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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum
Case No. D2006-0881
1. The Parties
The Complainant is Ohio Savings Bank, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondents are 1&1 Internet, Inc. and David Rosenbaum, both of the United States of America, as discussed more fully below.
2. The Domain Name and Registrar
The disputed domain names:
are registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 11, 2006. On July 12, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain names in dispute. On July 17, 2006, Schlund + Partner transmitted by email to the Center a verification confirming 1&1 Internet, Inc. as the Respondent for each of the domain names, indicating that it had “locked” the domain names, and confirming details of the registration agreements. The verification went on to identify an individual named David Rosenbaum, as the registrant and provided his contact details as registrant, as well as contact information for the administrative, billing, and technical contacts for the domain names.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with Rules 2(a) and 4(a), the Center formally notified both 1&1 Internet, Inc. and Mr. Rosenbaum of the Complaint, and the proceedings commenced on July 18, 2006. The record shows that the couriers used by the Center delivered a copy of the case materials to the physical addresses associated with 1&1 Internet, Inc. and Mr. Rosenbaum.
In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2006. Neither 1&1 Internet, Inc. nor Mr. Rosenbaum submitted any response. Accordingly, the Center notified the default on August 7, 2006.
The Center appointed Debra J. Stanek as the sole panelist in this matter on August 15, 2006. 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.
On August 28, 2006, the Panel issued Procedural Order No. 1, extending the time for its decision until September 5, 2006, due to a delay in the Panel’s receipt of the complete case file. Subsequently, the Panel issued Procedural Order No. 2, dated September 6, 2006, noting the inconsistencies in the identification of the registrant of each of the domain names by the registrar, as referenced above. The Order requested that the Center contact the registrar and confirm the identity of Respondent. In an e-mail message dated September 11, 2006, the registrar stated that:
“It seems, that the domains named below were registered through 1&1’s private Registration System and so 1&1’s Contact details were placed in whois.
Our legal department advised us, to remove private registrations contact details once a udrp complaint has been accepted.
So, we removed these contact shareholders and replaced those with the ones written in our internal customer systems.
The contact details shown in the whois are the same we got from our customer when he registered these domains.”
4. Factual Background
Complainant and its predecessors have, for over 20 years used the name and mark AMTRUST in connection with retail banking services. Complainant uses the mark in connection with numerous banking services, including: retail, mortgage, commercial, telephone and Internet, automobile financing, insurance agency, securities brokerage, residential land acquisition, development and construction lending, private equity investment, and financial services.
Complainant owns a United States federal trademark registration for the mark AMTRUST for its retail banking services. Complainant has also registered several “amtrust” domain names, including <amtrust.com> and several, relatively recently registered “amtrustdirect” domain names, including <amtrustdirect.com>, registered in December 2004.
Sometime in June 2006, 1&1 Internet, Inc. registered each of the disputed domain names, which do not currently devolve to active websites.
5. Parties’ Contentions
Complainant makes the following contentions:
Each of the disputed domain names is confusingly similar to its AMTRUST trademark and its <amtrustdirect.com> domain name. Each contains the entire mark AMTRUST, as its most distinctive portion, and each is virtually identical in sight, sound, and meaning to the AMTRUST mark.
Respondent has no rights or legitimate interests in any of the domain names. Respondent is not known by the name AMTRUST, is not related to Complainant, and has not been authorized by Complainant to use the AMTRUST mark.
Further, Complainant’s rights in the AMTRUST mark, significantly predate – by at least 15 years –Respondent’s registration of the disputed domain names. Finally, because “amtrust” is a coined term that is the subject of Complainant’s federal trademark registration, no legitimate use by Respondent is possible.
Respondent registered and is using the domain name in bad faith. Respondent’s registration of multiple names that include Complainant’s AMTRUST mark demonstrate a pattern of conduct intended to prevent Complainant from reflecting its mark in corresponding domain names.
Respondent is engaged in intentional “typo squatting” to attract Internet users who are looking for the Complainant’s “www.amtrust.com” or “www.amtrustdirect.com” websites.
Given the fame of the AMTRUST marks, it is reasonable to conclude that Respondent registered the disputed domain names to deliberately attract the public and divert Internet traffic away from Complainant’s websites with the intent of causing public confusion, mistake and deception as to the source, origin and affiliation.
Respondent cannot use the disputed domain names for any product or service because any such use would violate Complainant’s trademark rights.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matters
“Respondent” is defined as “the holder of a domain-name registration against which a complaint is initiated.” See Rule 1, s.v. “Respondent.” Based on the record, it appears that the Complaint correctly named as Respondent, 1&1 Internet, Inc., the registrant of record for each of the disputed the domain names at the time that the Complaint was filed, albeit pursuant to its privacy service. It was only after this proceeding was filed that the registrar changed the registration record to identify as the registrant the individual who was using the privacy service.
When such circumstances arise, the Panel understands that the Center’s current practice is typically to require the complainant to amend the complaint – either to name both the privacy service registrant and the party using the privacy service or to simply name the party using the privacy service. This practice is sensible and has the benefit of trying to get notice of the proceeding to the party that is most affected the proceeding. However, it may simply be that one of the disadvantages of using a privacy service – to be weighed against the advantages of using such a service – are delays or lack of notice of proceedings that rely on the information contained in the registration record to provide notice. By this the Panel does not intend to suggest that such a delay or lack of notice is insignificant, but that they may simply be one of the consequences of the choice to use such a service, particularly where proceedings under the Policy look to and rely on information in the registration record maintained by the registrar.
In any case, in this proceeding, the Center sent a copy of the Complaint to both the Respondent named in the Complaint as well as to the individual using the privacy service. Accordingly, for the purposes of this proceeding, the Panel considers both of them, jointly, as the Respondent .
Therefore, in light of the foregoing, but without suggesting that the same result would obtain under other circumstances, the Panel concludes that the Complaint as filed complies with the Rules and further that the Center has complied with its obligation to “employ reasonably available means calculated to achieve actual notice.” See Rule 2(a).
B. Burden of Proof
In order to prevail, Complainant must prove, as to each of the disputed domain names:
(i) The domain name is identical or confusingly similar to Complainant’s mark;
(ii) 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). The Policy sets out four circumstances that may evidence a Respondent’s bad faith registration and use under paragraph 4(a)(iii), see Policy, paragraph 4(b), as well as examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c).
(1) Identical or Confusingly Similar
Complainant must establish that the disputed domain names are either identical or confusingly similar to its mark. The Complainant has established rights in the mark AMTRUST by virtue of its federal trademark registration.
Complainant has also established that each of the disputed domain names is confusingly similar to the AMTRUST mark.
Each of the disputed domain names incorporates Complainant’s AMTRUST mark in its entirety. With the exception of the <wwwamtrustdirect.com> domain name, each begins with the coined term “amtrust” and is followed by a misspelling of the ordinary descriptive term “direct.” The term “direct” (and its misspellings) simply reinforce the trademark function of the AMTRUST mark as consumers are likely to understand that each of these disputed domain names offer a direct connection to Complainant and its banking services. None of the misspellings of “direct” serve to distinguish the disputed domain names from the AMTRUST mark and they result in domain names that are a few keystrokes away from Complainant’s <amtrustdirect.com> domain name.
As for the <wwwamtrustdirect.com> domain name, the addition of the prefix “www” does nothing to distinguish the domain name from the AMTRUST mark and the reasons set forth above also apply to it.
The Panel concludes that each of the disputed domain names is confusingly similar to Complainant’s mark.
(2) Rights or Legitimate Interests
Complainant must make a prima facie showing that none of the three examples of rights or legitimate interests in a domain name set forth in paragraph 4(c) of the Policy are applicable. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Complainant has clearly established long-time and extensive use of the AMTRUST mark, making it difficult to conceive of circumstances in which Respondent might have legitimately used or become known by the domain names.
First, it does not appear that Respondent was making a bona fide use of the domain names before notice of the dispute. Respondent appears to registered the domain names relatively recently there are not active websites associated with the names.
Second, it does not appear that the disputed domain names used to identify Respondent.
Third, it does not appear that Respondent is making a legitimate non-commercial or fair use of the domain names.
Respondent has not met its burden of demonstrating any rights or legitimate interests in the domain names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (if, name after complainant’s prima facie showing, respondent fails to show rights or legitimate interests in the domain, complainant deemed to satisfy paragraph 4(a)(ii) of the UDRP). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
(3) Registered and Used in Bad Faith
As noted above, each of the disputed domain names is confusingly similar to the AMTRUST mark. It is therefore reasonable to conclude that Respondent’s sites would attract visitors who are actually seeking Complainant’s site. Complainant’s mark has been in use for many years and is well known in connection with its banking services; it is not unreasonable to impute to Respondent knowledge of Complainant’s rights in registering and using the domain names.
Although Respondent’s websites are not currently active, other circumstances indicate Respondent’s bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.2 (non-use of the domain name does not preclude a finding of bad faith; panel should look at all the circumstances in determining whether respondent is acting in bad faith). It appears that Respondent has engaged in a pattern of conduct of registering “amtrust” domain names to prevent Complainant from reflecting its mark in such names. Further, the Panel cannot conceive of any use of the domain names, by virtue of the registration of domain names containing Complainant’s entire mark plus variants of the term “direct”, that would be other than to “intentionally attempt to attract, for commercial gain, Internet users . . . , by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” See Rule 4.b.
Under these circumstances, the Panel finds that Respondent has registered and used the domain names in bad faith.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and Rule 15, the Panel orders that each of the disputed domain names:
be transferred to Complainant.
Debra J. Stanek
Dated: September 15, 2006