national arbitration forum

 

DECISION

 

Atlantic Trust Group, Inc. v. Atlantic Trust

Claim Number: FA0906001268003

 

PARTIES

Complainant is Atlantic Trust Group, Inc. (“Complainant”), represented by Benjamin F. Sidbury, of Alston & Bird, LLP, North Carolina, USA.  Respondent is Atlantic Trust (“Respondent”), Connecticut, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <atbankplc.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 18, 2009.

 

On June 19, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <atbankplc.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 July 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 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@atbankplc.com by e-mail.

 

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

 

On July 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <atbankplc.com> domain name is confusingly similar to Complainant’s ATLANTIC TRUST mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Atlantic Trust Group, Inc., is a financial services company that provides investment and advisory services under the trade-name “Atlantic Trust Private Wealth Management.”  Since as early as 2002, Complainant has offered investment management services under its ATLANTIC TRUST mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,748,299 issued August 5, 2003). 

 

Respondent registered the <atbankplc.com> domain name on May 21, 2009.  The disputed domain name resolves to a website that closely resembles Complainant’s actual website at the <atlantictrust.com> domain name, incorporating Complainant’s marks and specifically referring to itself as “Atlantic Trust Bank Wealth Management Group.”  The resolving website purports to offer specialized “integrated wealth management services” as well as account applications and banking services.  Complainant’s unsuspecting customers who arrive at this site wanting to access their ATLANTIC TRUST account by clicking on the “Login” link, are asked to provide their “Account ID” and “Passcode.” 

 

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

 

The Panel finds that Complainant has established rights in its ATLANTIC TRUST mark for the purposes of Policy ¶ 4(a)(i) through the registration of its mark with the USPTO.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). 

 

Complainant contends that Respondent’s <atbankplc.com> domain name is confusingly similar to Complainant’s ATLANTIC TRUST mark under Policy ¶ 4(a)(i).  The disputed domain name incorporates the abbreviation of Complainant’s ATLANTIC TRUST mark, “at,” with the addition of the descriptive words “bank“ and “plc,” and the affixation of the generic top-level domain “.com.”  The term “bank” is descriptive of Complainant’s business because Complainant is in the financial industry, and the letters “plc” likely allude to the well-known form-of-business designation acronym for “public limited company.”  The Panel finds that these alterations fail to alleviate the confusing similarity between Complainant’s ATLANTIC TRUST mark and Respondent’s <atbankplc.com> domain name under Policy ¶ 4(a)(i).  Moreover, Respondent’s reference to itself as “Atlantic Trust Bank Wealth Management Group” on the disputed domain name’s resolving website adds to the confusing similarity.  Thus, the Panel finds that Respondent’s <atbankplc.com> domain name is confusingly similar to Complainant’s ATLANTIC TRUST mark pursuant to Policy ¶ 4(a)(i).  See 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); see also Amazon.com, Inc. v. Dinoia, FA 536549 (Nat. Arb. Forum Sept. 26, 2005) (finding that adding a common form of corporate designation to the domain name did not save <amazonltd.com> from confusing similarity to the complainant’s mark); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). 

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the <atbankplc.com> domain name.  Once Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show that it does have rights or legitimate interests.  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”).  The Panel finds that Complainant has presented a sufficient prima facie case.  Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the disputed domain name.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 

 

Respondent’s <atbankplc.com> domain name domain name resolves to a website that mimics Complainant’s financial services website.  The Panel finds that Respondent seeks to pass itself off as Complainant, and presumably profit from this fraudulent diversion of Internet users.  Respondent’s scheme to pass itself off as Complainant is perpetuated by Respondent’s repeated references to itself as “Atlantic Trust Bank Wealth Management Group” on the resolving website.  The Panel finds that Respondent’s use of the disputed domain name cannot be found as 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 Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).

 

According to the pertinent WHOIS information, Respondent is operating the disputed domain name as “Atlantic Trust.  Although there appears to be a relationship between the WHOIS information and the disputed domain name, this is insufficient, without more, to demonstrate that Respondent is commonly known by the <atbankplc.com> domain name under Policy ¶ 4(c)(ii).  Since Respondent failed to contest the allegations against it, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’  However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”); see also Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”).      

 

This fraudulent diversion of Internet users for commercial gain is also advanced by the deceptive use of the resolving website to trick Internet users into divulging their personal and private banking information to Respondent, believing in fact that they are communicating with Complainant.  This is a textbook definition of “phishing,” and provides sufficient additional evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).  See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking the complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).

 

Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

The similarity between Complainant’s commercial website and the website to which the disputed domain name resolves demonstrates that Respondent uses the <atbankplc.com> domain to attract, for commercial gain, Internet users seeking Complainant’s services by passing itself off as Complainant.  In this way, Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s mark to lure Internet users to its website in order to profit from the goodwill associated with Complainant’s mark.  Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks.  Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). 

 

Furthermore, the Panel finds that Respondent is engaging in a fraudulent “phishing” scheme by registering and using the <atbankplc.com> domain name to divert Internet users to a website that displays Complainant’s mark and trade-name mimicking Complainant’s own website, in order to induce such Internet users to reveal personal and financial information.  Therefore, the Panel finds that Respondent’s attempts to fraudulently acquire such information constitute “phishing,” and provide evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use of a domain name where a respondent used a domain to redirect Internet users to a website that imitated a complainant’s website fraudulently to acquire personal information from that complainant’s clients); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).   

 

The Panel finds that Policy ¶ 4(a)(iii) 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 <atbankplc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  August 10, 2009

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum