BB&T Corporation v. Vito Longo
Claim Number: FA0802001152425
Complainant is BB&T Corporation (“Complainant”), represented by Lisa
McDougald, of BB&T Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bb-tbank.com>, registered with Onlinenic, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 17, 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@bb-tbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bb-tbank.com> domain name is confusingly similar to Complainant’s BB&T mark.
2. Respondent does not have any rights or legitimate interests in the <bb-tbank.com> domain name.
3. Respondent registered and used the <bb-tbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BB&T Corp., is a company that provides
banking and financial services.
Complainant first registered its BB&T mark with the United States
Patent and Trademark Office (“USPTO”) on
Respondent’s <bb-tbank.com> domain name resolves to a website which displays links to Complainant’s competitors who also offer banking and financial services. Respondent presumably receives click-through fees for displaying these links on the website resolving from the <bb-tbank.com> 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."
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.
Complainant registered its BB&T mark with the USPTO on
Respondent’s <bb-tbank.com> domain name
incorporates Complainant’s BB&T mark with the addition of the descriptive
word “bank” and the exchange of a hyphen for the ampersand symbol. Since the ampersand symbol is not a valid
character in domain names, the addition of a hyphen in its place 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 <bb-tbank.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 Health
Devices Corp. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
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 Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”); 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).
Respondent’s disputed domain name resolves to a website which displays links to financial businesses which offer 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).
Respondent does not appear to be commonly known by the <bb-tbank.com> domain name. The WHOIS information lists Respondent as
“Vito Longo,” and the record does not indicate Complainant has authorized
Respondent to use its BB&T mark.
Therefore, the Panel finds Respondent is not commonly known by the <bb-tbank.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
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website
which displays links to 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. Buel, 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 S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Respondent presumably receives compensation in the form of
click-through fees for displaying links to Complainant’s competitors on its
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).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bb-tbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf, Panelist
Dated: April 7, 2008
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