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Washington Mutual, Inc. v. Ashley Khong [2005] GENDND 1578 (30 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Washington Mutual, Inc. v. Ashley Khong

Case No. D2005-0740

1. The Parties

The Complainant is Washington Mutual, Inc., Seattle, Washington 98101, United States of America, represented by Perkins Coie, LLP, United States of America.

The Respondent is Ashley Khong, San Clemente, California , United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <wamudirect.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2005. On July 13, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On July 14, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2005.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 16, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Washington Mutual is a publicly held Forturne 500 financial services holding company with assets of more than $260 billion and more than 2,500 offices across the United States.

Since at least as early as 1983, Washington Mutual has used the WAMU mark in connection with many goods and services-including banking services, credit cards and mortgage services-and holds registration certificates for several WAMU and WAMU.COM marks from the United States Patent and Trademark Office.

In addition, Washington Mutual has registrations for the WAMU mark in Australia, Canada, the European Community and New Zealand.

Washington Mutual owns more than 375 domain names that incorporate the WAMU mark, including <wamu. com>, <wamuhomeloans.com> and <wamu.net>. Complainant operates several Web sites in association with these domain names.

At the time of filing, the Web site at issue did not resolve to an active page, but rather to a “placeholder” page provided by the Domain Name’s Registrar, Go Daddy Software. However, during the time this action was under submission to the Panel, the Domain Name resolved to an active page that invited visitors to follow links to banking sites other than Washington Mutual.

On April 7, 2005, Complainant sent a letter to Respondent via Respondent’s listed electronic mail address demanding transfer of the Domain Name to Complainant. Complainant received no response.

On June 30, 2005, via Network Solutions, Inc.’s “Certified Offer Service” Complainant placed an anonymous offer to buy the Domain Name for $500. The offer remained open for seven days, but Respondent did not respond.

5. Parties’ Contentions

A. Complainant

With respect to Paragraph 4(a)(i) of the Policy, Complainant contends that:

(1) The Domain Name is identical to the Complainant’s WAMU and WAMU.COM registered marks in which Complainant has rights; and

(2) The Domain Name incorporated Complainant’s mark in its entirety and merely adds the descriptive word “direct” to Complainant’s trademarks; and

(3) The addition of a descriptive term to another’s mark does not avoid a likelihood of confusion.

With respect to Paragraph 4(a)(ii) of the Policy, Complainant contends that:

(1) Respondent has not made and is not making a legitimate noncommercial or fair use of the Domain Name and has not used the Domain Name, or a name corresponding to it, in connection with a bona fide offering of goods or services. Instead, the Domain Name resolves to a “placeholder” page provided by Go Daddy Software.

(2) Respondent is not commonly known by the name or nickname of the Domain Name.

With respect to Paragraph 4(a)(iii) of the Policy Complainant contends that:

(1) The unique qualities of Complainant’s marks make it unlikely that the Respondent created the Domain Name independently.

(2) Respondent has engaged in a pattern of conduct to prevent trademark owners from using their trademarks as domain names by registering many confusingly similar domain names that include either the descriptive term “direct” or the generic acronym “B2B” (business to business) Examples of domain names that Respondent owns which incorporate other’s well known trademarks in the banking and mortgage businesses, that include the word “direct” are: <auroradirect.com>, <bncdirect.com>, <boadirect.com>, <fifththirddirect.com>, <fremontdirect.com>, <mbnadirect.com>, <providiandirect.com>, <suntrustdirect.com>, and <usaadirect.com>.

(3) The Domain Name is “parked,” resolving to a Web page displaying services offered by the Registrar. This “passive holding” of a domain name after bad-faith registration constitutes bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Given the 22 years of use of the WAMU mark and the existence of the United States and foreign trademark registrations for WAMU and WAMU .COM, the Panel finds that Complainant has trademark rights in the WAMU and WAMU.COM marks.

The Panel also finds that “wamudirect.com” is confusingly similar to the WAMU and the WAMU.COM marks since the dominant portion of Complainant’s registered marks and of the disputed Domain Name is “WAMU.” The Domain Name differs from Complainant’s registered WAMU and WAMU.COM marks only in that it contains the descriptive term “direct.” Because the descriptive term “direct” merely implies access to WAMU without intervening steps or middlemen, this term does not prevent confusion; it increases the likelihood of confusion. Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

With respect to 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the domain name.

With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the Domain Name and has not used the Domain Name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed, the Domain Name resolved to a “placeholder” page provided by Go Daddy Software. “Parking” a domain name which then points to its registrar’s Web site services does not constitute a bona fide offer of goods or services as required by the Policy paragraph 4(c)(i). Lehman Brothers Inc. v. Simon, FA 0405000271212 (Nat’l Arbit. Forum, June 30 2004).

Moreover, the Domain Name is no longer merely parked. It is now traveling down a bad road. During the time this action was under consideration by the Panel, the Domain Name resolved to a page that displayed links to Complainant’s competitors. This is not a bona fide use. TM Acquisition Corp. v. Sign Guards, FA132439 (National Arbitration Forum, December 31, 2002) (finding that the Respondent’s use of complainant’s marks to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant’s competitors, was not a bona fide offering of goods or services).

A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455 Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. The Panel finds that the circumstances enumerated above establish a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name at issue.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent registered the Domain Name in bad faith. Complainant’s mark is so unique it is not likely that the Respondent registered the Domain Name at issue without knowledge of Complainant’s WAMU trademark. In addition, Complainant offers un-rebutted evidence that Respondent has registered numerous domain names that incorporate well known trademarks of financial institutions, such as USAA and MBNA, and the descriptive term “direct.” Although these other domain names were parked at the time this UDRP was filed, they are all, at the time of this decision, active with links to other financial institutions. This evidence of a pattern is further indication of bad faith. For these reasons, the Panel concludes that the Domain Name at issue was registered in bad faith. General Electric Company v. Dr. Elliot Fishman, WIPO Case No. D2001-0934 (September 27, 2001).

The Domain Name is also used in bad faith. Even though the Respondent’s website was merely “parked” at the time this action was filed, at the time of the submission of this case to the Panel, the accused Domain Name is in use. At the present time, it resolves to a page that offers visitors links to sites of other companies, including Complainant’s competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan,WIPO Case No. D2004-0537 (September 20, 2004) (“the Panel is persuaded that Respondent’s registration and use of the Disputed Domain Name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO decisions also support this conclusion.”) See also Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (February 1, 2002) (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”). Rather obviously, Respondent’s inactive parking was temporary and she was planning to use the Domain Name in bad faith to divert potential business to competitive websites. Under these circumstances, Respondent’s temporary inactivity does not avoid a finding of bad faith use. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).

Accordingly, the Panel finds that the Respondent has used the Domain Name in bad faith and that Complainant has satisfied Paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wamudirect.com> be transferred to the Complainant.

Lawrence K. Nodine
Sole Panelist

Dated: September 30, 2005