank F.S.B. (“Complainant”), represented by B. Brett Heavner, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is David a/k/a David Bakers (“Respondent”), 2300 Shekel Ave., Haifa, Israel is IL .

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mindymacbank.com>, registered with Fabulous.com Pty Ltd.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 15, 2004; the Forum received a hard copy of the Complaint on July 16, 2004.

On July 15, 2004, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that the domain name <mindymacbank.com> is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 July 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10, 2004 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@mindymacbank.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 August 19, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <mindymacbank.com> domain name is confusingly similar to Complainant’s INDYMAC BANK mark.

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

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

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

FINDINGS

Complainant, IndyMac Bank F.S.B. is a lending mortgage lender and the 14th largest bank in the United States.  Complainant is a wholly owned subsidiary of IndyMac Bancorp, Inc., a public company traded on the New York Stock Exchange. 

In addition to its core mortgage products and services, Complainant is FDIC-insured, and offers a full array of web-enhanced banking services, including deposits, competitive CD and money market accounts, and online bill payment services.  Complainant showcases its products and services on its main website located at the domain names <indymacbank.com> and <indymac.com>.  The success of Complainant’s Internet business has been substantial, as the Internet quality measurement firm, Watchfire GomezPro recently named Complainant’s home lending website, <indymacmortgage.com> the number one overall Internet mortgage website.

Complainant owns United States Patent and Trademark Office registration No. 2,518,498 for the INDYMAC BANK mark, issued December 11, 2001 for services in International Class 36.  Additionally, Complainant owns U.S. trademark registrations for its INDYMAC BANK mark (Reg. No. 2,522,907, issued, June 13, 2000 and Reg. No. 2,212,512, issued December 22, 1998). 

Respondent registered the <mindymacbank.com> domain name on June 3, 2004.  Respondent is using the domain name for several purposes, including a <DomainSponsor.com> commission-paying, affiliate website advertising numerous links directed to Complainant, providing third-party websites advertising Complainant’s services, and advertising various financial services offered by competitors 

Upon receipt of a cease-and-desist letter from Complainant, Respondent offered to sell the <mindymackbank.com> domain name registration to Complainant for $489.  Additionally, Respondent claimed it had another potential buyer for the domain name and stated it would sell the domain name to that party if Complainant did not purchase it that day, Respondent requested Complainant make payment to Respondent via <escrow.com>.

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 BANK mark through registration with the United States Patent and Trademark Office and through continued use of its marks in commerce for the last eight years.  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 <mindymacbank.com> domain name is confusingly similar to Complainant’s INDYMAC BANK mark because the domain name incorporates Complainant’s mark and deviates with the addition of a generic or descriptive word “bank” which describes Complainant’s business.  The mere addition of a generic or descriptive term that describes Complainant’s business does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

Furthermore, Respondent’s addition of the letter “m” before “indymacbank.com” does not act to create a separate and distinct mark which Respondent can assert rights to.  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 Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name.  Respondent did not file a Response.  Therefore, the Panel may accept any reasonable assertions by Complainant as true.  See Esotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent is using the <mindymacbank.com> domain name to redirect Internet users to a website providing links to services in direct competition with Complainant.  Respondent’s use of a domain name that is confusingly similar to Complainant’s INDYMAC BANK mark to redirect Internet users interested in Complainant’s services to a commercial website that offers a variety of links to competing services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).

Nothing in the record, including the WHOIS domain name registration information, suggests that Respondent is commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii).  See 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

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

Registration and Use in Bad Faith

Respondent registered the domain name for commercial gain.  Respondent’s domain name diverts Internet users wishing to search under Complainant’s well-known mark to Respondent’s commercial website through the use of a domain name confusingly similar to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, through the used of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Furthermore, Respondent registered the domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website featuring links to websites that directly competed with Complainant.  Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

Finally, the Panel finds that Respondent’s repeated offers to sell the <mindymacbank.com> domain name at a price above and beyond the amount of the registration fee, and threats to coerce Complainant into purchasing the domain name, evidences Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(i).  See World Wrestling Fed’n Entmt., 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 Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).

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 <mindymacbank.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  September 2, 2004

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