ING Groep N.V. v. BANTITTHAI Suchard
Claim Number: FA1101001369835
Complainant is ING Groep N.V. (“Complainant”), represented by Joel D. Leviton of Fish & Richardson P.C., Minnesota, USA. Respondent is BANTITTHAI Suchard (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ingeurobank.com>, registered with ACTIVE 24 AS.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2011; the National Arbitration Forum received payment on January 27, 2011.
On January 31, 2011, ACTIVE 24 AS confirmed by e-mail to the National Arbitration Forum that the <ingeurobank.com> domain name is registered with ACTIVE 24 AS and that Respondent is the current registrant of the name. ACTIVE 24 AS has verified that Respondent is bound by the ACTIVE 24 AS 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 February 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@ingeurobank.com. Also on February 2, 2011, 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 February 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <ingeurobank.com> domain name is confusingly similar to Complainant’s ING BANK mark.
2. Respondent does not have any rights or legitimate interests in the <ingeurobank.com> domain name.
3. Respondent registered and used the <ingeurobank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ING Groep N.V., is a global financial institution offering many financial services through its subsidiary companies, including ING Bank. Complainant is owner of the ING BANK mark and uses the mark in connection with its financial and banking services. Complainant holds a trademark registration for its ING BANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,804,417 issued Nov. 16, 1993).
Respondent, BANTITTHAI Suchard, registered the <ingeurobank.com> domain name on February 2, 2010. The disputed domain name previously directed Internet users to a website created to look like Complainant’s official website. The resolving site prompted users to enter personal banking information as part of a phishing scheme. The website has since been taken down and the disputed domain name resolves to an inactive site.
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 asserts that it has established rights in its ING BANK mark. A complainant can establish rights in a mark through federal trademark registration. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”) The Panel finds that Complainant is not required to register its mark within the country of Respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Here, Complainant holds a trademark registration for its ING BANK mark with the USPTO (e.g. Reg. No. 1,804,417 issued Nov. 16, 1993). Therefore, the Panel determines that Complainant has demonstrated its rights in the ING BANK mark through federal trademark registration under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ingeurobank.com> domain name is confusingly similar to Complainant’s ING BANK mark. The disputed domain name incorporates Complainant’s entire mark and differs only by deleting a space between the words of the mark, adding the geographic term “euro” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a geographic term does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel also finds that the deletion of a space between words of a mark and the affixation of a gTLD do not properly distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). In conclusion, the Panel finds that Respondent’s <ingeurobank.com> domain name is confusingly similar to Complainant’s ING BANK mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent lacks rights and legitimate interests in the <ingeurobank.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Here, Complainant has presented a prima facie case in support of its allegations against Respondent. Due to Respondent’s failure to submit a response to the Complaint, the Panel is free to use this fact as evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will look to the record first to determine whether Respondent has rights and legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <ingeurobank.com> domain name. The WHOIS information identifies Respondent as “BANTITTHAI Suchard,” which is not similar to the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) as no additional information in the record indicates otherwise. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent previously used the disputed domain name in connection with a phishing website. The resolving website used Complainant’s logo and design in order to appear as if the website were sponsored by Complainant. Respondent attempted to fraudulently obtain personal information from Internet users by displaying bank account login boxes, similar in appearance to Complainant’s ING DIRECT BANK login. Users were prompted to submit their bank account and PIN numbers. The Panel finds that Respondent’s use of the <ingeurobank.com> domain name to operate a phishing website designed to mislead Internet users into providing personal financial information is not 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 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 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)); see also 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).
Currently, the disputed domain name is inactively held. Complainant was able to have the phishing website taken down once it learned of such a scheme. The Panel finds that Respondent’s failure to make an active use of the resolving website is further evidence that it lacks rights and legitimate interests in the <ingeurobank.com> domain name under Policy ¶ 4(a)(ii). See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way); see also State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant alleges that Respondent used the <ingeurobank.com> domain name to operate a phishing website to obtain personal and financial information from potential customers of Complainant. Respondent likely profited from the scheme. Internet users searching for Complainant’s website may have found Respondent’s website due to the confusingly similar disputed domain name. Users may have become confused as to Complainant’s association with, or sponsorship of, the website, especially because Respondent used Complainant’s logo and website design on the page. Respondent attempted to capitalize off of this confusion by imitating Complainant’s banking login and soliciting users to submit their bank account and PIN numbers. The Panel concludes that Complainant’s use of the disputed domain name to commercially gain is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.")
Complainant maintains that Respondent was using the <ingeurobank.com> domain name to run a phishing scheme to obtain personal and financial information from Internet users. The resolving website displayed an account login which imitated Complainant’s ING DIRECT BANK login and requested personal banking information from users. The Panel finds that Respondent’s use of the disputed domain name to operate a phishing website constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The <ingeurobank.com> domain name currently resolves to an inactive website. Once Complainant learned about the purported phishing scheme on the resolving site, Complainant was able to have the site taken down. However, the Panel finds that Respondent’s inactive holding of the disputed domain name also constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ingeurobank.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 9, 2011
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