Ulsterbankanytime.com

The timeline behind ulsterbankanytime.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 Ulster Bank Limited v. Ma Lao Shu Claim Number: FA0909001284593 PARTIES Complainant is Ulster Bank Limited (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA. Respondent is Ma Lao Shu (“Respondent”), China. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <ulsterbankanytime.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com. PANEL The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically September 15, 2009; the National Arbitration Forum received a hard copy of the Complaint September 16, 2009. On September 17, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <ulsterbankanytime.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On September 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 2009, 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@ulsterbankanytime.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On October 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson sits as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. The domain name that Respondent registered, <ulsterbankanytime.com>, is confusingly similar to Complainant’s ULSTER BANK mark. 2. Respondent has no rights to or legitimate interests in the <ulsterbankanytime.com> domain name. 3. Respondent registered and used the <ulsterbankanytime.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Ulster Bank Ltd., provides financial services in the country of Ireland. Complainant began providing financial services in 1836. Complainant conducts a large portion of its business online through its domain names <ulsterbank.com>, <ulsterbank.co.uk>, and <ulsterbankanytime.co.uk>. Complainant holds a trademark registration with the Irish Patents Office (“IPO”) (Reg. No. 203,840 issued May 11, 1996), the U.K. Intellectual Property Office (“UKIPO”) (Reg. No. 2,408,268A issued September 22, 2006), and the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4,411,112 issued September 2, 2007) for its ULSTER BANK mark. Respondent, Ma Lao Shu, registered the <ulsterbankanytime.com> domain name December 1, 2005. The disputed domain name resolves to a website featuring hyperlinks to adult-oriented websites. 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." Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar The Panel finds it is not necessary for Complainant to register the mark in Respondent’s country, China. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel further finds that Complainant established rights under Policy ¶ 4(a)(i) in the ULSTER BANK mark through its registration with the IPO (Reg. No. 203,840 issued May 11, 1996), with the UKIPO (Reg. No. 2,408,268A issued September 22, 2006), and with the OHIM (Reg. No. 4,411,112 issued September 2, 2007). See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant contends Respondent’s <ulsterbankanytime.com> domain name is confusingly similar to Complainant’s ULSTER BANK mark. The disputed domain name removes the space between the two terms in Complainant’s marks and adds the descriptive term “anytime,” which refers to Complainant’s online offering of its financial services available at anytime, and the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a descriptive term fails to adequately distinguish the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel further finds the removal of a space and the addition of a gTLD are irrelevant under a Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds Respondent’s <ulsterbankanytime.com> domain name is confusingly similar to Complainant’s ULSTER BANK mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has alleged that Respondent does not have any rights or legitimate interests in the <ulsterbankanytime.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel still examines the record to determine whether the evidence suggests that Respondent has rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The WHOIS information lists Respondent as “Ma Lao Shu.” Respondent offered no evidence that Respondent is commonly known by the <ulsterbankanytime.com> domain name and no evidence in the record suggests that Respondent is commonly known by the disputed domain name. Complainant further asserts that Respondent is not authorized to use the ULSTER BANK mark. Therefore the Panel finds that Respondent is not commonly known by the <ulsterbankanytime.com> domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Respondent uses the <ulsterbankanytime.com> domain name to resolve to a website featuring hyperlinks to adult-oriented websites. Complainant alleges that Respondent receives click-through fees from these hyperlinks. The Panel finds that Respondent’s use of the confusingly similar disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair uses of the domain name under Policy ¶ 4(c)(iii). See Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers); see also InnoTown AS v. Forest, D2003-0718 (WIPO Oct. 27, 2003) (because there was “no immediate or apparent connection between the name selected by the Respondent and its web site offering links to various adult-oriented sites” the panel inferred that the respondent registered the domain name to “secure its residual traffic” and held that this activity was not a bona fide offering of goods or services). Furthermore, Respondent uses the disputed domain name to resolve to a website featuring hyperlinks to adult-oriented websites. The Panel finds that by featuring adult-oriented hyperlinks, Respondent fails to establish rights to or interests pursuant to Policy ¶ 4(a)(ii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to an adult-oriented site is not a legitimate or fair use); see also McClatchy Mgmt. Servs., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that the respondent’s use of the disputed domain names to divert Internet users to a website that features adult-oriented material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use). The Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant alleges that Respondent profits from its receipt of click-through fees from its adult-oriented hyperlinks. Such use permits an inference by the Panel that Respondent enjoys commercial benefit and the Panel finds that Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and resolving website. Therefore, the Panel finds Respondent’s use of the disputed domain name supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Respondent’s <ulsterbankanytime.com> domain name resolves to a website featuring adult-oriented hyperlinks. The Panel finds this use of the confusingly similar disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to an adult-oriented site is not a legitimate or fair use); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name). The Panel finds that Complainant satisfied the elements of ICANN 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 <ulsterbankanytime.com> domain name be TRANSFERRED from Respondent to Complainant. Hon. Carolyn Marks Johnson, Panelist Dated: November 3, 2009. 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.