Regions Asset Company v. Above.com Domain Privacy
Claim Number: FA1110001410264
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwrregions.com>, registered with Above.com Pty Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2011; the National Arbitration Forum received payment on October 4, 2011.
On October 5, 2011, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwrregions.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 October 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@wwwrregions.com. Also on October 7, 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 November 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <wwwrregions.com> domain name is confusingly similar to Complainant’s REGIONS mark.
2. Respondent does not have any rights or legitimate interests in the <wwwrregions.com> domain name.
3. Respondent registered and used the <wwwrregions.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Regions Asset Company, operates numerous banking branches and ATMs across a 16-state network in the South, Midwest, and Texas. Complainant has used its REGIONS mark since 1993 for banking services and other related financial services such as credit card, debit card, loan, mortgage, investment, trust and insurance services. Complainant owns numerous trademark registrations for the REGIONS mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,881,600 registered February 28, 1995;
Reg. No. 1,914,267 registered August 22, 1995;
Reg. No. 3,119,462 registered July 25, 2006;
Reg. No. 3,406,071 registered April 1, 2008;
Reg. No. 3,406,072 registered April 1, 2008; &
Reg. No. 3,505,814 registered September 23, 2008.
Respondent, Above.com Domain Privacy, registered the <wwwrregions.com> domain name on January 23, 2011. The disputed domain name resolves to a website advertising third parties via pay-per-click links with titles such as “Capital One Checking,” “Online Bank Account,” and “Welcome to Wells Fargo.”
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 numerous trademark registrations for the REGIONS mark with the USPTO. Past cases have established that USPTO trademark registration conclusively establishes a complainant’s rights in a mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). Accordingly, the Panel determines that Complainant has rights in the REGIONS mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <wwwrregions.com> domain name is confusingly similar to Complainant’s REGIONS mark. The disputed domain name adds the common prefix “www” without the usual separating period between the prefix and the rest of the domain name, inserts an extra letter “r,” and attaches the generic top-level domain (“gTLD”) “.com.” In Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000), and Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002), the panels held that because the prefix “www” is not distinct in the “Internet world,” domain names containing such prefixes are nevertheless confusingly similar to the marks they contain. Panels have also held that added letters are inconsequential and non-distinguishing in Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), and Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007). It has long been established that an attached gTLD does not remove a disputed domain name from the realm of confusing similarity with the mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). In accordance with these prior cases, the Panel here determines that Respondent’s <wwwrregions.com> domain name is confusingly similar to Complainant’s REGIONS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has met Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel elects to consider the evidence in the record against the Policy ¶ 4(c) factors, however, in order to make an independent determination on the issue of Respondent’s rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant asserts that it has no relationship with Respondent. Complainant also alleges that the WHOIS information, naming the registrant as “Above.com Domain Privacy,” reflects no association with the disputed domain name. Based on these assertions and evidence, the Panel concludes that Respondent is not commonly known by the <wwwrregions.com> domain name and does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). 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).
Complainant contends that Respondent uses the <wwwrregions.com> domain name to host a website that advertises links to third parties that provide competing financial and banking services. Complainant states that the links have various titles, such as “Capital One Checking,” “Online Bank Account,” “Welcome to Wells Fargo,” and “Reorder Checks.” The Panel finds that using Complainant’s mark in the disputed domain name to advertise and promote such competing services is not consistent with a bona fide offering of goods or services described in Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains for Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that Respondent’s <wwwrregions.com> domain name consists of a misspelling of Complainant’s mark and a minor typographical error that omits the period separating the “www” prefix from the rest of the domain name and constitutes typosquatting. The Panel finds that Respondent’s actions are further evidence that Respondent lacks rights and legitimate interests according to Policy ¶ 4(a)(ii). See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because respondent's addition of the prefix "www-" to complainant's AMAZON.COM mark constitutes typosquatting.”); see also Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent lacked rights and legitimate interests in the <wwwcanadiantire.com> domain name where respondent used the domain name as a part of the complainant’s affiliate program in exchange for specified commissions).
The Panel finds Complainant has met Policy ¶ 4(a)(ii).
Complainant asserts that the links displayed on Respondent’s website resolving from the <wwwrregions.com> domain name promote and advertise “chief competitors like Capital One and Wells Fargo,” as well as provide access to other third-party websites that sell banking and other financial services. The Panel finds that this use of the disputed domain name places Respondent in the role of a competitor with Complainant and causes disruption to Complainant’s business by diverting Complainant’s potential customers to competitors. The Panel accordingly determines that Respondent registered and uses the <wwwrregions.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assocs., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent knowingly and purposefully registered the <wwwrregions.com> domain name with Complainant’s REGIONS mark to attract and confuse Internet users seeking Complainant’s website and then divert them to Respondent’s directory website. Respondent’s website advertises, in the form of links, other companies offering financial and banking services. Complainant argues that the links featured on Respondent’s resolving website are presumably pay-per-click links that generate profit for Respondent, and thus Respondent likely benefits commercially from the increased traffic to its website as a result of its use of Complainant’s mark. The Panel finds that these efforts to profit from Complainant’s mark, using it to attract and confuse consumers, reveal bad faith registration and use according to Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through its use of the confusingly similar disputed domain name. The Panel holds that this practice is evidence by itself of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant also asserts that Respondent had actual and/or constructive knowledge of Complainant and its rights in the REGION mark at the time Respondent registered the <wwwrregions.com> domain name. Constructive knowledge is generally insufficient to support a finding of bad faith under the Policy. In this case, however, the Panel finds that it can infer that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights, which is evidence of bad faith according to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also InfoSpace, Inc. v. Greiner, FA 227653 (Nat. Arb. Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inference [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).
The Panel finds Complainant has met 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 <wwwrregions.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 16, 2011
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