national arbitration forum

 

DECISION

 

 

BB&T Corporation v. PabloPalermao

Claim Number: FA0802001152416

 

PARTIES

Complainant is BB&T Corporation (“Complainant”), represented by Lisa McDougald, of BB&T Corporation, North Carolina, USA.  Respondent is PabloPalermao (“Respondent”), Peru.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bbtbank.com>, registered with Moniker Online Services, Inc..

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2008.

 

On February 26, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <bbtbank.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On February 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 2008 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@bbtbank.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <bbtbank.com> domain name is confusingly similar to Complainant’s BB&T mark.

 

2.      Respondent does not have any rights or legitimate interests in the <bbtbank.com> domain name.

 

3.      Respondent registered and used the <bbtbank.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, BB&T Corp., is a company that provides banking and financial services to businesses and consumers.  Complainant uses its BB&T mark to promote its banking and financial services.  Complainant first registered its BB&T mark with the United States Patent and Trademark Office (“USPTO”) on February 11, 1986 (Reg. No. 1,382,662).  Also, Complainant holds additional registrations with the USPTO for several variations of its BB&T mark. 

 

Respondent’s <bbtbank.com> domain name resolves to a website which displays links to the third-party websites of Complainant’s competitors which also offer banking and financial services.  Respondent presumably receives click-through fees for displaying these links on the website resolving from the <bbtbank.com> domain name. 

 

DISCUSSION

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."

 

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(e), 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 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 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.

 

Identical and/or Confusingly Similar

 

Complainant registered its BB&T mark No. 1,382,662 with the USPTO on February 11, 1986 and also holds registrations for several variations of its BB&T mark with the USPTO.  The Panel finds Complainant has adequately established its rights in the BB&T mark pursuant to Policy ¶ 4(a)(i).  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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

Respondent Pablo Palermao registered the <bbtbank.com> domain name on May 25, 2003.  Respondent’s <bbtbank.com> domain name incorporates Complainant’s BB&T mark with the addition of the descriptive word “bank” and the deletion of the ampersand symbol.  Since the ampersand symbol is not a valid character in domain names, its deletion does not distinguish Respondent’s disputed domain name from Complainant’s mark.  Also, the addition of a word which describes Complainant’s business is not sufficient to distinguish a disputed domain name from a mark.  In addition, the generic top-level domain (“gTLD”) “.com” is not considered when examining whether a disputed domain name is confusingly similar to a mark.  Therefore, the Panel finds Respondent’s <bbtbank.com> domain name is confusingly similar to Complainant’s BB&T mark pursuant to Policy ¶ 4(a)(i).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also 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).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain name.  Once Complainant presents a prima facie case supporting these allegations, the burden shifts to Respondent to establish it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has presented a sufficient prima facie case to support its allegations.  Respondent failed to submit a response to these proceedings.  Therefore, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  However, the Panel will inspect the record and determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).

 

Respondent’s disputed domain name resolves to a website which displays links to competing third-party websites which offer financial goods and services that compete with Complainant’s business.  The Panel finds Respondent’s use of the disputed domain name is not a use in connection with 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).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

Additionally, Respondent does not appear to be commonly known by the <bbtbank.com> domain name.  The WHOIS information lists Respondent as “PabloPalermao.”  In addition, the record indicates Complainant never authorized Respondent to utilized its BB&T mark.  Therefore, the Panel finds Respondent is not commonly known by the <bbtbank.com> domain name and thus does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name resolves to a website which displays links to the third-party websites of Complainant’s competitors.  The Panel finds such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Respondent presumably receives compensation in the form of click-through fees for displaying links to Complainant’s competitors on its confusingly similar disputed domain name.  The Panel finds Respondent is attempting to profit from the goodwill Complainant has acquired in its BB&T mark, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bbtbank.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Judge Harold Kalina (Ret.), Panelist

Dated:  April 3, 2008

 

 

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