Gee Whiz Software, LLC v. Benjamin Chou
Claim Number: FA2009001912613
Complainant is Gee Whiz Software, LLC (“Complainant”), represented by Melissa L. Bustarde, US. Respondent is Benjamin Chou (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankscan.com>, registered with NameBrew LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2020; the Forum received payment on September 16, 2020.
On September 17, 2020, NameBrew LLC confirmed by e-mail to the Forum that the <bankscan.com> domain name is registered with NameBrew LLC and that Respondent is the current registrant of the name. NameBrew LLC has verified that Respondent is bound by the NameBrew LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bankscan.com. Also on September 21, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Complainant developed and offers software that efficiently extracts financial data into an organized electronic format. Complainant has rights in the BANKSCAN mark through its registration of the mark with the California Secretary of State, as well as its pending application with the United States Patent and Trademark Office (“USPTO”). (California Secretary of State Reg. 2,006,265, registered Aug. 13, 2020; USPTO Pending Application Serial No. 90035261, filed Jul. 3, 2020). See Compl. Exs. 12 and 13. Complainant also has created secondary meaning in the mark, granting it common law rights in the mark. Respondent’s <bankscan.com> domain name is identical to Complainant’s mark as it incorporates the mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <bankscan.com> domain name. Respondent is not commonly known by the disputed domai name, nor has Complainant authorized or licensed Respondent to use its BANKSCAN mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead uses the disptued domain name’s resolving website to redirect to a website of a competitor.
Respondent registered and uses the <bankscan.com> domain name in bad faith. Respondent disrupts Complainant’s business by using the disputed domain name’s resolving website to redirect to a competitor’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that developed and offers software that efficiently extracts financial data into an organized electronic format.
2. Complainant has rights in the BANKSCAN mark through its registration of the mark with the California Secretary of State, as well as its pending application with the United States Patent and Trademark Office (“USPTO”). (California Secretary of State Reg. 2,006,265, registered Aug. 13, 2020; USPTO Pending Application Serial No. 90035261, filed Jul. 3, 2020).
3. Complainant has also established common law trademark rights in BANKSCAN that have been vested in Complainant since at least 2007.
4. Respondent registered the <bankscan.com> domain name on Feb. 1, 2014.
5. Respondent uses the disptued domain name’s resolving website to redirect internet users to a website of a competitor of Complainant.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the BANKSCAN mark through its registration of the mark with the California Secretary of State, as well as its pending application with the USPTO. (California Secretary of State Reg. 2,006,265, registered Aug. 13, 2020; USPTO Pending Application Serial No. 90035261, filed Jul. 3, 2020). See Compl. Exs. 12 and 13. Registration with a U.S. state trademark authority, or a pending application issued with notice of allowance may be sufficient to confer rights in a mark under Policy ¶ 4(a)(i). See Ferman Motor Car Company, Inc. v. Maddisyn Fernandes / Fernandes Privacy Holdings, FA 1775482 (Forum Apr. 19, 2018) (Complainant has rights in the FERMAN CHEVROLET mark through registration of the mark with the Florida Department of State, a State authority); see also Love City Brewing Company v. Anker Fog/Love City Brewing Company, FA1753144 (Forum Nov. 17, 2017) (pending trademark application which had been issued a Notice of Allowance held to sufficiently establish rights in the mark under ICANN Rule ¶ 4(a)(i)). Though it is unclear if Complainant’s application with the U.S. has been issued a notice of allowance, as the Panel finds these registrations sufficient, it finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant also claims common law rights in the BANKSCAN mark. In lieu of a registered trademark, common law rights may suffice to satisfy rights in a mark under Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Complainant argues its common law rights in the mark can be established as far back as 2007. As the Panel finds the mark has acquired secondary meaning, it finds Complainant has common law rights in the BANKSCAN mark under Policy ¶ 4(a)(i).
Complainant argues it has established secondary meaning in the BANKSCAN mark. Secondary meaning is generally sufficient to establish common law rights in a mark, and may be established under Policy ¶ 4(a)(i) through factors such as longstanding use of the mark, holding an identical domain name, advertising, and widespread recognition. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”). Complainant provides screenshots of its BANKSCAN software messages from various years, dating back as far 2007, as well as customer orders of its software from previous years as proof of its longstanding use and customer recognition of the mark. See Compl. Exs. 4 through 11. Complainant also provides screenshots of its websites, which utilize the BANKSCAN mark, and use the mark in its official domain names. See Compl. Exs. 1, 14, 16. Complainant also argues it had tried to register the disputed domain name as far back as 2001. As the Panel agrees, it finds Complainant has established secondary meaning, and thus common law rights in the mark under Policy ¶ 4(a)(i) and that they have been vested in Complainant since at least 2007.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BANKSCAN mark. Complainant argues the <bankscan.com> domain name is identical to Complainant’s BANKSCAN, as it incorporates the mark in its entirety and adds the “.com” gTLD to the end of the mark. Adding the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel find the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BANKSCAN trademark and to use it in its domain name;
(b) Respondent registered the <bankscan.com> domain name on Feb. 1, 2014;
(c) Respondent uses the disptued domain name’s resolving website to redirect internet users to a website of a competitor;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <bankscan.com> domain name, nor has Complainant authorized or licensed Respondent to use its BANKSCAN mark in the disputed domain name. Where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(i). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The WHOIS of record identifies Respondent as “Benjamin Chou”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Compl. Ex. 1; see also Registrar Verification Email. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <bankscan.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead uses the disputed domain name to redirect to a competitor website. Using a disputed domain name to redirect to a site related to or competitive with a Complainant’s business or services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Complainant provides a screenshot of the disputed domain name’s resolving website, which currently redirects to a website titled <scarnwriter.personable.com>, which Complainant argues is a competitor with Complainant’s own business. See Compl. Ex. 16. As the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <bankscan.com> domain name in bad faith by using the disputed domain name to disrupt Complainant’s business. Using a disputed domain name to divert internet users seeking Complainant’s services to a website that competes with Complainant is generally considered bad faith disruption under Policy ¶ 4(b)(iii). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). The Panel recalls Complainant’s screenshot of the disputed domain name’s resolving website, which currently redirects to the webpage of a competitor of Complainant. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BANKSCAN mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankscan.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 24, 2020
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