Citizens Financial Group, Inc. v. segil
Claim Number: FA0710001089770
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by James
A. Thomas of Troutman Sander LLP, 434 Fayetteville
Street, Two Hannover Square, Suite 1900, Raleigh, NC , 27601. Respondent is segil (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <charteronebk.com>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 8, 2007; the National Arbitration Forum received a hard copy of the Complaint October 9, 2007.
On October 9, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <charteronebk.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 1, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@charteronebk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <charteronebk.com>, is confusingly similar to Complainant’s CHARTER ONE BANK mark.
2. Respondent does not have any rights or legitimate interests in the <charteronebk.com> domain name.
3. Respondent registered and used the <charteronebk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citizens Financial Group, Inc., has continuously used the CHARTER ONE BANK mark in connection with banking and other financial services. It registered the CHARTER ONE BANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,450,402 issued May 15, 2001). Online banking is an integral part of Complainant’s business, and as such Complainant owns and uses many domain names related to the CHARTER ONE BANK mark, including: <charterone.com>, <charteronebank.com>, <charteronebanking.com>, and <charteroneonline.com>, all of which resolve to Complainant’s main <charterone.com> domain name.
Respondent registered the <charteronebk.com> domain name June 29, 2007, and it currently resolves to a website marketing online banking products and services that would seek to compete with those offered under Complainant’s mark.
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Under Policy ¶ 4(a)(i), Complainant
established rights in the CHARTER ONE BANK mark through registration with the
USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see
also
Respondent’s <charteronebk.com>
domain name contains the dominant features of Complainant’s CHARTER ONE mark and
then includes the abbreviation “bk” for the connotation of the rest of
Complainant’s mark “BANK.” The domain
name also includes the generic top level domain (“gTLD”) “.com.” The abbreviation of a mark does not
distinguish a disputed domain name.
Further, it is well established that the inclusion of a gTLD is
irrelevant for a Policy ¶ 4(a)(i) analysis. Consequently, the Panel finds pursuant to
Policy ¶ 4(a)(i) that Respondent’s disputed domain
name is confusingly similar to Complainant’s mark. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Modern Props, Inc. v. Wallis,
FA 152458 (Nat. Arb. Forum June 2, 2003) (“‘modprops’ is a contraction or
shorthand for ‘Modern Props.’ ‘Mod’ connotes [sic] ‘modern’ regardless of any
other dictionary meanings, so the names are substantially similar in meaning.”);
see also Microsoft Corp. v.
Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name
<ms-office-2000.com> to be confusingly similar even though the mark
MICROSOFT is abbreviated).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained in its entirety within the disputed domain
name. Complainant alleges that
Respondent has no such rights. Under Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed domain name. See VeriSign
Inc. v. VeneSign
Respondent failed to respond to the Complaint and the Panel is
entitled to presume that Respondent has no rights or legitimate interests in
the <charteronebk.com>
domain name. Nonetheless, the Panel still considers all of the evidence taking
into account the factors listed under Policy ¶ 4(c). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate that Respondent is or ever was commonly known by
the disputed domain name. Additionally,
Complainant has not granted nor has Respondent sought permission to use the
CHARTER ONE BANK mark in anyway. As
such, the Panel finds that Respondent is not commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply).
Respondent’s
<charteronebk.com> domain name resolves to a website marketing
online banking products and services that seek to compete with those offered
under Complainant’s mark. The Panel
finds that this is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4,
2001) (“Respondent's advertising of legal services and sale of law-related
books under Complainant's name is not a bona fide offering of goods and
services because Respondent is using a mark confusingly similar to the
Complainant's to sell competing goods.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The disputed domain name resolves to a website marketing online banking products and services that seek to compete with those offered under Complainant’s mark. The Panel finds that this use supports findings of bad faith pursuant to Policy ¶ 4(b)(iii). Respondent acted in bad faith in registering and using the <charteronebk.com> domain name that contains Complainant’s protected mark. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Moreover, Respondent’s <charteronebk.com> domain name resolves to a website offering services similar to those Complainant provides. The Panel finds this circumstance likely confuses Internet users into thinking that Complainant is the source of or affiliated with the services offered on Respondent’s website. The Panel finds this to be additional evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site in violation of Policy ¶ 4(b)(iv)).
The Panel finds that Complainant satisfied 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 <charteronebk.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 20, 2007.
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