Whitneynationalbankers.com

The timeline behind whitneynationalbankers.com

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

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. Easynet Ltd c/o Customer Services Department Claim Number: FA0703000944330 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 Easynet Ltd c/o Customer Services Department (“Respondent”), Easynet Ltd, The Maltings, Shepton Mallet, Somerset BA4 5QE, GB. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <whitneynationalbankers.com>, registered with Tucows Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 22, 2007. On March 21, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <whitneynationalbankers.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 12, 2007 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@whitneynationalbankers.com by e-mail. A Response was received electronically before the deadline for Response, but the National Arbitration Forum did not receive a hard copy of the Response. As a result, the Response has been deemed deficient pursuant to Supplemental Rule 5(a). On April 20, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant 1. Respondent’s <whitneynationalbankers.com> domain name, the domain name at issue, is confusingly similar to Complainant’s mark. 2. Respondent does not have any rights or legitimate interests in the domain name at issue. 3. Respondent registered and used the domain name at issue in bad faith. B. Respondent failed to submit a Response which opposed any relief sought by Respondent and would have been deficient for consideration in this proceeding in any event. FINDINGS Complainant has used the trademarks and service marks WHITNEY and WHITNEY BANK for over one hundred and twenty (120) years (i.e., since its inception in 1883). Additionally, Complainant has used the term WHITNEY in conjunction with NATIONAL BANK as part of its name for at least ninety-four (94) years. Complainant is the oldest continuously operating bank in New Orleans, Louisiana (having been in continuous operation since 1883) and a banking industry leader in the Gulf South region of the United States. Complainant, a multi-billion dollar financial institution, engages in community banking in its market areas in the five-state Gulf Coast region, including Houston, Texas; southern Louisiana; the coastal region of Mississippi; central and south Alabama; and the panhandle of Florida. Complainant also has a foreign branch on Grand Cayman in the British West Indies. Provided by Complainant is proof of USPTO registration of WHITNEY in connection with banking and other financial services. Complainant has not licensed Respondent to use its marks in connection with the domain name at issue and Respondent is not commonly known by the domain name at issue. Respondent does not operate a bank in connection with the domain name at issue. Respondent’s use of the term “bank” in the <whitneynationalbankers.com> domain name creates the false and misleading impression that Respondent operates a bank. Respondent’s use of this domain name is calculated to mislead, confuse, and divert consumers who are seeking the goods and services provided by Complainant. A use calculated to mislead, confuse, and divert consumers does not constitute a bona fide offering of goods or services. Respondent has provided a Response that was deficient because the National Arbitration Forum has determined that a hard copy of the Response was not received by the Response deadline. The Panel determined not to consider Respondent’s submission because it did not oppose the granting of any relief requested by Complainant and is not in compliance with ICANN Rule 5(a) (no hard copy timely received by the National Arbitration Forum). See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist); see also Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to accept the Respondent’s deficient response that was only submitted in electronic form because it would not have affected the outcome had the Panel considered it). But see Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). So this is essentially a default case before the Panel. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” 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; (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 Complainant has established rights in the WHITNEY mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,311,441 issued December 25, 1984). Complainant’s timely registration with the USPTO and subsequent use of the WHITNEY mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also 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.”). Respondent’s <whitneynationalbankers.com> domain name includes Complainant’s WHITNEY mark in its entirety and adds the generic terms “national” and “bankers” as well as the generic top-level domain (“gTLD”) “.com.” The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii); the burden now shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Respondent is not commonly known by the domain name at issue. The WHOIS information identifies Respondent as “Easynet Ltd,” and Respondent is not licensed or authorized to use the WHITNEY mark. Therefore, Respondent is not commonly known by the <whitneynationalbankers.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected). Respondent is not making any use of the <whitneynationalbankers.com> domain name. Respondent’s failure to use the disputed domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See State Fair of Tex. v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also L.F.P., Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (“A Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when that Respondent might be capable of doing otherwise.”). The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Respondent is not making any use of the <whitneynationalbankers.com> domain name. Respondent’s failure to make use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that non-use of a domain name permits an inference of registration and use in bad faith). The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii). 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 <whitneynationalbankers.com> domain name be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: April 30, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.