First
Citizens BancShares Inc. v. N/A c/o
Claim Number: FA0910001287197
Complainant is First
Citizens BancShares Inc. (“Complainant”), represented by Angela P. Doughty, of Ward and Smith P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <firstcitizensonilne.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 5, 2009.
On October 2, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <firstcitizensonilne.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 October 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 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@firstcitizensonilne.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <firstcitizensonilne.com> domain name is confusingly similar to Complainant’s FIRST CITIZENS mark.
2. Respondent does not have any rights or legitimate interests in the <firstcitizensonilne.com> domain name.
3. Respondent registered and used the <firstcitizensonilne.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, First Citizens BancShares Inc., has provided banking and financial services and products to its customers under the FIRST CITIZENS mark since at least as early as 1930. Complainant it the owner of the FIRST CITIZENS mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,728,084 issued October 27, 1992).
Respondent, N/A c/o Po Ser, registered the <firstcitizensonilne.com> domain name on September 4, 2009. The disputed domain name resolves to a website featuring adult-oriented materials. Furthermore, the disputed domain name displays third-party links that further resolve to other adult-oriented websites.
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 has provided evidence of the registration of its FIRST CITIZENS mark with the USPTO (Reg. No. 1,728,084 issued October 27, 1992). The Panel finds that this evidence is sufficient to establish Complainant’s rights in its FIRST CITIZENS mark pursuant to Policy ¶ 4(a)(i). Furthermore, the Panel finds that it is not necessary for Complainant to have registered its mark in the country of Respondent’s residence. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Respondent’s <firstcitizensonilne.com>
domain name fully incorporates Complainant’s FIRST CITIZENS mark with the mere
omission of the space between the terms of the mark, the addition of “onilne,”
the misspelled descriptive term “online,” and the affixation of the generic
top-level domain “.com.” The Panel finds
that such minor alterations are insufficient to overcome the confusing
similarity between the disputed domain name and Complainant’s mark. Therefore, the Panel finds that Respondent’s <firstcitizensonilne.com> domain
name is confusingly similar to Complainant’s FIRST CITIZENS mark under Policy ¶
4(a)(i). See Bond & Co. Jewelers, Inc. v.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <firstcitizensonilne.com> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).
Respondent’s <firstcitizensonilne.com> domain name resolves to a website displaying adult-oriented content as well as a collection of click-through links that further resolve to other adult-oriented websites. Respondent is presumably profiting through the accrual of click-through fees. The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers); see also Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”).
Moreover, Respondent does not appear to be commonly known by the <firstcitizensonilne.com> domain name. The WHOIS information identifies the registrant as “N/A c/o Po Ser” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <firstcitizensonilne.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in bad
faith registration and use of the disputed domain name under Policy ¶
4(b)(iv). Respondent’s confusingly
similar disputed domain name, which was registered on September 4, 2009, resolves
to a website displaying adult-oriented material as well as click-through links
and advertisements that further resolve to other third-party adult-oriented
websites. Respondent is presumably
generating revenue from such use. Thus,
the Panel concludes that Respondent’s actions constitute a violation of Policy
¶ 4(b)(iv) because Respondent is intentionally attempting to attract Internet
users to its website for financial gain by creating a likelihood of confusion
with Complainant’s FIRST CITIZENS mark. See The Ass’n of Junior Leagues Int’l
Inc. v. This Domain Name My Be For
Additionally, the Panel finds that Respondent’s use of the disputed domain name to host advertisements for adult-oriented products and services is also evidence of bad faith registration and use in and of itself pursuant to Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
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 <firstcitizensonilne.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 18, 2009
National
Arbitration Forum
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