Regions Asset Company v. Star Holdings / Sinjin Tiwali
Claim Number: FA1106001395600
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Star Holdings / Sinjin Tiwali (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regions.co>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2011; the National Arbitration Forum received payment on June 27, 2011.
On June 27, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <regions.co> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 July 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@regions.co. Also on July 5, 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 July 27, 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 and maintains all intellectual property, including the service mark REGIONS, on behalf of Regions Financial Corporation (“RFC”).
Complainant and RFC will be collectively referred to as “Complainant” for this proceeding.
Complainant is a financial institution in the United States providing banking and other related services.
Complainant holds registrations for its REGIONS service mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,881,600, registered February 28, 1995).
Respondent registered the <regions.co> domain name on July 21, 2010.
The disputed domain name resolves to a website featuring third-party links to websites which compete with Complainant’s business.
Respondent’s <regions.co> domain name is identical to Complainant’s REGIONS mark.
Respondent is not commonly known by the <regions.co> domain name, and Respondent has no relationship with Complainant.
Respondent does not have any rights to or legitimate interests in the domain name <regions.co>.
Respondent registered and uses the <regions.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical 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 a 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 for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
It is unnecessary for Complainant to register its mark in the country where Respondent resides or does business. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in a mark in some jurisdiction).
Respondent’s <regions.co> domain name is substantively identical to Complainant’s REGIONS service mark. The disputed domain name adopts the REGIONS mark in its entirety and simply adds the country-code top level domain (“ccTLD”) “.co.” The addition of a ccTLD is not a factor in a Policy ¶ 4(a)(i) analysis. See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition is inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”).
Therefore, the Panel concludes that Respondent’s disputed domain name is identical to Complainant’s REGIONS mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights to or legitimate interests in the <regions.co> domain name. Once a prima facie case has been established by a complainant under this head of the Policy, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name. See, for example, Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007).
Complainant has made out a prima facie case on the point of Respondent’s rights to or legitimate interests in the contested domain name. Therefore, and because Respondent has failed to submit a response to the Complaint filed in this proceeding, we may presume that Respondent has no rights to 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.
Nonetheless, we elect to examine the record before us, in light of the several 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 contested domain name which are cognizable under the Policy.
We first note that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <regions.co> domain name, and Respondent has no relationship with Complainant. The record contains no suggestion that Complainant has ever authorized Respondent to use its REGIONS mark in a domain name. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “Star Holdings / Sinjin Tiwali,” which is not similar to the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the <regions.co> domain name so as to have demonstrated that it has rights to or legitimate interests in the contested 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 the disputed domain names, and so had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as 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 mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (reciting, among other things, that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” was a factor in determining that Policy ¶ 4(c)(ii) did not apply).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s <regions.co> domain name reroutes Internet users to a website which contains to links websites offering services in competition with Complainant’s business in the banking and financial industry. IN the circumstances here presented, we may comfortably presume that Respondent generates click-through fees from the visits of Internet users to the websites resolving from these links. Respondent’s use of the disputed domain name to host a website directing Internet traffic to Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not 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 of a contested domain name pursuant to Policy ¶ 4(c)(iii), where a respondent presumably received “click-through” fees for each consumer it redirected to other websites; see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert Internet users seeking that complainant’s goods and services to websites competing with the business of that complainant did not constitute 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)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the <regions.co> domain name disrupts Complainant’s banking and financial business. Internet users intending to avail themselves of Complainant’s goods and services may instead find Respondent’s website and be directed to a competing website. Respondent’s registration and use of the disputed domain name in the manner alleged in the Complaint constitutes evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to the mark of another to attract Internet users to a directory website containing links to the websites of a commercial complainant’s competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a search engine with links to the websites of a complainant’s commercial competitors).
Respondent presumably collects click-through fees from the the visits of Internet users to websites resolving from the featured links on Respondent’s website. Because Respondent’s domain name is confusingly similar to Complainant’s REGIONS service mark, Internet users searching for Complainant’s website may be misled as to the possibility of Complainant’s sponsorship of, or association with, the disputed domain name. Respondent evidently attempts to benefit from this confusion throught the receipt of click-through fees. Respondent’s registration and use of the <regions.co> domian name is thus evidence of bad faith under 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 featuring services similar to those offered by that complainant); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that a respondent’s use of a disputed domain name to advertise car dealerships that competed with a complainant’s business would likely lead to confusion among Internet users as to the possibility of sponsorship of or affiliation with those competing dealerships, and was therefore evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <regions.co> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 3, 2011
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