First Premier Bank v. Temi Tope
Claim Number: FA2110001970442
Complainant is First Premier Bank (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Temi Tope (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firstpcbank.com>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 25, 2021; the Forum received payment on October 25, 2021.
On October 25, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <firstpcbank.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 October 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2021 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@firstpcbank.com. Also on October 27, 2021, 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 November 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 relies on its rights in the service mark registrations described below and submits that it has used the FIRST PREMIER mark continuously since at least as early as 1992. Additionally, Complainant’s sister organization, Premier Bankcard, LLC, owns various other marks including variations of the FIRST PREMIER mark.
Complainant submits that it has more than 30 years’ experience in offering banking and credit solutions to its customers with over 2,300 employees in 20 locations and with its sister organization, Premier Bankcard LLC, it services over three million credit card holders nationally.
Complainant submits that it has an established reputation and goodwill and customer loyalty in its FIRST PREMIER mark that it uses for its credit card and bank offerings as shown on its websites at <www.mypremiercreditcard.com> and <www.firstpremier.com>.
Complainant submits that the disputed domain name <firstpcbank.com> is confusingly similar to its FIRST PREMIER mark as it consists of contains half of First Premier’s FIRST PREMIER mark and the abbreviation for “Premier Credit” in the form of the letters “pc.” Complainant submits that the addition of the generic Top Level Domain <.com> extension is also not a distinguishing feature. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant contends that the use of an abbreviated portion of a brand that renders the disputed domain name confusingly similar satisfies Policy ¶ 4(a)(i). Time Warner Cable Inc. v. Trade Out Investments Ltd / Tech Support, FA1378264 (Forum Apr. 28, 2011) (finding abbreviation of Complainant’s TIME WARNER CABLE mark in domain name mytwc.com to be confusingly similar).
Additional evidence of confusion comes from the fact Respondent uses Complainant’s own logo and branding on the website in an attempt to confuse consumers. Therefore, the requirement of confusing similarity is met.
Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name arguing that there is no evidence that Respondent is commonly known by the name FIRST PREMIER or the disputed domain name. The published WHOIS record, which because of Respondent’s use of a privacy service, obfuscates his true identity, does not depict Respondent as FIRST PREMIER in any way. See Gallup, Inc. v. Amish Country Store, FA96209 (Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Respondent has not received permission to use Complainant’s FIRST PREMIER mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name).
Complainant refers to a screen capture of Respondent’s website <https://www.firstpcbank.com> to which the disputed domain name resolves and submits that it proves that Respondent is using the disputed domain name for the purpose of operating a marketing scheme to pass itself off as Complainant which it contends cannot constitute a bona fide offering of goods pursuant to Policy ¶ 4(c)(i). Specifically, Complainant refers to Respondent’s use of Complainant’s logo on his website to create the impression that the website is operated by Complainant: [IMAGE OMITTED]
Furthermore, Complainant submits that the metadata associated with Respondent’s website specifically references Complainant’s name: [IMAGE OMITTED]
Complainant submits that such use of the disputed domain name by Respondent to pass himself off as Complainant and divert users away from Complainant’s website to Respondent’s own website is not a bona fide offering of goods or services. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
Furthermore, Complainant submits that before any notice to Respondent of the dispute, Respondent did not make any legitimate noncommercial or fair use of the mark, pursuant to Policy ¶ 4(c)(iii) because Respondent used the disputed domain name to perpetuate a phishing scheme by passing himself off as Complainant.
Complainant submits that Respondent’s intent in registering the disputed domain name was to use the disputed domain name to divert traffic away from Complainant’s website and direct Internet users to Respondent’s website.
Furthermore, Complainant contends that Respondent’s use of Complainant’s logos and other branding on his website, gives the impression that the website is either owned by or associated with Complainant, thereby causing additional confusion.
Complainant argues that the disputed domain name was registered and is being used in bad faith, arguing that Respondent registered the disputed domain name with the actual knowledge of First Premier’s trademark rights in that name shows bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s goal in registering the disputed domain name was to trick consumers into believing that it is Complainant. By doing so, Respondent competed against Complainant and disrupted Complainant’s business.
Complainant argues that there is a legal presumption of bad faith when a respondent reasonably should have been aware of complainant’s trademarks, actually or constructively. See Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith).
Complainant refers to a screen capture of the website to which the disputed domain name resolves, which has been adduced in evidence in an annex to the Complaint, which shows that Respondent’s website prominently displays Complainant’s logo and mimics its branding in connection with the offering of financial products. Complainant adds that the evidence shows that Respondent’s website purports to offer support and feedback pages and account login pages that collect contact information of unsuspecting consumers, and Complainant alleges that this constitutes phishing in bad faith.
Complainant argues that these facts show that Respondent had actual knowledge of Complainant’s and its trademark rights when it registered the disputed domain name.
Complainant argues Respondent’s use of the disputed domain name is disrupting Complainant’s business and that Respondent’s intentional attempt to attract Internet users into its scheme by using a name that is confusingly similar to Complainant’s FIRST PREMIER marks is also in violation of Policy ¶ 4(b)(iv).
Complainant contends that panels established under the Policy have held that such use of the disputed domain name to phish for Internet users’ personal and/or financial information constitutes bad faith registration and use. See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has proven that it is the owner of the FIRST PREMIER service mark that it uses in connection with banking, credit card, and a wide range of other products and services and owns the following United States Federal Registered Service Marks registered on the Principal Register:[IMAGE OMITTED]
Complainant also claims that an affiliated company owns a number of service mark registrations including FIRST PREMIER BANKCARD, FIRST PREMIER CREDIT MANAGER and FIRST PREMIER CREDIT PROTECTION. This however is not correct according to the evidence adduced, because the element “FIRST” does not appear in the cited word mark registrations and the registered marks are in fact PREMIER BANKCARD, PREMIER CREDIT MANAGER and PREMIER CREDIT PROTECTION.
Complainant has an established Internet presence and maintains websites at <www.mypremiercreditcard.com> and <www.firstpremier.com>.
The disputed domain name was registered on February 16, 2021 and resolves to a website on which Respondent impersonates Complainant, by inter alia using Complainant’s logo and misrepresenting himself as being Complainant, offering the identical financial services while endeavoring to collect personal data of Internet users by purporting to offer support and other active pages on the website.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request for verification of the registration details of the disputed domain name. The Registrar disclosed that Respondent who has availed of a privacy service to conceal his identity on the published WhoIs is the registrant of the disputed domain name.
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”).
Complainant has provided convincing evidence of its ownership of its rights in the FIRST PREMIER and FIRST PREMIER BANK mark through its ownership of the service mark registrations described above and use of the mark on the Internet in association with its financial services.
The disputed domain name <firstpcbank.com> consists of two elements of Complainant’s FIRST PREMIER BANK mark between which is interposed the letters “pc”.
Taken together, the elements of the disputed domain name are confusingly similar to the FIRST PREMIER BANK mark. The letters “pc” have no specific meaning and have no distinguishing character.
In the context of the disputed domain name, the gTLD <.com> extension has no distinguishing character and would be considered by Internet users to be a necessary technical requirement for a domain name. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interest in the disputed domain name arguing that
· there is no evidence Respondent is commonly known by the name FIRST PREMIER or the disputed domain name;
· the published WHOIS record does not depict Respondent as FIRST PREMIER in any way;
· Respondent has not received permission to use Complainant’s FIRST PREMIER mark;
· the screen capture of Respondent’s website at <https://www.firstpcbank.com> proves that Respondent is using the disputed domain name for the purpose of operating a marketing scheme to pass himself off as Complainant which it contends cannot constitute a bona fide offering of goods pursuant to Policy ¶ 4(c)(i);
· Respondent is using Complainant’s “P First PREMIER Bank Premier Bankcard” logo, which gives the impression that the website is operated by Complainant;
· the metadata associated with Respondent’s website specifically references Complainant’s name;
· Respondent is using the disputed domain name to pass himself off as Complainant and divert users away from Complainant’s website to Respondent’s own website which is not a bona fide offering of goods or services;
· before any notice to Respondent of the dispute, Respondent did not use the mark for legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii);
· Respondent is using the disputed domain name to perpetuate a phishing scheme by passing itself off as Complainant;
· Respondent’s intent in registering the disputed domain name was to to divert traffic away from Complainant’s website and direct Internet users to the website associated with the disputed domain name;
· Respondent’s association of his website with Complainant’s logos and other branding gives the impression that the website is either hosted by or associated with Complainant causing additional confusion;
· the results of a GOOGLE search show that Respondent is attempting to confuse people with the use of its website associated with the disputed domain name.
It is well established that once Respondent makes out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to prove that he has such rights or interests.
Respondent has not met the burden of production and so this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii).
There is no obvious reason why the disputed domain name would be chosen and registered except to reference Complainant, its name and mark. Complainant’s rights in the FIRST PREMIER BANK name and mark long pre-date the registration of the disputed domain name. The <firstpcbank.com> domain name not only contains the first and last elements of Complainant’s name and mark, and the other element “pc” includes the letter “p” which is the initial letter of the element PREMIER. In the absence of any evidence to the contrary, this Panel finds that on the balance of probabilities the disputed domain name was registered in order to take predatory advantage of Complainant’s name and mark in order to confuse Internet users.
This finding is supported by the manner in which Respondent is using the mark to impersonate Complainant.
The screen capture of the website to which the disputed domain name resolves, shows that Respondent is using the disputed domain name as an address of a website to impersonate Complainant. The website purports to offer Complainant’s services to the public and worryingly requests personal information from Internet users. This Panel finds that on the balance of probabilities the disputed domain name is being used by Respondent in bad faith for the purposes of phishing.
As this Panel has found that on the balance of probabilities, the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firstpcbank.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 22, 2021
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