Whitenybank.com + 3 more domains

The timeline behind whitenybank.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Whitney National Bank v. Digi Real Estate Foundation Claim Number: FA0603000657208 PARTIES Complainant is Whitney National Bank (“Complainant”), represented by Raymond G. Areaux, of Carver, Darden, Koretzky, Tessier, Finn, Blossman & Areaux, LLC, 1100 Poydras Street, Suite 2700, New Orleans, LA 70163. Respondent is Digi Real Estate Foundation (“Respondent”), P.O. Box 7-5324, Panama City N7 8DJ, PA. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <whitnybank.com>, registered with Brandon Gray Internet Services, Inc. d/b/a NameJuice.com, <whitnaybank.com>, registered with GalComm, Inc., <whineybank.com>, registered with Web Internet, Llc, and <whitenybank.com>, registered with Name Intelligence, Inc. 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. Sandra J. Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 14, 2006. On March 13, 2006, Brandon Gray Internet Services, Inc. d/b/a NameJuice.com confirmed by e-mail to the National Arbitration Forum that the <whitnybank.com> domain name is registered with Brandon Gray Internet Services, Inc. d/b/a NameJuice.com, and that Respondent is the current registrant of the name. Brandon Gray Internet Services, Inc. d/b/a NameJuice.com has verified that Respondent is bound by the Brandon Gray Internet Services, Inc. d/b/a NameJuice.com 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 March 15, 2006, GalComm, Inc. confirmed by e-mail to the National Arbitration Forum that the <whitnaybank.com> domain name is registered with GalComm, Inc., and that Respondent is the current registrant of the name. GalComm, Inc. has verified that Respondent is bound by the GalComm, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy. On March 22, 2006, Web Internet, Llc, confirmed by e-mail to the National Arbitration Forum that the <whineybank.com> domain name is registered with Web Internet, Llc, and that Respondent is the current registrant of the name. Web Internet, Llc, has verified that Respondent is bound by the Web Internet, Llc, registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy. On March 23, 2006, Name Intelligence, Inc, confirmed by e-mail to the National Arbitration Forum that the <whitenybank.com> domain name is registered with Name Intelligence, Inc, and that Respondent is the current registrant of the name. Name Intelligence, Inc, has verified that Respondent is bound by the Name Intelligence, Inc, registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy. On March 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 2006 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@whitnybank.com, postmaster@whitnaybank.com, postmaster@whineybank.com, and postmaster@whitenybank.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <whitnybank.com>, <whitnaybank.com>, <whineybank.com>, and <whitenybank.com> domain names are confusingly similar to Complainant’s WHITNEY mark. 2. Respondent does not have any rights or legitimate interests in the <whitnybank.com>, <whitnaybank.com>, <whineybank.com>, and <whitenybank.com> domain names. 3. Respondent registered and used the <whitnybank.com>, <whitnaybank.com>, <whineybank.com>, and <whitenybank.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Whitney National Bank, is the oldest continuously operating bank in New Orleans, Louisiana, and is engaged in the business of banking and financial services throughout the Gulf Coast region of the United States. Since its inception in 1883, Complainant has conducted its business in the Gulf Coast region using the WHITNEY mark. Additionally, Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WHITNEY mark. Complainant first registered the WHITNEY mark with the USPTO on December 25, 1984 (Reg. No. 1,311,441). Respondent registered the disputed domain names on the following dates: <whineybank.com> on July 26, 2005; <whitenybank.com> on August 6, 2005; <whitnaybank.com> on October 21, 2005; and <whitnybank.com> on November 24, 2005. Respondent is using the disputed domain names to operate websites featuring numerous links to to third-party websites that offer banking and financial services in direct competition with Complainant. 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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 The Panel finds that Complainant has sufficiently established rights in the WHITNEY mark under Policy ¶ 4(a)(i) through Complainant’s trademark registrations with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). The Panel also finds that Respondent’s <whitnybank.com>, <whitnaybank.com>, <whineybank.com>, and <whitenybank.com> domain names are confusingly similar to Complainant’s WHITNEY mark under Policy ¶ 4(a)(i). Respondent’s <whitnybank.com> and <whineybank.com> domain names incorporate Complainant’s WHITNEY mark in its entirety, omitting the letters “e” and “t,” respectively, and adding the descriptive term “bank” with the generic top-level domain “.com.” Such alterations to Complainant’s mark do not avoid confusing similarity between Respondent’s disputed domain names and Complainant’s WHITNEY mark. See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Similarly, Respondent’s <whitenybank.com> and <whitnaybank.com> domain names are confusingly similar to Complainant’s WHITNEY mark because the disputed domain names are comprised of simple misspellings of Complainant’s mark, with the additions of the term “bank” and the generic top-level domain “.com.” See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has asserted that Respondent lacks rights or legitimate interests in the disputed domain names. Initially, Complainant bears the burden of demonstrating that Respondent lacks rights and legitimate in the domain names. However, once Complainant establishes a prima facie case, the burden shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(c). The evidence on record does not indicate that Respondent is commonly known by any of the disputed domain names. According to the WHOIS information for the disputed domain names, Respondent conducts its business under the name “Digi Real Estate Foundation.” Moreover, Complainant has asserted that Complainant has never licensed nor otherwise authorized Respondent to use any of its marks for any purpose, including the registration of a domain name. Therefore, the Panel finds that Respondent has not demonstrated rights or legitimate interests with respect to any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Furthermore, each of Respondent’s disputed domain names resolves to a website offering links to third-party websites that compete with Complainant’s banking and financial services business. Consequently, the evidence suggests that Respondent’s <whitnybank.com>, <whitnaybank.com>, <whineybank.com>, and <whitenybank.com> domain names were registered by Respondent with the intent to divert Internet users seeking Complainant’s services. Such use by Respondent does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent registered and used the disputed domain names to operate websites featuring links to third-party websites that directly compete with Complainant’s banking and financial services business. Thus, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain names and Complainant’s WHITNEY mark, and is likely capitalizing on the long-established goodwill associated with Complainant’s mark. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website). 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 <whitnybank.com>, <whitnaybank.com>, <whineybank.com>, and <whitenybank.com> domain names be TRANSFERRED from Respondent to Complainant. Sandra J. Franklin, Panelist Dated: May 5, 2006 Click Here to return to the main Domain Decisions Page. 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Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.