The Joseph A. Bank Mfg. Co. Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2009001913169
Complainant is The Joseph A. Bank Mfg. Co. Inc. (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopjosbank.com>, registered with Media Elite Holdings Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2020; the Forum received payment on September 21, 2020.
On September 25, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <shopjosbank.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 29, 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@shopjosbank.com. Also on September 29, 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 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 is a leader in the menswear retail industry. Complainant has rights in the JOS. A. BANK trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,182,109, registered December 15, 1981). Respondent’s <shopjosbank.com> domain name is identical or confusingly similar to Complainant’s JOS. A. BANK trademark as the only difference between the disputed domain name and Complainant’s trademark is the addition of the generic word “shop” at the front of the disputed domain name and the deletion of the letter "a."
Respondent lacks rights or legitimate interests in the <shopjosbank.com> domain name. Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s trademark. Respondent previously failed to use the disputed domain name in connection with a bona fide offering of goods or services as Respondent previously used the disputed domain name in furtherance of a malware scheme. Respondent currently fails to use the disputed domain name in connection with a bona fide offering of goods or services as Respondent currently uses the disputed domain name to redirected visitors to a site that provides links to competitors of Complainant.
Respondent registered and uses the <shopjosbank.com> domain name in bad faith as Respondent previously used the disputed domain in furtherance of a malware scheme. Respondent had actual knowledge of Complainant’s rights to the JOS. A. BANK mark prior to registering the disputed domain name as evidenced by the famous nature of Complainant’s trademark and Respondent’s use of the entire mark with the additional “shop.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,337,264 JOS. A. BANK (word), registered May 21, 1985 for services in class 42; and
No. 1,182,109 JOS. A. BANK (word), registered December 15, 1981, for goods in class 18 and 25.
The Complainant is also the owner of a number of U.S. trademark registrations including “JOS. A. BANK” in combination with other word elements.
The disputed domain name <shopjosbank.com> was registered on October 11, 2019.
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”).
Respondent asserts rights in the JOS. A. BANK trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 1,182,109, registered December 15, 1981). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, in the present case, the Panel finds that Complainant has demonstrated rights in the JOS. A. BANK trademark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <shopjosbank.com> domain name is identical or confusingly similar to Complainant’s JOS. A. BANK trademark as the only difference between the trademark and the disputed domain name is the addition of the generic word “shop” and the deletion of the letter "a." Addition of a generic or descriptive term and a gTLD with the deletion of a single letter fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain as the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS trademark as it contains the entire BANK OF AMERICA trademark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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).
Complainant contends that Respondent lacks rights or legitimate interests in the <shopjosbank.com> domain name as Respondent is neither commonly known by the <shopjosbank.com> domain name, nor has Complainant given Respondent permission to use Complainant’s trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name in this case lists the registrant as “Domain Administrator / Fundacion Privacy Services LTD,” and there is no other evidence to suggest that Respondent was authorized to use the JOS. A. BANK trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent failed to use the <shopjosbank.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent previously used the disputed domain name in furtherance of a malware scheme. Where a respondent uses a disputed domain name in furtherance of a malware scheme, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant provides screenshots of the previously resolving webpage that requires visitors to download software on their computer, purportedly setting them up for a “standard security check” to install a “Secured Search” application, which will provide a “safer web search experience” which appears to be required before the visitor can access the shopping site. The Panel agrees with Complainant, and finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Finally, the Complainant argues that Respondent fails to use the <shopjosbank.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent currently uses the disputed domain name to redirect visitors to a site that provides links to competitors of Complainant. Where a respondent uses a disputed domain name to advertise competitors of the complainant, Panels have found that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, the Complainant provides screenshots of the current resolving webpage that provides links to competitors of Complainant. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <shopjosbank.com> domain name in bad faith because Respondent previously used the disputed domain name to further attempt to download malicious software to the computers of the confused visitors looking to shop on Complainant’s Website. Using a disputed domain name in furtherance of a malware scheme can indeed evidence bad faith registration and use per Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”). The Panel recall that Complainant provides screenshots of the previously resolving website, which Complainant argues is a malware scheme. The Panel agrees with the Complainant’s conclusion, and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
The Complainant also argues that Respondent registered the <shopjosbank.com> domain name with actual and constructive knowledge of Complainant’s rights in the JOS. A. BANK trademark based on the famous nature of Complainant’s trademark and Respondent’s use of the trademark. Worldwide prominence of a trademark can demonstrate actual knowledge of a complainant’s rights in a trademark at registration and show bad faith per Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Additionally, a respondent’s use of the trademark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a trademark at registration and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that the famous nature and worldwide prominence of the JOS. A. BANK trademark combined with Respondent’s use of the trademark demonstrates Respondent’s actual and constructive knowledge of Complainant’s rights in the trademark prior to registering the disputed domain name. The Panel agrees, and finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopjosbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 3, 2020
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