WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trustmark National Bank v. Henry Tsung
Case No. D2004-0274
1. The Parties
The Complainant is Trustmark National Bank, of Jackson, Mississipi, United States of America (the “Complainant”), represented by Katten Muchin Zavis Rosenman of United States of America.
The Respondent is Henry Tsung, of Taipei, Taiwan (the “Respondent”).
2. The Domain Name and Registrar
The domain name at issue is <wwwtrustbank.com> (the “Domain Name”), with iHoldings.com, Inc. d/b/a DotRegistrar.com, of Miami, Florida, United States of America (the “Registrar” or “DotRegistrar”).
3. Procedural History
A Complaint dated April 6, 2004, was submitted by e-mail to the WIPO Arbitration and Mediation Center (the “Center”). The submission was made in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), on August 26, 1999, (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On April 14, 2004, The Center acknowledged receipt of the Complaint,
On April 14, 2004, The Center notified the Registrar on record, that Complainant filed a complaint against Respondent, and that it concerned the domain name <wwwtrustbank.com>. A request was made to Registrar to indicate receipt of the Complaint, to confirm that the Domain Name was registered with Registrar and that Respondent was the current registrant, among others. The Center requested confirmation from the Registrar that the Domain Name should be kept locked during the pending administrative proceeding.
On the same date, that is, April 14, 2004, Registrar responded stating that the Domain Name is registered with Registrar and that the name of registrant was Respondent. Registrar confirmed that the Domain Name would remain on locked for the duration of the proceeding. Registrar advised that it did not receive a copy of the Complaint.
On April 19, 2004, the Center requested an electronic version of the Complaint from Complainant, to be forwarded to Registrar. Complainant responded on the same day, by fulfilling the requirement of the Center.
On April 23, 2004, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding, to the Respondent at the three addresses that Complainant had indicated in the Complaint, one of which was provided by the Registrar, in accordance with the records of the Whois database. The Center marked May 13, 2004, as the deadline for the submission of response to the Center and the Complainant.
On May 14, 2004, the Center sent a Notification of Respondent Default to the Respondent by e-mail.
After having received the undersigned’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Luis C Schmidt as the Sole Panelist. The Administrative Panel finds the appointment properly.
Sharing the assessment of the Center, the Panel independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was made in time. The Panel finds that the Center has duly notified Complaint to the Respondent, pursuant to Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.
There were no extensions granted or orders issued.
The registration agreement for the domain name at issue has been written and executed in English by Respondent-Registrant and the Registrar. The Complainant has submitted its Complaint without any observation or objection on this regard. By undertaking that there are no special circumstances to determine otherwise, as provided in Rule paragraph 11, the language of this proceeding is English.
4. Factual Background
After Complainant’s assertions, supported by the documents attached to the Complaint, all of them undisputed by Respondent –as having defaulted to the Complaint– and after proper verification conducted at the database of the U.S. Trademark Office by the Panel itself, based on the discretional powers conferred upon this latter, in accordance with paragraph 10 (a) of the Rules, applicable to the present matter, and supported by precedents such as InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, the Panel finds that the Complainant owns the following service marks (the “Marks”) registered in the Principal Register of the U.S. Trademark Office:
|Registration Number||Date of Filing and Grant||Mark||Class|
|2382693||04/13/1999-04/09/2000||TRUSTMARK national bank and design||36|
|3433197||10/27/1999-03/06/2001||TRUSTMARK FINANCIAL SERVICES, INC.||36|
Applications for the three service marks TRUSTMARK and variations were filed on the basis of actual use, under section 1(a) of the U.S. Lanham Act (USC 15, Chapter 22, Subchapter 1, and Section 1051). The date of first use reported to that effect was 01/29/1985 for registration number 2382693; 12/30/1991 for registration number 2433197; and 00/07/1995 for registration 2559639.
In addition to the three service mark registrations that are referred to above, on May 9, 1995, Complainant sought and obtained registration for the domain name <trustmark.com>, and on June 24, 1998 for <trustmark.net>.
Complainant, Trustmark National Bank, is a company doing business in the field of commercial banking services. Services are rendered using marks TRUSTMARK, TRUSTMARK NATIONAL BANK and design, or TRUSTMARK FINANCIAL SERVICES, INC. The principal place of business of Complainant is 14455 North Hayden Road, Suite 219, Scottsdale, Arizona, 85260, United States of America.
From consulting the website of Complainant, under <trustmark.com>, it can be perceived that a business is conducted there, dedicated to banking services and where trademark TRUSTMARK and design is displayed. While browsing through the homepage, information can be obtained about the company and the services that it renders to the public, as a member of an association called FDIC. The contents of the website concur with Complainants statements in the Complaint. The Panels investigation of the domain name <trustmark.net> showed that there is no page on display. On the other hand, from the analysis of the Whois database, it indicated that the registrations were created on May 9, 1995 <trustmark.com> and June 24, 1998 <trustmark.net> respectively, Complainant having performed as registrant and administrative contact, while Network Solutions, Inc. as technical contact.
The Domain Name was registered on January 23, 2004, in conformance with the documentation that Complainant has submitted and the searches that the Panel has discretely conducted, at the Whois database of Network Solutions, Inc. In conformance with the search that Complainant made prior to the filing of the Complaint, Respondent registered the Domain Name and continues to hold it ever since.
It is clear from evidence submitted and inquiries made at discretion of this Panel, Respondent applied for the registration of the Domain Name approximately five years after Complainant had filed the first service mark application and nearly nine years after Complainant had obtained the <trustmark.com> registration.
There is one site that can be accessed under Domain Name <wwwtrustmark.com> that Respondent appears to have constructed and operated. The website displays certain links to pages of third parties, mostly related to banking or financial services. Complainant has submitted as evidence a printout of information obtained from Respondent’s website, made on March 23, 2004. In accordance with the printout, the website displays a search tool as well as information presented in a certain format or listing. The tool can take users to directories and from there to links. The listing comprises five titles that are connected to an equal number of sites: “FREE Mortgage Refinance Rate Quotes!” to <intellinetz.com>; “Guaranteed Lowest Home Refinance Rates!” to <4lowrates.com>; “Free Mortgage Refinancing Quotes” to <mortgageloans.info>; “MortgageRates.org-HOME MORTGAGE loans” to <MortgageRates.org>; and “Refinance Now even with Bad Credit!” to <modsery.net>. The Panel has verified the printout that Complainant filed, and has taken note that the Domain Name gives access to the website referred to in the Complaint. A change has occurred in the listings though as the new titles and links are: “Get $50 with a new NetBank Account” for <netbank.com>; “Fest $500, Advance with My Online PayDay” for <gckimp.com>; “MSM Bill Pay” for <clk.otolmt.com>; “Bank of America checking gives you more” for <otolmt.com>; and “Get $ 500 Payday Loan with My Online Pay Day” for <gckip.com>. From the foregoing, the Panel would conclude that Respondent has used the Domain Name in connection with a website indicating links to sites of a number of financial institutions, and that the content has been recycled at least in one occasion.
On February 9, 2004, Complainant sent a cease and desist letter to the Respondent, requesting this latter to voluntarily transfer the ownership of the Domain Name to Complainant. On February 10, 2004, Complainant sent to Respondent an electronic version of such cease and desist letter. According to the statements by Complainant, undisputed for the purposes of the present proceeding, Respondent did not reply to the letter. Complainant made a further reminder on March 8, 2004, which was also never replied to.
5. Parties’ Contentions
The Complainant asserts that:
• The Domain Name at issue is substantially identical to the trademark in which the Complainant has rights; the Respondent has no rights or legitimate interests in respect of the Domain Name; and that it was registered and is being used in bad faith.
• The trademarks TRUSTMARK, TRUSTMARK FINANCIAL SERVICES, INC. and TRUSTMARK NATIONAL BANK and design of its property, identify commercial banking services. The Complainant has registered its trademark rights in the United States of America, with complete success. The same is true concerning the domain names <trustmark.com> and<trustmark.net>. There is thus no other individual or corporation than the Complainant holding trademark rights on the TRUSTMARK marks in the United States, at least in connection with banking services, and certainly the Respondent holds no rights whatsoever on said Marks.
The TRUSTMARK mark has acquired distinctiveness and secondary meaning, representing that, in addition to the inherent capability of TRUSTMARK to perform as a distinctive mark per se, Complainant has built up valuable goodwill, which is symbolized by the TRUSTMARK mark, that has reached the status of well known as associated with Complainant.
On January 23, 2004, Respondent commenced use of the domain name <wwwtrustbank.com>, which is subsequent to when Complainant started using the same as a trademark and domain name.
Complainant sent a demand letter to Respondent without response.
• The Domain Name is identical or confusingly similar to the TRUSTMARK marks and the domain names <trustmark.com> and <trustmark.net>, in as much as they contain the same exact words and letters, the only distinction being the addition of “www” in the second level domain name. Complainant cited as authority InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069.
• There is lack of any legitimate trademark rights of the Respondent to the Marks, because Complainant is the owner of record of the same. In line with the argument of Complainant, Respondent has used the Domain Name to deliberately attempt to exploit users’ typographic errors made when seeking the site of Complainant. Respondent has no agreements, whether legal or otherwise, authorizing it to use the TRUSTMARK marks. Respondent has not been personally identified, or commonly known, by names comprised, in whole or in part, of the term “TRUSTMARK”. Respondent has no rights whatsoever over the names, whether trademark or of other nature. On the contrary, any use that Respondent would have intended to make of the name would be in infringement of the rights of Complainant.
• Respondent registered the Domain Name in bad faith, with the full knowledge of the TRUSTMARK mark. Complainant claims that Respondent was under constructive notice of the rights of the former, as a result of the U.S. federal registrations. In addition, the demand letter cannot be regarded as anything but as an actual notice such rights. There is no plausible circumstance where Respondent could have coincidentally registered the Domain Name without first knowing of and intentionally infringing upon the TRUSTMARK marks.
• Respondent used the Domain Name in bad faith is misdirecting customers to advertising sites for commercial gain. As such, Respondent has violated paragraph 4(b)(iii) of the Policy by preventing customers who are looking for Complainant at <trustmark.com> from finding Complainant, thereby disrupting Complainant’s business. Complainant has argued that, Respondent has used the Domain Name intentionally attempting to attract, for commercial gain, Internet users to the website of the Respondent or other on-line location, by creating a likelihood of confusion with the Marks of Complainant, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the website or location of the Respondent.
• The Complainant requests the Administrative Panel to issue a decision that the contested Domain Name must be transferred to the Complainant.
• The Complainant agrees, with respect to any action that Respondent may bring against decisions of the Administrative Panel, that it would stick to the jurisdiction of the courts where the principal office of the concerned registrar is located.
The Respondent has not submitted a response, and therefore is in default.
6. Discussion and Findings
6.1 Effects of Respondent Default
Respondent was required to a respond to the Complaint as filed by the Complainant. According to Rules, paragraph, 5(b)(i) “(t) he response shall (...) (r) espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)”.
Under the Rules, and in particular paragraph 14 (a), the Panel “shall proceed to a decision on the complaint”, and under paragraph 14(b), the Panel “shall draw such inferences there from as it considers appropriate”.
In line with the foregoing, failure to respond could indicate that the assertions that the Complainant raised would give sufficient grounds to a default decision in the favor of this latter. However, under the Policy the defaulting response still needs to be qualified, because “the complainant must prove that each of these three elements are present”. Policy, paragraph 4(a) in fine.
6.2 Independent Connection with the Website of Respondent
As concluded in InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076, the Panel considers that under Paragraph 10(a) of the Rules, the Panel has the power to independently search the Internet, in order to obtain as much information as required to render a decision.
The Panel visited the “www.wwwtrustmark.com” website of the Respondent. The address routed the user to an active website displaying certain titles and links.
6.3 Identity or Confusing Similarity of Domain Name with a Mark in which Complainant has Rights.
The Panel has carefully considered the allegation that the Complainant has made that the Domain Name is virtually identical or confusingly similar to the registered trademarks TRUSTMARK, TRUSTMARK FINANCIAL SERVICES, INC., or TRUSTMARK NATIONAL BANK and design. Likewise, the Panel reviewed the allegation and evidence claiming that Complainant has rights upon the Marks. On the other hand, the Panel could not analyze any arguments from Respondent as he did not respond to the Complaint.
The Panel has made a comparison of the Domain Name at issue vis-à-vis the Complainant’s Marks, and finds that that the second level domain name “wwwtrustmark”, is identical letter-by-letter to word TRUSTMARK, except for the addition of the prefix “www” and the reference “.com” a generic top-level domain intended for commercial organizations. From the foregoing, it can be inferred that Respondent has employed a misspelled but similar version of the Marks, taking advantage of the goodwill of the same, and with a purpose that cannot be lawful at all. The Marks are strong due to their inherit capability to distinguish banking and related services. The copying or imitation of a strong mark leads to presumption of confusion. This is a universal principle of trademark law resulting from international treaties and doctrines. Panelists have analyzed similar cases finding confusion, as it happened in VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; or Banca Popolare Friuladria S.p.A. v. Giovanni Zago, WIPO Case No. D2000-0793. Likewise, the adding of prefix “www”, cannot be a factor of differentiation as it has “no distinguishing capacity in the context of domain names, the letters ‘www’ have the effect of focusing particular attention on the word succeeding them.” Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, transferring <wwwreuters.com>; and Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346; transferring <wwwticketmaster.com>. In Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199, influenced by Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205, the Panel held that the domain name of respondent in that proceeding was identical or confusingly similar to the Marks owned by complainant, “the only difference being that ‘www’ has been inserted in front of the Pfizer mark, a practice known as a ‘typo’ or ‘typo squatting’, for the purpose of exploiting users’ typographical mistakes when seeking Complainant’s site, namely those users who erroneously omit the period between ‘www’ and ‘pfizer’”.
In addition, the Panel would agree to the fact that in order to register the Domain Name, Respondent has considered a predictable typing error that users could make by excluding the period that goes in between “www” and the second level domain name. That could not be anything else but a trick that Respondent has employed to circumvent the existing domain names that Complainant has registered. Previous Panels have developed the concept of “typo” or “typosquating”, for such a practice. For example, the decision that Complainant cited, InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069, where the panel said that the addition of “www” to a domain name “is best explained as a deliberate attempt to exploit user’s typographical mistakes when seeking Complainant’s website”. This Panel considers that the typo squatting issue is clearly present in the instant matter and that the same characterizes the Domain Name indeed.
Concerning the timing issue, it was Complainant the party that adopted the name “Trustmark”, by securing protection thereof under the trademark law as well as the domain name system. Respondent showed up long time after Complainant had registered the domain name as well as the Marks, before the Patent and Trademark Office of the United States of America. From all the foregoing, it would be possible to conclude that the Domain Name is confusingly similar to the Marks and to the domain name pertaining to Complainant, and that Respondent made the registration of the Domain Name only after Complainant had secured protection for that name. Accordingly, the Panel would find that Respondent has met the burden of confusing similarity as required by the Policy.
6.4 Rights or Legitimate Interests in the Domain Name
The Panel has carefully considered the allegation of the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name. In particular, the Panel has noted the argument that the Respondent lack of any trademark or other rights in the Domain Name. The Panel would again state that Respondent did not bring any defensive statement or arguments against the Complaint.
In the present default proceeding there is no contention on record, made by the Respondent, or that the Panel could rely on, to conclude that it might have trademark or other intellectual property rights, or in general, legitimate interests in the Domain Name. Nothing can be reasonably shown leading to infer to the foregoing fact, pursuant to the Policy, paragraph 4(c). Complainant has argued that there is no legitimate interest considering that far from having rights over the Domain Name Respondent has merely used it “in a deliberate attempt to exploit users’ typographical mistakes when seeking Complainant’s website”.
For the Panel Respondent has not done anything that could have triggered a legitimate interest as required by paragraph 4(c). As it has been discussed above, there is nothing on record indicating that the Domain Name is in use or that there have been preparations for being used, in connection with a good faith business or any activity in general. On the contrary, from the Complainants evidence, and from the checks that the Panel has made of Respondent’s website, the domain name has only been used for the purpose of placing links to the locations of third parties, conducting similar if not competing activities to those of Complainant, but that in any event are unrelated to Respondent.
The situation above could only be interpreted as a disrupting and misleading practice resulting from the intent of Respondent “to attract Internet users to other directly competitive sites”, and that cannot be “a legitimate use of a domain name”. Cases as Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346; Alta Vista Company v. O.F.E.Z. et al., WIPO Case No. D2000-1160; Expedia, Inc. v. Dotsan, WIPO Case No. D2001-1220; or CSA International v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071, would support the foregoing assertion. Respondent has used the Domain Name, in a non-commercial form. At least there is no evidence in the records or inference possibly leading to conclude that Respondent has acted with an intention to obtain a commercial gain from misleadingly diverting consumers or to tarnish a mark. However, the practice that Respondent has undertaken by registering a domain name so close to the Marks, and for use in connection with a website that only would send the users to locations of competing third parties “could hardly be called ‘legitimate noncommercial or fair use’ of the Domain Name” CSA International v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071.
Respondent is not related or “connected” to the Complainant. There is also no possible “connection” between the Domain Name, the site of Respondent or the linked sites. Activities such as connecting, directing or linking sites that are unrelated, in a manner as Respondent has made, cannot be regarded legitimate use. A practice as the foregoing could represent an infringement of trademark rights instead in a number of national jurisdictions. The foregoing is supported by cases such as Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; Royal Bank of Canada v. Personal, D2001-0761; and Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413.
This Panel gives particular weight to the fact that Respondent defaulted. It can be inferred that by having defaulted Respondent showed nothing else but an absolute lack of interest on the Domain Name. The same could be said as for the cease and desist letter is concerned. And in the absence of a response, it is truly hard to conclude about the legitimate interest of the Respondent, on at least some sort of plan or intention to start using the Domain Name, especially when instead of that, Respondent used the site to forward the Domain Name to other latitudes. The Panel understands the difficulty that Complainant would face to show what is actually in the mind of Respondent, apart from what it has been determined from the likeness between Domain Name and trademark, and from the contents of the website itself. Proving negative facts is not particularly an easy task. For that reason, Rule 4(a)(ii) binds the Complainant making a prima facie case. The foregoing represents that the burden of proof rests initially on this party. However, the burden cannot go as far as to overwhelm. It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.
Therefore, the Panel finds that the Respondent has no rights to or legitimate interests in the Domain Name at issue.
6.5 Registration and Use in Bad Faith
6.5.1 Preliminary Remarks
There are a number of general considerations, of a factual nature, requiring analysis before actually addressing the particular factors of paragraphs 4(a)(iii) and 4(b) of the Policy. They are as follows:
A presumption that Respondent was aware of the domain names and Marks pertaining to Complainant. Respondent most likely knew that Complainant was the holder of the domain names <trustmark.com> and <trustmark.net> as well as the Marks. It would have been difficult to believe that Respondent would have registered the Domain Name without to know the foregoing. First of all, it adopted the slightest variations possible for circumventing the domain name as registered, up to the extent of a “typo squatting”. For that end, Respondent would necessarily have had to investigate the registries and perhaps Complainant itself.
Respondent has used the Domain Name for sending links to sites that are unrelated to Complainant. It cannot be a coincidence that Respondent registers and uses the Domain Name, related to the Marks of a financial institution, for setting links to the sites of other financial institutions. However, the strongest inference of knowledge triggers from the fact that Respondent has been involved in at least another UDRP against another bank. First Tennessee National Corporation v. Henry Tsung, WIPO Case No. D2004-0103.
Turning to the provisions and standards applicable in connection with the current administrative proceeding, there are perhaps three that deserve special attention: Paragraph 4(a)(iii), addresses bad faith as a factor in the proceedings regarding the registration of domain names. The general requirement is that, in order for a registered domain name to be transferred to someone having trademark rights, the domain name would have to be “registered” and “used” in bad faith. Paragraph 4(b) of the Policy refers to certain factors which, if found to be present, shall be conclusive that the Domain Name has been registered and used in bad faith.
Paragraph 4(b)(i) concerns acquisition of the domain name for sale. Paragraph 4(b)(ii) concerns acquisition for the purpose of blocking the Complainant, provided that the Respondent has engaged in a pattern of such conduct. Paragraph 4(b)(iii) involves disruption of the business of a competitor. Paragraph 4(b)(iv) involves use of the domain name for the purpose of attracting visitors to the online location of Respondent or a third party, in the mistaken belief that they are visiting a location associated with the Complainant. In the present case, paragraph 4(b)(i) would not be applicable. However, provisions 4(b)(iii), 4(b)(iv) and perhaps 4(b)(ii), would deserve a more in-depth review, not only as Complainant has invoked them in the Complaint, but in addition by discretion of this Panel.
Notwithstanding the above, paragraph (b) serves the purpose to indicate, on a non-exhaustive basis, when there is “registration” and “use” in bad faith of domain names. Paragraph 4(b) would thus allow other possible forms of demonstrating “registration” and “use” by employing an inclusive, copulative solution or “registration” or “use” as an alternate, disjunctive solution- of domain names in bad faith. As a matter of fact, the Center has compiled UDRP decisions dealing with a number of issues, in particular forms of showing bad faith outside the categories of paragraph 4(b) that other panelists have used as reference in their own cases.
6.5.2 Bad Faith Factors in Paragraph 4(b) of the Policy
Complainant has stated in the Complaint that Respondent violates paragraph 4(b)(iii) of the Policy, as it “uses” the Domain Name “to misdirect customers to advertising sites for commercial gain”. From the foregoing, Respondent has been only “preventing customers who are looking for Complainant at <trustmark.com> from finding Complainant, thereby disrupting Complainant’s business”. The Panel would sustain that said assertions are partially true, as in accordance with the evidence that Complainant submitted, enriched by the inquiries made, it only would be possible concluding that Respondent has misdirected consumers or potential consumers. However, paragraph 4(b) (iii) is aimed at preventing registrants of domain names from disrupting the business of competitors. The Panel agrees that Respondent has intended the disruption of the business of Complainant by having registered the Domain Name. But the Panel also finds that Respondent is not a competitor of Complainant, the foregoing representing a burden to conclude that Complainant meets the provision under analysis.
Complainant has further argued that Respondent has fallen squarely into paragraph 4(b)(iv) of the Policy. In keeping with this, it has stated that Respondent registered the Domain Name having knowledge of the source, and used the same for redirecting traffic to unrelated websites. It is Complainant’s view that Respondent “intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location”.
For this Panel, it can be drawn from records that Respondent has registered and used the Domain Name with the sole purpose to attract Internet users and divert them to other locations, in particular sites of third parties promoting similar if not competitive services. From the standpoint of the Panel, it is clear that Respondent knows what he is doing and that he is not precisely acting in good faith. Actual and potential customers of Complainant could be mislead to a different location, driven by confusion, and when in that erroneous location, believe that Respondent has been granted a sponsorship, has become affiliated to Complainant, or his activities have been endorsed by this latter. In Harrods Limited v. Pete Lormer, WIPO Case No. D2003-0504, the Panel found that it would constitute, “not only a legitimate use of the disputed domain name, but also bad faith use”. Holding otherwise “would be to undermine Complainant’s brand by misleadingly identifying its brand with the respondent”. The bad faith of Respondent “arises, too from a deliberate intention to create a false sense of origin or sponsorship for the Respondent’s products, goods and services”. That would necessarily result in what that panel called “initial interest confusion” and was sustained on a number of decisions including WIPO cases Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO Case No. D2000-1319 and Xerox Corp. v. Stonybrook Investments, Ltd, WIPO Case No. D2001-0380.
The question is if the conduct that Respondent carried out has been performed for commercial profit or financial gain. The Panel in Harrods Limited did not discuss that issue, as it also did not happen in Dow Jones & Company, Inc. v. Down Jones Update, WIPO Case No. D2000-0495. On the other hand, other panels have addressed those points. In Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071, it was found that when a domain name has been routed to the site of a third party, it is only theoretically possible that the Respondent may obtain a commercial benefit. Something similar was said in Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The panel in Club de Regatas Vasco da Gama v. Building Centre International, WIPO Case No. D2000-0739, found that the respondent was profiting “by offering an e-mail service for addresses to be formed with the domain name of the user’s favorite team, against the annual fee of U$ (sic) 14,95”. The respondent in the Vasco da Gama case was apparently routing the domain name to a site managed by its own. On similar grounds, ViriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446.
In the instant case, there is nothing on record serving as evidence that Respondent is using the Domain Name for the purpose of making a profit. The fact that Respondent has used the website for a number of links cannot be necessarily conclusive of the foregoing. Under that rationale, it would in the end be impossible to determine the transgression to paragraph 4(b)(iv) of the Policy.
6.5.3 Bad Faith Considerations Outside Paragraph 4(b) of the Policy
As mentioned earlier, the Panel is not limited to the application of the four circumstances of paragraph 4(b) of the Policy, to determine whether the Domain Name was registered and used in bad faith. Paragraph 4(b) of the Policy sets out a non-exclusive list of factors evidencing bad faith, but allows for the development of further factors. The majority of panelists have sustained that reiteratively. One landmark case for the foregoing is Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003. Other panelists have found the Policy to be so broad in scope so as to authorize the analysis of bad faith use and registration wherever a respondent “incurs in relevant portions of the Policy description of bad faith circumstances, such as the disruption of business, the willful creation of a likelihood of confusion, and the intentional attempt to attract Internet users to the website of…Complainant’s main competitor”. Tarjeta Naranja S.A. v. Mr Dominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295; Banco Bilbao Vizcaya Argentaria, S.A. v. N/A, D2003-0996, or UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020. This Panel understands the Policy’s authorization as a possibility of analyzing the paragraphs of 4(b) of the Policy, by concentrating on “relevant portions” or parts the provisions.
The following lines are intended to examine possible causes, outside that scope, that could be invoked in addition to what has been discussed in the preceding section of this decision. The foregoing, in the understanding that paragraph 3(a)(iii) of the Policy requires the showing of both, registration and use of the Domain Name in bad faith.
220.127.116.11 Registration in Bad Faith
Following the rationale of First Tennessee National Corporation v. Henry Tsung, WIPO Case No. D2004-0103, Respondent could not possibly claim innocence to the existence of Complainant and its intellectual properties. Under FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915, Respondent has been involved in at least another UDRP. Accordingly, the present decision “absent evidence to the contrary by Respondent, tend to indicate a pattern by which the Respondent initially registers domain names comprising trademarks or variations of trademarks for which he has no rights, and then links the domain names to websites that directly compete with the owners of the trademarks or that tarnish the goodwill associated with the trademarks”. It is evident for this Panel that the foregoing is applicable in this case.
Following the rationale of the Panels in Sony Kabushiki Kaisha v. sony.net, D2000-1074, and Telstra Corporation Limited v. Peter Yellowlees, D2002-0638, there is no obvious possible justification for the selection that Respondent made of the Domain Name. The foregoing driven from the fact that Respondents could not ignore the existence of the Marks and domain name of Complainant, as well as the activity of this latter. Likewise, said Marks and domain name convey distinctive terms that Respondent would have hardly obtained or adopted, should they have not known about the existence of Complainant.
Following the rationale of the Panels in Pfizer, Inc. v Seocho and Vladimir Snezko, WIPO Case No. D2001-1199, Ticketmaster Corporation v Woofer Smith, WIPO Case No. D2003-0346; Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302; Neuberger Berman, Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915; Snapple Beverage Corp. v. Telmex Management Services, WIPO Case No. D2002-0114, or more specially, First Tennessee National Corporation v. Henry Tsung, WIPO Case No. D2004-0103, Respondent has engaged in a “typo squatting” activity, and that can be viewed as a form of bad faith registration. “Typo squatting” is a solution that domain name registrants as Respondent- can employ to attract and misdirect users or visitors to the wrong sites, and ultimately to disrupt the business of a trademark owner.
Following the rationale of the Panels in Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020, or FleetBoston Financial Corporation v. Albert Jackson, D2003-0915, there is no connection among the Marks, the Domain Name, the site of Respondent and the linked sites.
Following the rationale of the panel in Harrods Limited v. Pete Lormer, WIPO Case No. D2003-0504, domain names that are chosen for the purpose of misleadingly identifying the brands of a trademark owner shall be regarded as a registration made in bad faith. Under the facts and evidence submitted in connection with the present case, it can be drawn that, by having registered the Domain Name for the purpose of inexplicably inviting users to attend other locations, Respondent did not act otherwise but in contradiction to the text and spirit of the Policy and in bad faith.
Following the rationale of the Panel in Telstra Corporation Limited v. Peter Yellowlees, WIPO Case No. D2002-0638, and a domain name shall be registered in bad faith when the corresponding holder has no legitimate rights in the same and is likely to be aware of the trademark or other rights. As discussed earlier in connection with this matter, Respondent did not prove rights or interests of any sort and on the contrary, this Panel has found a number of convincing factors to presume that. From the foregoing, the criterion of lack of interest can be applied mutates mutandis to the present issue, in order to determine that the Domain Name was registered in bad faith.
The circumstances above described satisfy the Panel to conclude that, for the purposes of Paragraph 4(a)(iii) of the Policy, the Domain Name was registered in bad faith.
18.104.22.168 Use in Bad Faith
Following the rationale of the panel in Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071, and other references cited above, at the same time inspired by the Telstra v. Nuclear Marshmallows decision, the registrant of a domain name could only use it for legitimate and good faith purposes if it was unaware of the existence Marks of third parties that eventually could enter into conflict. On the contrary, the legitimate factor would obviously be absent in such cases where the registrant knew or should have known about the rights of the third party. In the instant matter, Respondent did not act in good faith as it clearly knew, or at least should have known about the rights of Complainant over the TRUSTMARK marks, but also of the domain name registrations. It can not be regarded a casual circumstance that Respondent registered the Domain Name, long after Complainant had registered two domain names and three trademarks for virtually the same thing. In addition, it can not be regarded a coincidence that Respondent used the Domain Name intending to use the websites to project users to places that would offer similar services to those of the Complainant.
Following the rationale of the Panels in Harrods Limited v. Pete Lormer, WIPO Case No. D2003-0504 and Jorge Antonio Labanda Blanco v. Xavier Mañé, WIPO Case No. D2002-1111, bad faith use of a domain name “is an unavoidable inference, indeed consequence, of the act of registration itself”. In this regard, the Harrods decision has stated “the Respondent has exercised bad faith by the very act of not being reasonably able to use that name without having the effect of violating the Complainant’s name and trademarks”. That is clearly authority applicable in the present case, where the Domain Name was registered and further used in bad faith.
Following the rationale of the Panels in Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020, or FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915, there is no connection among the Marks, the Domain Name, the site of Respondent and the linked sites. Under Parfums Christian Dior v. Javier García Quintas and Christiandior.net, WIPO Case No. D2000-0226, or Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, “the domain name is so obviously connected with Complainant’s trademarks that its very use by someone with connection suggests ‘opportunistic bad faith”. Respondent has used the Domain Name as a link to the sites of third parties that render similar, if not competitive services to those of Complainant, and that could only be viewed as an intention to attract visitor to unrelated websites. For this Panel, it is irrelevant if that practice is made for commercial gain or not. Bad faith is present regardless of the commercial aspect. In Sears, Roebuck and Co. v. Hanna Law Office, WIPO Case No. D2000-0669, the Panel analyzed that same issue, arriving to the conclusion that in a situation as the foregoing, the title holder of the trademarks can still suffer a commercial detriment for having lost business opportunities. This Panel subscribes to the Sears Roebuck rationale.
Following again the rationale of the Panel in Telstra Corporation Limited v. Peter Yellowlees, WIPO Case No. D2002-0638, and a domain name shall be used in bad faith when the corresponding holder has no legitimate rights in the same, and is likely to be aware of the trademark or other rights. As discussed earlier in connection with this matter, Respondent did not prove rights or interests of any sort and on the contrary, this Panel has found a number of convincing factors to presume that. From the foregoing, the criterion of lack of interest can be applied mutates mutandis to the present issue, in order to determine that the Domain Name was registered in bad faith.
The circumstances above described satisfy the Panel to conclude that, for the purposes of Paragraph 4(a)(iii) of the Policy, the Domain Name was used in bad faith.
The Panel has found that the domain name <wwwtrustmark.com> is identical or confusingly similar to the trademarks and domain name of the Complainant, and that the Respondent has no rights or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it has been and is being used in bad faith.
Therefore, pursuant to Paragraphs 4(a) (i), (ii) and (iii) of the Policy and 15 of the Rules, the Administrative Panel decides to request that the domain name <wwwtrustmark.com> be transferred to the Complainant, Trustmark National Bank.
Luis C. Schmidt
Date: June 4, 2004