Cullen/Frost Bankers, Inc. v. Bobby Jones
Claim Number: FA2204001993962
Complainant is Cullen/Frost Bankers, Inc. (“Complainant”), represented by Kirby Cronin of Ferguson Braswell Frasier Kubasta, PC., Texas, USA. Respondent is Bobby Jones (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <frost-bank.com>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2022; the Forum received payment on April 27, 2022.
On April 28, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <frost-bank.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2022 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@frost-bank.com. Also on May 2, 2022, 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.
A timely Response was received and determined to be complete on May 10, 2022. On May 13, 2022 Respondent submitted “additional information to be included in my Response.”
Complainant submitted a Reply to Respondent’s Initial Response and Subsequent Response on May 16, 2022.
On May 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a banking and financial services company. It has rights in the trademark FROST BANK through its Registration No. 1199854 at the United States Patent and Trademark Office (“USPTO”) dated June 29, 1982. Respondent’s <frost-bank.com> domain name, registered on March 31, 2022, is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds a hyphen along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <frost-bank.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its FROST 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 does it make a legitimate noncommercial or fair use thereof but instead hosts parked, pay-per-click links on the disputed domain name’s resolving website.
Respondent registered and uses the <frost-bank.com> domain name in bad faith. Respondent attracts internet users for commercial gain by hosting parked, pay-per-click links on the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the FROST BANK mark.
B. Respondent
Respondent is in the process of developing the <frost-bank.com> domain name for free speech purposes, namely, highlighting Complainant’s past defrauding of its customers. The website is not being used for commerce but will be an information-only website. The website will be launching on May 14, 2022 and the same site will simultaneously be launching at the following domain names:
· gofrostbank.com
· myfrostbank.com
· FrostBancorp.com
· FrostBankReviews.com
· getFrostBank.com
· FrostNatloпalBank.co
· FrostBank.Reviews
C. Additional Submissions
In its additional submission Complainant asserts that Respondent filed no evidence with its Response. Further, it claims that Respondent specifically registered the disputed domain name to harm Complainant and personally attack an employee of Complainant for a political statement made by that employee. In an expletive-filled email, Respondent refers to the employee using politically laden language and indicates its intent to disseminate the employee’s statement to Respondent’s social media subscribers in an effort to cause Complainant to lose business. Finally, Respondent’s registration of seven additional domain names that incorporate Complainant’s trademark indicate that it is acting in bad faith as a serial cybersquatter.
- Complainant has demonstrated rights in the trademark FROST BANK and the <frost-bank.com> domain name is confusingly similar to Complainant’s mark;
- The disputed domain name resolves to a pay-per-click website with links related to Complainant’s banking business. Despite claiming to use the disputed domain name for a free speech informational site, Respondent has submitted no evidence of its demonstrable preparations for such use. This does not support a finding of rights or legitimate interests and it does indicate that Respondent is seeking to attract, for commercial gain, users to its website by creating a likelihood of confusion with Complainant’s mark; and
- Respondent’s registration of a total of eight domain names that incorporate Complainant’s mark further supports a finding of bad faith.
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.
Complainant claims rights in the FROST BANK mark for vaious banking and financial services through its registration with the USPTO. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under 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).”). Therefore, as Complainant has submitted screenshots of its USPTO trademark registration certificate, the Panel finds that Complainant has rights in its claimed mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <frost-bank.com> domain name is identical or confusingly similar to Complainant’s FROST BANK mark as it incorporates the mark in its entirety, adds a hyphen between the words of the mark, and adds the “.com” gTLD. Adding a hyphen to a mark and adding the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”) As the Panel does not view the addition of a hyphen between the words “Frost” and “Bank” to meaningfully differentiate the <frost-bank.com> domain name from the FROST BANK trademark, it finds that Respondent’s domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent is not commonly known by the <frost-bank.com> domain name, nor has Complainant authorized or licensed Respondent to use its FROST BANK mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS Information, among other evidence, may help determine whether a Respondent is commonly known by a disputed domain name. Further, a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name may affirmed by a lack of evidence to the contrary. See PragmaticPlay Limited v. Robert Chris, FA 1932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”) The WHOIS record for the disputed domain name, along with the Response itself, identifies Respondent as “Bobby Jones,”, while nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use FROST BANK mark. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent does not use the <frost-bank.com> domain name for any bona fide offering of goods or services, and that it does not make any legitimate noncommercial or fair use thereof. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name, that copies a well-known trademark, to host parked, pay-per-click links is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the disputed domain name’s resolving website, which features pay-per-click links titled “Need Loan Immediately”, “Refinance with Cash Out”, and “Credit Card Approval.” It asserts that “[t]hese categories directly mirror products and services offered by Complainant” and that they generate revenue from the advertised pay-per-click products. In response, Respondent claims that “this website is not being used for commerce, nor have I made а single penny from any alleged ads directing people away from Frost Bank, as these alleged ads just don't exist.” The Panel views this statement as somewhat suspect since the screenshot provided by Complainant shows that the pay-per-click ads do, in fact, exist. Respondent next asserts that “Frost-Bank.com will be an INFORMAТION-ONLY WEBSITE”. In its later submission, Respondent cites to Policy ¶¶ 4(c)(i) and (iii) asserts “that frost-bank.com is being used in connection with a bonafide offering of informational/testimonial services” and that “[o]ur service exists as a purely informational website providing personal experiences with Frost Bank…” which, it asserts, is a legitimate noncommercial use. While the Panel recognizes that the informational activities described by Respondent could possibly form the basis for a defense under Policy ¶ 4(c), it notes that the screenshots submitted by Complainant show only the above-mentioned pay-per-click content. Respondent has not provided any evidence to the contrary nor of any “demonstrable preparations to use” the disputed domain name as it claims under Policy ¶ 4(c)(i). Particular note is taken of Respondent’s statement that “[o]ur website will will be launching live as of Saturday May 4, 2022” and so the Panel has browsed to the disputed domain name after that date only to find the pay-per-click links shown by Complainant. Respondent further lists seven additional domain names, each of which incorporate the FROST BANK mark, and states that “[w]e will also be simultaneously launching the same site” at these domain names. While no screenshots or other evidence of these additional seven websites have been submitted, the Panel has browsed to them and found that each one resolves to pay-per-click content with no mention of any informational content or of Respondent’s claimed grievance against Complainant. The conclusion reached is that Respondent has made a number of statements in its pleadings but that these are unsubstantiated and unsupported by any evidence or by the Panel’s own independent investigation. Therefore, as Complainant has set out a prima facie claim which has not been adequately rebutted by Respondent, the Panel finds, by a preponderance of the evidence, that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered the <frost-bank.com> domain name in bad faith based upon its actual knowledge of Complainant’s rights in the FROST BANK mark. Under Policy ¶ 4(a)(iii), incorporating a mark into a domain name and using it for a purpose related to or competing with a complainant may be evidence of bad faith registration based upon a respondent’s actual knowledge of the asserted mark. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The disputed domain name incorporates Complainant’s mark in its entirety and hosts parked, pay-per-click links related to banking as shown in the screenshots submitted by Complainant. Furthermore, Respondent has mentioned its prior dealings with Complainant. From this, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the FROST BANK mark.
Complainant further argues that Respondent registered and uses the <frost-bank.com> domain name in bad faith by attracting users to its website, for commercial gain, based upon confusion with the FROST BANK mark. Under Policy ¶ 4(b)(iv), using a disputed domain name to host parked, pay-per-click links is generally considered evidence of bad faith attraction for commercial gain. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel notes Complainant’s submission of screenshots of the disputed domain name’s resolving website which indicate no content but parked, pay-per-click links for categories that relate to Complainant’s line of business. While Respondent asserts that the website will be used for free speech purposes and to provide information about Complainant, this is unsupported by any evidence or by the Panel’s own independent investigation. Further undercutting the credibility of Respondent’s claims is the fact that it registered seven additional domain names, a number that seems to exceed what would be needed for Respondent’s claimed free speech purpose, and these similarly resolve to pay-per-click pages despite its assertion that all of its websites will be launching on May 14, 2022 with the same content as that claimed for the <frost-bank.com> domain name. Finally, Respondent claims that it has not received any compensation from the pay-per-click links at its website. However, prior Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO Oct. 6, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Similarly, as the owner of the disputed domain name, Respondent is entirely and solely responsible for the content of its website and the functioning of the domain name. See Disney Enterprises, Inc. v. ll, FA 1336979 (Forum Aug. 31, 2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); Transamerica Corporation v. Domain Administrator / Sandesa, Inc., FA 1704763 (Forum Jan. 4, 2017) (Respondent is responsible for the use made of the domain name. Knowingly registering a domain containing another’s mark and parking it without limiting the ability of the parking service to improperly use it is sufficient evidence of bad faith registration and use.”) Therefore, under these circumstances where the disputed domain name copies Complainant’s mark, as acknowledged by Respondent, and resolves to a pay-per-click page, the Panel finds that Respondent registered and uses it in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent is a “serial cybersquatter” based on its registration of a total of eight domain names that incorporate the FROST BANK mark. Registration of multiple domain names that are confusingly similar to one or more trademarks can be evidence of bad faith through a pattern of conduct under Policy ¶ 4(b)(ii) where a respondent seeks to prevent a complainant from reflecting its trademark in a corresponding domain name. See Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley, FA 1789701 (Forum July 2, 2018) (finding that Respondent engaged in a pattern of bad faith registration and use by registering multiple domain names that contain Complainant’s famous CATERPILLAR mark). Although Complainant has not specifically asserted ¶ 4(b)(ii), the Panel does find further support in this sub-paragraph for its conclusion that Respondent has acted in bad faith by the fact that it has registered a total of eight domain names that incorporate Complainant’s mark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <frost-bank.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 30, 2022
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