WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National City Corporation v. Dotsan
Case No. D2002-0082
1. The Parties
The Complainant is National City Corporation, a corporation organized and existing under the laws of the State of Delaware with its principal business located at National City Center, 1900 East Ninth Street, Cleveland, Ohio 44114-0756, U. S. A.
The Respondent is, according to contact details from the Registrantís WHOIS database, Dotsan, an entity located at 35-37 Sunder Mahal, Mumbai, India 400021, IN.
2. The Domain Name and Registrar
The Domain Name at issue is <nationalcitymorgage.com>.
The Domain Name was registered with the Registrar is Bulkregister.com on July 27, 2001.
3. Procedural History
A complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 25, 2002 (and in hard copy form on January 30, 2002). Its receipt was acknowledged to the Complainant by the WIPO Center on January 29, 2002. The next day, the WIPO Center requested and on February 4, 2002, received a Registrar Verification issued by Bulkregister.com. Payment of the administration fee was duly received. After Formal Compliance Review, verifying that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") (including a printout by the WIPO Center of a disputed web page) the formal date of the commencement of the administrative proceeding was set to be February 5, 2002. A Notification of Complaint and Commencement of Administrative Proceeding to the parties and Bulkregister.com was issued on that same day, followed by a Response Default Notification on February 27, 2002.
The Complainant chose to have the dispute decided by a single-member Administrative Panel. There having been no response to the complaint, the Panel was properly constituted on March 12, 2002. It was founded on a Statement of Acceptance and Declaration of Impartiality and Independence dated March 8, 2002. A Notification of Appointment of Administrative Panel and Projected Decision Date was properly issued on March 12, 2002, indicating as single panelist Professor Gunnar Wilhelm Gösta Karnell.
4. Factual Background
In compliance with Paragraph 3 (b) (xiii) of the Rules, the Complainant has agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of its complaint, to the jurisdiction of the United States District Court for the District of Maryland, Baltimore Division, the Registrar having its principal office at 7 East Redwood Street, Third Floor, Baltimore, MD 21202, U.S.A.
The Registrar Verification states that the Uniform Policy applies to the domain name at issue.
5. Partiesí Contentions
A. Complainant (summary; and request for remedy)
National City Corporation is a financial holding company, founded in 1845, with multiple financial services subsidiaries (over a thousand branches) throughout the mid-western U.S.A., offering financial services; its principal activities being commercial and retail banking, consumer finance, asset management, mortgage financing and servicing as well as item processing. It is the tenth largest banking company in the U.S.A. based on total assets. It operates a web site <www.nationalcity.com>, where it provides a wealth of mortgage information, such as, for instance, makes it possible for customers to research mortgage costs and types and to learn how to obtain mortgage loans. Having offered mortgage services for more than one hundred years, presently its mortgage services exceed USD 63 billion in outstanding business. It has always used its trade name National City Corporation in connection with its mortgage services. Its mark NATIONAL CITY, alone or in combination with other terms and designs is registered extensively as a service mark in the U.S.A., where eight valid and subsisting trademark registrations cover a variety of financial services. The NATIONAL CITY mark is well known in the field of banking and financial services as exclusively associated with the Complainant.
The Respondentís domain name <nationalcitymorgage.com> is virtually identical and confusingly similar to Complainantís service mark and trade name NATIONAL CITY.
That the domain name at issue contains a generic or descriptive term together with Complainantís service mark does not serve to dispel confusion. A descriptor such as MORTGAGE, misspelled in the domain name, exacerbates confusion. Respondentís domain name with the wording NATIONAL CITY, identical to the Complainants trade name and registered service mark NATIONAL CITY and the misspelled wording MORGAGE establishes a confusing similarity.
The Respondent has no rights or legitimate interest in the domain name <nationalcitymorgage.com>. Its use of the domain name deliberately diverts customers interested in Complainantís services who do not know the correct spelling or unintentionally make a typing error when typing the Complainantís mark or name.
The domain name has been registered and is used in bad faith in order to try to sell it to the Complainant or to divert the public from the Complainantís web site. Respondentís registration is intended to and will confuse the relevant purchasing public to believe that Complainant maintains or has approved, endorsed or is the sponsor of or that it is otherwise associated with a web site located at <nationalcitymorgage.com>. The misspelling constitutes a deliberate attempt to confuse Internet users by so called "typo-piracy". Accessing the domain name, the Internet user Ė having discarded a pop-up advertisement Ė gains access to a four choices link "Finance Your Home purchase" "Refinance Your Mortgage" "Cash out your Homeís equity" "Finance Your Auto". The link leads to the web site at <www.eloan.com>, where home mortgages and equity loans are offered. At the middle of the page with the alternatives just mentioned there is a rectangle under the title of "Quotes, Costs, Rates & Comparisons (USA Only)". A click on the rectangle leads to a site maintained at <www.quotes123.com>, offering mortgages and other financial services as well as insurance. The web pages are clearly competitive with National City and its mortgage services. Whichever "pop ups" appear before the consumer who accesses the domain name generates money to the site proprietor. This demonstrates that the domain name is used to generate money from the unauthorized use of the Complainantís protected trade mark and trade name. It may be assumed that Respondent choose the domain name with full knowledge of Complainantís rights in its trademark. It is inconceivable that Respondent would be unaware of the NATIONAL CITY mark, being well known for decades in the banking and financing industry by its use. Also, the addition of the wording "mortgage" to the NATIONAL CITY mark would have no sense, were it not for the awareness of the Complainantís mortgage services. The acts by the Respondent have been committed with the intent and purpose of creating likelihood of confusion and appropriating and trading upon Complainantís goodwill and reputation.
The Complainant has requested, in accordance with Paragraph 4 i. of the Uniform Policy, that the Administrative Panel transfer the domain name <nationalcitymorgage.com> to the Complainant.
There has been no response from the Respondent.
6. Discussion and Finding
A. The domain name <nationalcitymorgage.com> is not textually similar to the service trade mark NATIONAL CITY. However, the Panel finds it confusingly similar for reasons given by the Complainant as summarized here above under A.
B. Regarding any possible rights and legitimate interests relating to the domain name the Respondent has failed to shown evidence of such rights or interest. The Panel concludes from how the domain name has been used together with Respondentís failure to respond to the complaint that there are none.
C. The Panel does not believe that the Respondent has chosen its domain name without knowledge of National City. The Respondent has registered and uses its domain name in an intentional attempt to attract for commercial gain Internet users to its web site and by hyperlink to another commercial online location, with effects that must be considered to be undesired by anyone attempting to reach any company site of NATIONAL CITY and its services. Such similarity will, moreover, in itself contribute to the effect of denigrating the service mark. It creates such a likelihood of confusion with the Complainantís mark as is mentioned under 4. b. (iv) of the Uniform Policy.
D. The Administrative Panel concludes that all elements mentioned in the Uniform Policy under article 4 a. (i)-(iii) are present in the case. The Complainant has chosen to require that the domain name be transferred to the Complainant and so it shall be, notwithstanding the fact that its value to the Complainant will certainly depend upon correction of its spelling.
The Administrative Panel requires that the registration of the domain name <nationalcitymorgage.com> be transferred to the Complainant.
Dated: March 18, 2002