Regions Asset Company v. Web Master Internet Services Private Limited
Claim Number: FA1012001361383
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is Web Master Internet Services Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regins.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2010; the National Arbitration Forum received payment on December 2, 2010.
On December 8, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD confirmed by e-mail to the National Arbitration Forum that the <regins.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD 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 December 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2011 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@regins.com. Also on December 14, 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 January 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns exclusive rights to its REGIONS service mark, which it uses on behalf of Regions Financial Company.
Complainant operates Regions Bank, which offers various financial services including: credit and debit cards, loans, mortgage, investment services and insurance.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for its REGIONS service mark (including Reg. No. 1,881,600, issued February 28, 1995).
Respondent registered the <regins.com> domain name on May 14, 2002.
The disputed domain name resolves to a site which displays Complainant’s “Regions Bank” name and features click-through links to websites which are related to Complainant’s business.
Respondent’s <regins.com> domain name is confusingly similar to Complainant’s REGIONS service mark.
Respondent has taken advantage of a common misspelling of Complainant’s REGIONS mark by registering a domain name which differs from the mark by only one letter.
Respondent has never been commonly known by the disputed domain name.
Respondent has not been authorized to use the REGIONS service mark.
Respondent offers the <regins.com> domain name for sale.
Respondent does not have any rights to or legitimate interests in the <regins.com> domain name.
Respondent registered and uses the <regins.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the REGIONS service mark via its registration of the mark with a national trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations). This is true without regard to the identity of Respondent’s country of origin, because the Policy does not require that a complainant demonstrate rights in its mark in the country where a respondent resides or does business. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Respondent’s <regins.com> domain name is confusingly similar to Complainant’s REGIONS service mark. The disputed domain name merely omits the letter ‘o’ and adds the generic top-level domain (“gTLD”) “.com.” Previous panels have held that the omission of a letter from the mark of another and the addition of a gTLD are insufficient to distinguish the resulting domain name from the mark. See, for example, Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a complainant’s PFIZER mark, where a respondent simply omitted the letter “i” from the mark in forming a contested domain name); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).
Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s REGIONS service mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights to and legitimate interests in the <regins.com> domain name. A complainant is obliged to make out a prima facie case in support of its allegations under this head of the Policy, after which the burden shifts to a respondent to show that it does have rights to or legitimate interests in a disputed domain name. See 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.
Complainant has made out a sufficient prima facie case on the point of Respondent’s rights to and legitimate interests in the contested domain name. Because Respondent has failed to respond to the Complaint, we are entitled to presume that Respondent lacks rights to and legitimate interests in the <regins.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has never been known by the disputed domain name, and that Respondent has not been authorized to use the REGIONS mark. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “Web Master Internet Services Private Limited,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent has not established that it has commonly been known by the contested domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com> where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also observe that there is no dispute as to Complainant’s assertion that Respondent uses the disputed domain name to offer third-party, commercial links to websites which compete with Complainant’s business. In the circumstances, we may comfortably presume that Respondent receives click-through fees for the visits of internet users to the resolving websites. This does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the contested domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was merely using the domain name to operate a website containing links to various commercial websites competing with the business of a complainant, which the panel found not to be a use in connection with 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a 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 pursuant to Policy ¶ 4(c)(iii)).
Complainant also contends, without objection from Respondent, that Respondent offers the <regins.com> domain name for sale. Previous panels have found this to be evidence that a respondent lacks rights to or legitimate interests in a disputed domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances there presented, a respondent’s apparent willingness to dispose of its rights in a disputed domain name suggested that it lacked rights to or legitimate interests in the domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to a complainant suggested that a respondent had no rights to or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). We conclude accordingly.
Finally under this head of the Policy, there is no dispute on this record as to Complainant’s assertion that Respondent takes advantage of a common misspelling of Complainant’s REGIONS mark by registering a domain name which differs from the mark by only one letter. This is typo-squatting, which is itself evidence that Respondent lacks rights to and legitimate interests in the disputed domain name. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights and legitimate interests in 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 domain names <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> were intentional misspellings of Complainant's LTD COMMODITIES mark and that this:
‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is attempting to sell the disputed domain name. This is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).
Respondent uses the <regins.com> domain name to display click-through links to websites which are in competition with Complainant’s business. This creates a disruption of Complainant’s business and thus constitutes evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent registered and used disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using them to operate websites that competed with a complainant’s business); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This Panel concludes that by redirecting Internet users seeking information on Complainant’s … institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Respondent’s use of the disputed domain name is an attempt to confuse Internet users who are seeking Complainant’s official website. Respondent likely profits from the resulting confusion. This is evidence of bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites that featured services similar to those offered by a complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Respondent registered a typo-squatted version of its REGIONS service mark in order to attract Internet traffic through confusion among Internet users as between the disputed <regins.com> domain and the REGIONS mark. This constitutes evidence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typosquatting, which is evidence of bad faith registration and use of a domain under Policy ¶ 4(a)(iii)); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005):
Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] … mark.
For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <regins.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 24, 2011
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