Popular Inc. v. PLUTO DOMAIN SERVICES PRIVATE LIMITED.
Claim Number: FA0812001239388
Complainant is Popular,
Inc. (“Complainant”), represented by Stephanie
M. Boomershine, of Michael W.O. Holihan P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bancopopularpr.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 23, 2008.
On December 30, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <bancopopularpr.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 January 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 27, 2009 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@bancopopularpr.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <bancopopularpr.com> domain name is confusingly similar to Complainant’s BANCO POPULAR mark.
2. Respondent does not have any rights or legitimate interests in the <bancopopularpr.com> domain name.
3. Respondent registered and used the <bancopopularpr.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Popular Inc., has utilized the BANCO POPULAR
mark in connection with its banking services since 1893. Complainant operates in Puerto Rico and in
numerous states in the
Respondent registered the disputed <bancopopularpr.com> domain name on March 15, 2002. The disputed domain name resolves to a website that displays links and advertisements for third-party banks that directly compete with Complainant.
Respondent has been the respondent in several other UDRP proceedings in which the disputed domain names were transferred to the respective complainants in those cases. See, e.g., Ashley Furniture Indus., Inc. v. Pluto Domain Serv. Private Ltd., FA 1227159 (Nat. Arb. Forum Nov. 18, 2008); see also Sanofi-Aventis v. PLUTO DOMAIN SERV. PRIVATE LTD., D2008-1483 (WIPO Dec. 2, 2008).
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.
The Panel finds that Complainant’s registration of the BANCO
POPULAR mark with the USPTO adequately demonstrates Complainant’s rights in the
mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June
29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the]
complainant has met the requirements of Policy ¶ 4(a)(i).”);
see also Reebok Int’l Ltd. v.
Respondent’s <bancopopularpr.com> domain name
contains Complainant’s BANCO POPULAR mark and makes the following changes: (1)
the letters “pr” are included; and (2) the generic top-level domain “.com” is
added. The Panel finds that the addition
of a gTLD is not relevant in a Policy ¶ 4(a)(i)
analysis. Moreover, the addition of
letters to a mark generally fails to create a meaningful distinction between a
disputed domain name and a mark.
Therefore, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) (“[I]t is a well established principle that generic
top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see
also
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The Panel notes that the WHOIS information lists Respondent
as “PLUTO DOMAIN SERVICES PRIVATE LIMITED.”
Moreover, Complainant argues that Respondent is not permitted or
authorized to use Complainant’s mark.
Complainant asserts, and the Panel so finds, that Respondent is not nor
has ever been commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding
no rights or legitimate interests because the respondent is not commonly known
by the disputed domain name or using the domain name in connection with a
legitimate or fair use); 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).
Respondent’s disputed domain name resolves to a website that promotes Complainant’s competitors via click-through advertising and links. The Panel presumes Respondent has conducted this venture for the receipt of referral fees. Therefore, the Panel finds that Respondent has failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in several other UDRP
proceedings in which the disputed domain names were transferred to the
respective complainants in those cases. See, e.g., Ashley Furniture Indus., Inc. v. Pluto Domain Serv. Private Ltd., FA
1227159 (Nat. Arb. Forum Nov. 18, 2008); see
also Sanofi-Aventis v. PLUTO DOMAIN SERV. PRIVATE LTD., D2008-1483 (WIPO
Dec. 2, 2008). The Panel finds that this
constitutes a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad
faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the
complainant from reflecting its mark in a domain name and the respondent had
several adverse decisions against it in previous UDRP proceedings, which
established a pattern of cybersquatting); see
also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028
(WIPO Jan. 22, 2005 (finding that “Respondent
has registered the disputed domain name, <aria.com>, to prevent
Complainant from registering it” and taking notice of another Policy proceeding
against the respondent to find that “this is part of a pattern of such
registrations”).
The resolving website for the disputed domain name displays
advertisements for Complainant’s competitors.
The disruptive nature of this endeavor with regards to Complainant’s
business is clear, and therefore the Panel finds that Respondent has engaged in
Policy ¶ 4(b)(iii) bad faith registration and use of
the disputed domain name. See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also David
Finally, the Panel finds that Respondent has created a
likelihood of confusion as to Complainant’s source of, or affiliation with, the
disputed domain name and resolving website.
The Panel infers Respondent primarily intended to garner commercial
benefit through the registration and use of the confusingly similar disputed
domain name and the resulting advertisements on the corresponding website. Thus, Respondent has engaged in bad faith
registration and use under Policy ¶ 4(b)(iv). See
GMAC LLC v. WhoisGuard Protected, FA
942715 (Nat. Arb. Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy,
evidence that a domain name registrant has intentionally attempted to attract,
for commercial gain, Internet users to the registrant’s website by creating a
likelihood of confusion with the complainant’s mark serves as evidence of bad
faith.”); see also Williams-Sonoma, Inc.
v. Fees, FA 937704 (Nat. Arb.
Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name
to display links to various third-party websites demonstrated bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) 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 <bancopopularpr.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson. Jr., Panelist
Dated: February 17, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum