Southern Community Bank and Trust v. Peter Bishop
Claim Number: FA0810001231455
Complainant is Southern Community Bank and Trust (“Complainant”), represented by Rebecca
E. Crandall, of Williams Mullen,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <smallenoughttocare.com>, registered with Moniker Online Services, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 30, 2008.
On October 29, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <smallenoughttocare.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 November 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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@smallenoughttocare.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <smallenoughttocare.com> domain name is confusingly similar to Complainant’s SMALL ENOUGH TO CARE mark.
2. Respondent does not have any rights or legitimate interests in the <smallenoughttocare.com> domain name.
3. Respondent registered and used the <smallenoughttocare.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Southern
Community Bank, incorporated as a bank in mid-November 1996. Complainant offers banking and trust services
through bank branchs in
Respondent registered the <smallenoughttocare.com> domain name on May 19, 2008. Respondent is using the disputed domain name to list links to third-party websites, some of which link to Complainant’s competitors.
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 must first establish that it has rights to the
mark included in the disputed domain name.
Under Policy ¶ 4(a)(i) registration of a
trademark is not necessary to establish that Complainant has rights in the
mark. See McCarthy on Trademarks and
Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark or service
mark rights will suffice” to support a domain name complaint under the Policy);
see also
Complainant has operated continuously since 1996 using the
SMALL ENOUGH TO CARE mark as part of its logo and in its advertising of banking
and trust services. In 2000, Complainant
registered the <smallenoughtocare.com> domain name through which it
operates its official website. The Panel
finds that Complainant has established common law rights to the SMALL ENOUGH TO
CARE mark pursuant to Policy ¶ 4(a)(i) through its
long and continuous use in connection with its business. See Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
[KEPPEL BANK] in connection with its banking business, it has acquired rights
under the common law.”); see also Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug.
17, 2000) (finding common law rights in a mark where its use was continuous and
ongoing, and secondary meaning was established).
The <smallenoughttocare.com>
domain name misspells Complainant’s SMALL ENOUGH TO CARE mark by adding the
letter “t” between the second and third word.
The disputed domain name adds the generic top-level domain (gTLD) “.com.”
The gTLD is immaterial to Policy ¶ 4(a)(i)
analysis. See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <smallenoughttocare.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the SMALL ENOUGH TO CARE mark, and the WHOIS information identifies
Respondent as “Peter Bishop.” Thus, Respondent has not established rights
or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using the <smallenoughttocare.com> domain name to link to third-party websites that offer banking and
mortgage services. Respondent is
using the disputed domain name, which is confusingly similar to Complainant’s SMALL ENOUGH TO CARE mark, to redirect Internet
users interested in Complainant’s products to third-party websites. These websites are both unrelated and in
competition with Complainant’s business.
The Panel finds this use is not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a noncommercial or
fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See
TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
Further, Respondent’s registration of the <smallenoughttocare.com> domain name
is typosquatting on the Complainant’s SMALL ENOUGH TO CARE mark. The Panel finds this is evidence Respondent
lacks any rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(a)(ii).
See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the
disputed domain names because it “engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of Complainant’s SMALL ENOUGH TO CARE mark in the disputed domain name to redirect Internet users to competing banking sites suggests that Respondent registered the disputed domain name intending to disrupt Complainant’s business. The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); 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).”).
The Panel infers that Respondent receives click-through fees for diverting Internet users to third-party websites. Because Respondent’s domain name is confusingly similar to Complainant’s SMALL ENOUGH TO CARE mark, Internet users accessing Respondent’s disputed domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <smallenoughttocare.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Additionally, the Panel finds Respondent’s typosquatting
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum
The Panel finds that Complainant has 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 <smallenoughttocare.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 17, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum