Investors Bancorp, Inc. v. Andrew Cullo
Claim Number: FA2009001912997
Complainant is Investors Bancorp, Inc. (“Complainant”), represented by Vanessa A. Ignacio of Lowenstein Sandler LLP, New Jersey, USA. Respondent is Andrew Cullo (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <myinvestorbank.co> and <investorbank.co>, registered with NameCheap, Inc..
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 18, 2020; the Forum received payment on September 18, 2020.
On September 21, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <myinvestorbank.co> and <investorbank.co> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@myinvestorbank.co, postmaster@investorbank.co. Also on September 23, 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 16, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant runs a branch of commercial banks throughout New York, New Jersey, and Pennsylvania. Complainant has rights in the INVESTORS BANK mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 4,158,623, registered Jun. 12, 2012; Reg. 4,158,622, registered Jun. 12, 2012). See Compl. Ex. 5. Respondent’s <myinvestorbank.co> and <investorbank.co> domain names are confusingly similar to Complainant’s mark as they incorporate the mark in its entirety, remove the “s” from the INVESTORS portion of the mark, adds the generic word “my”, and add the “.co” country code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <myinvestorbank.co> and <investorbank.co> domain names, as it is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its INVESTORS BANK 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 attempts to pass off as Complainant and phish for internet user information on the disputed domain names’ resolving websites.
Respondent registered and uses the <myinvestorbank.co> and <investorbank.co> domain names in bad faith. Respondent attempts to attract internet users for commercial gain and phish for user information by passing off as Complainant on the disputed domain name’s resolving websites. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the INVESTORS BANK mark. Respondent typosquats with the disputed domain names. Respondent hid its information behind a WHOIS privacy shield.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that runs a branch of commercial banks throughout New York, New Jersey, and Pennsylvania.
2. Complainant has established its trademark rights in the INVESTORS BANK mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 4,158,623, registered Jun. 12, 2012; Reg. 4,158,622, registered Jun. 12, 2012).
3. Respondent registered the <myinvestorbank.co> and <investorbank.co> domain names on Aug. 13, 2020.
4. Respondent has attempted to pass itself off as Complainant and phish for internet user information on the disputed domain names’ resolving websites.
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 submits that it has rights in the INVESTORS BANK mark through its registrations with the USPTO. (e.g. Reg. 4,158,622, registered Jun. 12, 2012). See Compl. Ex. 5. Registration with the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s INVESTORS BANK mark. Complainant argues that the <myinvestorbank.co> and <investorbank.co> domain names are confusingly similar to its INVESTORS BANK mark, as they incorporate the mark in its entirety, remove the “s”, and add the “.co” ccTLD to the end of the mark. Additionally, one disputed domain name includes the generic word “my” to the front of the mark. Under Policy ¶ 4(a)(i), removing an “s”, adding the generic word “my”, and adding the “.co” ccTLD are all generally insufficient changes in differentiating a disputed domain name from the mark it incorporates. See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”); BBY Solutions, Inc. v Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015) (“The addition of the generic word ‘my’… does not prevent a finding that the disputed domain name and mark are identical or confusingly similar.”). Respondent incorporates Complainant’s INVESTORS BANK mark into the disputed domain names, removes the “s” from the end of the mark, and adds the “.co” ccTLD to the end of the mark, as well as the generic word “my” to the front of one of the disputed domain names. Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar 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 names 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 INVESTORS BANK trademark and to incorporate it into the disputed domain names, remove the “s” from the end of the first word of the mark, and add the “.co” ccTLD to the end of the mark, as well as the generic word “my” to the front of one of the disputed domain names;
(b) Respondent registered the <myinvestorbank.co> and <investorbank.co> domain names on Aug. 13, 2020;
(c) Respondent has attempted to pass itself off as Complainant and phish for internet user information on the disputed domain names’ resolving websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent is not commonly known by the <myinvestorbank.co> and <investorbank.co> domain names, nor has Complainant authorized or licensed Respondent to use its INVESTORS BANK mark in the disputed domain names. Nevertheless, under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The WHOIS of record identifies Respondent as “Andrew Cullo”. See Compl. Ex. 1; see also Registrar Verification Email. Nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(a)(i);
(f) Complainant argues that Respondent does not use the <myinvestorbank.co> and <investorbank.co> domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass itself off as Complainant in order to phish for internet users’ information. Under Policy ¶¶ 4(c)(i) and (iii), attempting to pass off as a Complainant by mimicking their official website is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides screenshots of the disputed domain names’ resolving websites, which appear to mimic Complainant’s own website in marks, text, layout, pictures, etc. Compare Exs. 7 and 8 with 9 and 10. Therefore, the Panel finds Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent’s use of the <myinvestorbank.co> and <investorbank.co> domain names to phish for internet user information further demonstrates its lack of rights and legitimate interests in the domain names. Using a disputed domain name to phish for user information may demonstrate lack of rights or legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant argues Respondent is attempting to pass itself off as Complainant in order to phish user information. On the disputed domain names’ resolving websites are “contact” boxes where users can input information including name, phone number, and email. See Compl. Ex. 10. As the Panel agrees, it finds Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶¶ 4(a)(ii).
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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is attempting to pass itself off as Complainant at the <myinvestorbank.co> and <investorbank.co> domain names’ resolving websites. Attempting to pass off as a Complainant by mimicking a Complainant’s official website is generally considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Indeed, Inc. v. Zhiteng Sun, FA 1751940 (Forum Nov. 1, 2017) (finding that the respondent's use of <lndeed.net> to misrepresent itself as the complainant by imitating the complainant’s website design supported a finding of bad faith). Complainant provides screenshots of the disputed domain names’ resolving websites, which appear to mimic Complainant’s website in nearly every way except differing phone numbers. See Compl. Ex. 10. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the <myinvestorbank.co> and <investorbank.co> domain names in bad faith as it had actual knowledge of Complainant’s rights in the INVESTORS BANK mark. Actual knowledge is generally sufficient to demonstrate bad faith under Policy ¶ 4(a)(iii), and may be demonstrated by Respondent using a Complainant’s marks and website design on a disputed domain name’s resolving website. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). The Panel recalls Complainant’s screenshots of the dispute domain names’ resolving websites, which largely resemble Complainant’s official website. Therefore, the Panel finds Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered and uses the <myinvestorbank.co> and <investorbank.co> domain names in bad faith by phishing for user information on the disputed domain names’ resolving website. Phishing for user information on a disputed domain name’s resolving website is generally considered a bad faith use under Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). The Panel recalls the disputed domain names’ resolving websites, which feature contact boxes where users may input their email, phone numbers, and names. See Compl. Ex. 10. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii) by phishing for user information.
Fourthly, Complainant argues that Respondent registered and uses the disputed domain names in bad faith by typosquatting at the <myinvestorbank.co> and <investorbank.co> domain names. Typosquatting, or adding or removing letters from a mark to reflect common typing mistakes, is generally considered bad faith usage under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). The Panel recalls that both disputed domain names incorporate Complainant’s INVESTORS BANK mark and remove the “s” from the end of the mark. Therefore, the Panel finds Respondent is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii) by typosquatting.
Fifthly, Complainant argues that Respondent’s bad faith is further evidenced by its use of a privacy service to mask its WHOIS Information. Use a privacy shield by itself is generally not dispositive of bad faith, but may contribute an independent finding of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The Panel recalls that Respondent initially had its information hidden behind a privacy shield. See Compl. Ex. 1. Therefore, as the Panel agrees, it finds Respondent’s use of the privacy shield contributes to a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, 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 names using the INVESTORS BANK mark and in view of the conduct of Respondent in using the disputed domain names, Respondent registered and used them 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 <myinvestorbank.co> and <investorbank.co> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 17, 2020
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