Ulster Bank Limited v. Alicia Hankes
Claim Number: FA 1359554
Complainant is Ulster Bank Limited (“Complainant”), represented by James A. Thomas of Troutman Sanders LLP, North Carolina, USA. Respondent is Alicia Hankes (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ulsterbankltd.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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 November 19, 2010; the National Arbitration Forum received payment on November 19, 2010«DateHardCopy».
On November 21, 2010, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <ulsterbankltd.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. D/B/A Internet Names Worldwide registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ulsterbankltd.com. Also on November 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <ulsterbankltd.com> domain name is confusingly similar to Complainant’s ULSTER BANK mark.
2. Respondent does not have any rights or legitimate interests in the <ulsterbankltd.com> domain name.
3. Respondent registered and used the <ulsterbankltd.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ulster Bank Limited, provides financial services to a variety of national and international customers, including individuals, small businesses, and large corporate and institutional customers. Complainant owns trademark registrations for the ULSTER BANK mark with the Irish Patents Office (“IPO”), the United Kingdom Intellectual Property Office (“UKIPO”), and the European Union Office for Harmonization in the Internal Market (“OHIM”):
IPO
Reg. No. 203,840 issued November 5, 1996;
UKIPO
Reg. No. 2,408,268A issued September 22, 2006;
OHIM
Reg. No. 004411112 issued February 9, 2007.
Respondent, Alicia Hankes, registered the <ulsterbankltd.com> domain name on October 7, 2010. The disputed domain name resolves to a website that appears to be identical to Complainant’s authentic website and attempts to deceive Internet users into providing their personal and financial information.
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 owns trademark registrations for the ULSTER BANK mark with the IPO, the UKIPO, and the European Union OHIM:
IPO
Reg. No. 203,840 issued November 5, 1996;
UKIPO
Reg. No. 2,408,268A issued September 22, 2006;
OHIM
Reg. No. 004411112 issued February 9, 2007.
The Panel finds that these trademark registrations with trademark offices around the world provide conclusive evidence of Complainant’s rights in the ULSTER BANK mark for the purposes of Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). The Panel finds that these trademark registrations are sufficient even though they are in a country different than Respondent’s country of business operations or residence. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s <ulsterbankltd.com> domain name is confusingly similar to Complainant’s ULSTER BANK mark because the disputed domain name contains Complainant’s full mark (without the space between terms) combined with the generic abbreviation “ltd” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a term or abbreviation to Complainant’s mark in the disputed domain name, especially one that is part of Complainant’s name, does not differentiate the disputed domain name from Complainant’s mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). The Panel also finds that neither deleting the space between the terms of Complainant’s mark nor attaching the gTLD affects the confusing similarity between the disputed domain name and Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, the Panel finds that Respondent’s <ulsterbankltd.com> domain name is confusingly similar to Complainant’s ULSTER BANK mark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant first establish a prima facie case before the burden to demonstrate rights and legitimate interests transfers to Respondent. The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Respondent’s failure to respond to the Complaint allows the Panel to infer that Complainant’s allegations are true in that Respondent lacks rights and legitimate interests in the disputed domain name. See 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.”); see also 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.”). The Panel elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors, however, to determine whether Respondent has any rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent is not licensed or otherwise authorized to use the ULSTER BANK mark or any variation thereof. The WHOIS information for the <ulsterbankltd.com> domain name identifies the registrant as “Alicia Hankes,” which Complainant argues is unrelated to both the disputed domain name and Complainant’s mark. The Panel accordingly finds that Respondent is not commonly known by the <ulsterbankltd.com> domain name and consequently lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name where the respondent is not known by the mark).
Complainant asserts that Respondent’s <ulsterbankltd.com> domain name resolves to a website that intentionally imitates Complainant’s authentic website and prominently displays the ULSTER BANK mark and logo and the message “Welcome to Ulster Bank.” Complainant argues that Respondent uses the disputed domain name in this manner to cause Internet users to believe they are at Complainant’s actual website and induce them to enter personal and financial information, which Respondent may then use for fraudulent purposes. The Panel finds that using the <ulsterbankltd.com> domain name in connection with a website that aims to pass itself off as Complainant in order to fraudulently acquire personal information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See 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); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s <ulsterbankltd.com> domain name intentionally uses Complainant’s ULSTER BANK mark in order to attract Complainant’s current and prospective customers. Complainant asserts that the use of Complainant’s mark in the disputed domain name, along with Respondent’s copying of Complainant’s website and display of Complainant’s mark and logo on the resolving site, is intended to create a likelihood of confusion as to the source of Respondent’s website and cause Internet users to mistakenly believe they are at Complainant’s actual website. Complainant contends that Respondent does these things in order to commercially profit from passing itself off as Complainant and tricking Complainant’s customers into providing personal and financial information. The Panel finds these activities indicate that Respondent registered and is using the <ulsterbankltd.com> domain name in bad faith according to Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”); see also Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds 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 <ulsterbankltd.com> domain name be TRANSFERRED Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 21, 2010
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