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and Mediation Center
Trustmark National Bank v. Omnikon, Inc
Case No. D2005-1232
1. The Parties
The Complainant is Trustmark National Bank, Jackson, Mississippi, United States of America, represented by Katten Muchin Rosenman LLP, New York, New York, United States of America.
The Respondent is Omnikon, Inc, Abington, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <trustmarkcapital.com> is registered with eNom,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2005. On November 30, 2005, the Center transmitted by email to eNom, Inc., a request for registrar verification in connection with the domain name at issue. On November 30, 2005, eNom, Inc., transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
The Center notified the parties of the Complaint and the proceedings commenced on December 6, 2005, in accordance with paragraphs 2(a) and 4(a) of the Rules. The Respondent was given until December 26, 2005 within which to file a Response, in accordance with paragraph 5(a) of the Rules. No Response was filed by the Respondent. Responding to the Respondent’s Default Notification forwarded to the Respondent by e-mail, the Respondent informed the Center that it had not received the Notification of Complaint, and was thus not aware of its Response due date. The Center noted that the Notification of Complaint forwarded by e-mail to the Respondent had indeed not reached the Respondent due to the voluminous content of that e-mail.
In order to provide the benefit of the full 20 days for the Respondent to submit its Response, the Center notified the parties of the Complaint a second time on January 27, 2006. The Respondent was given until February 16, 2005 within which to file a Response, in accordance with paragraph 5(a) of the Rules. No Response was filed by the Respondent. Accordingly, the Center notified the parties of the Respondent’s default on February 17, 2006.
The Center appointed William L. LaFuze as the sole panelist in this matter
on March 7, 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,
4. Factual Background
Trustmark National Bank is a federally chartered banking association organized under the laws of the United States, having its principal place of business in Jackson, Mississippi. Trustmark National Bank is engaged in the business of providing financial, insurance, and investment services.
According to its Complaint, Trustmark National Bank has advertised, promoted, and provided financial, insurance, and investment services since at least as early as July of 1995 under its TRUSTMARK mark. On October 27, 1999, Trustmark National Bank filed a federal trademark application for the TRUSTMARK mark with the United States Patent and Trademark Office (“USPTO”). Complainant’s application for the TRUSTMARK mark was approved for “banking services, namely checking, savings and loan services, investment services, cash management and electronic banking; and financial services, namely, credit card services, financial planning, financial portfolio management, and trust and asset management; providing information in the financial and banking fields; and providing insurance services related to the above mentioned services, namely, annuity brokerage services; all of the above services are performed via a global computer network.” Complainant’s registration issued on April 9, 2002, and was assigned Registration Number 2,559,639.
On September 22, 2005, subsequent to the use and registration of the TRUSTMARK
trademark by Complainant, Respondent registered the domain name <trustmarkcapital.com>
with eNom, Inc.
5. Parties’ Contentions
Trustmark National Bank has used TRUSTMARK continuously since at least as early as July of 1995 and has common law trademark rights in the name. Further, Trustmark National Bank obtained a federal trademark registration for TRUSTMARK on April 9, 2002 for “banking services, namely checking, savings and loan services, investment services, cash management and electronic banking; and financial services, namely, credit card services, financial planning, financial portfolio management, and trust and asset management; providing information in the financial and banking fields; and providing insurance services related to the above mentioned services, namely, annuity brokerage services; all of the above services are performed via a global computer network.”
Respondent has no relationship with or permission from Complainant for the use of Complainant’s name or trademark. The Respondent’s use of <trustmarkcapital.com> infringes upon the name and trademark of Complainant and causes a likelihood of confusion as defined in the United States Lanham Act, 15. U.S.C. Section 1052(d).
Respondent’s bad faith is evidenced by the fact that it maintains a web site associated with the domain name <trustmarkcapital.com> which is confusingly similar to the Complainant’s TRUSTMARK mark. Such web site contains links to Complainant’s competitors such that the Respondent profits from compensation received from the owners of such linked web sites based on the number of hits received.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Applicable Standard for Transfer
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
B. The Effect of Respondent’s Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding.
But, if it fails to do so, asserted facts that are not unreasonable are taken
as true and the respondent is subject to the inferences that flow naturally
from the information provided by the Complainant: Reuters Limited v. Global
Net 2000, Inc., WIPO Case No. D2000-0441.
See also Hewlett-Packard Company v. Full System S.a.S., National Arbitration
Forum (“NAF”) Case No. FA 0094637; David G. Cook v. This Domain
is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations,
Inc. v. Travel Concierge, NAF Case No. FA0094925. Accordingly, all asserted
facts in the Complaint that are not unreasonable are taken as true.
(i) Identical or Confusingly Similar between the Respondent’s Domain Name and the Trademark in which Complainant has rights
Complainant’s assertions of prior common law use, ownership, and registration of the TRUSTMARK mark are uncontested and are taken as true.
Respondent’s domain name, <trustmarkcapital.com>, is substantially identical to, and confusingly similar to, Complainant’s TRUSTMARK trademark. The use of “.com” by Respondent in its domain name is not material, and of no legal consequence in making this determination. The addition of the term “capital” after the term “trustmark” does not retract from any similarity between Complainant’s TRUSTMARK mark and Respondent’s <trustmarkcapital.com> domain name. Instead, the use of the descriptive term “capital” acts to heighten the likelihood of confusion given that Complainant is a banking association that provides financial products and services.
Complainant has established this element.
(ii) Rights or Legitimate Interests in the Domain Name by the Respondent
Respondent is not commonly known by the domain name at issue and has not acquired trademark or service mark rights in the domain name. Respondent has not requested or been given permission by Complainant to use <trustmarkcapital.com>. There is no evidence proffered by Respondent to show that it has any rights or legitimate interest in the domain name in question.
Accordingly, Complainant has established this element.
(iii) Registered and Used in Bad Faith
It is reasonable to presume that the Respondent intended to profit from the domain name registration of <trustmarkcapital.com> given that its web site offers links to sponsored financial service providers other than Complainant. Such presumed intent is evidence of bad faith.
Respondent has made no effort to respond to or justify any legitimate reasons underlying its registration of the domain name in question.
Accordingly, and based on the case file, Complainant has established this element.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <trustmarkcapital.com> be transferred to the Complainant.
William L. LaFuze
Dated: March 22, 2006