Regions Asset Company v. TECH DOMAIN SERVICES PRIVATE LIMITED
Claim Number: FA1110001410659
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is TECH DOMAIN SERVICES PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionsonline.com>, registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 7, 2011; the National Arbitration Forum received payment October 7, 2011.
On October 10, 2011, TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED confirmed by e-mail to the National Arbitration Forum that the <regionsonline.com> domain name is registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED and that Respondent is the current registrant of the name. TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED verified that Respondent is bound by the TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED registration agreement and 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 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@regionsonline.com. Also on October 14, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 <regionsonline.com> domain name is confusingly similar to Complainant’s REGIONS mark.
2. Respondent has no rights to or legitimate interests in the <regionsonline.com> domain name.
3. Respondent registered and used the <regionsonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Regions Asset Company, owns the intellectual property, including the REGIONS mark, on behalf of Regions Financial Corporation, which provides financial and banking services. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its REGIONS mark (e.g., Reg. No. 1,881,600 registered February 28, 1995).
Respondent, TECH DOMAIN SERVICES PRIVATE LIMITED, registered the <regionsonline.com> domain name June 30, 2005, some ten years later. The disputed domain name resolves to a website that contains hyperlinks to third parties that offer banking and financial services that seek to compete with Complainant.
Respondent has been a respondent in previous UDRP cases in which the disputed domain names were transferred to the respective complainants. See Mac Acquisition IP LLC v. Tech Domain Services Private Limited, FA 1304373 (Nat. Arb. Forum Mar. 10, 2010); see also Jeld-Wen, Inc. v. Tech Domain Services Private Limited, FA 1318227 (Nat. Arb. Forum June 2, 2010); see also Quantimetrix Corp. v. Tech Domain Services Private Limited, FA 1327526 (Nat. Arb. Forum July 22, 2010).
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 alleges that it established rights pursuant to Policy ¶ 4(a)(i) in its REGIONS mark. Evidence of a national trademark registration is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002). A party is not required to register the mark within the respondent’s country in order to establish rights in the mark. Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007). In this case, Complainant provided evidence of its multiple trademark registrations with the USPTO for its REGIONS mark (e.g., Reg. No. 1,881,600 registered February 28, 1995). Therefore, the Panel finds that Complainant established rights in the REGIONS mark under a Policy ¶ 4(a)(i) evaluation.
Complainant claims that Respondent’s <regionsonline.com> domain name is confusingly similar to Complainant’s REGIONS mark. Addition of the generic term “online” fails to distinguish a disputed domain name from a complainant’s mark. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark) Further, addition of a generic top-level domain (“gTLD”) is irrelevant to a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), The <regionsonline.com> domain name combines Complainant’s REGIONS mark with the generic term “online” and the gTLD “.com.”
The Panel finds that Respondent’s <regionsonline.com> domain name is confusingly similar to Complainant’s REGIONS mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights or legitimate interests in the <regionsonline.com> domain name. Once Complainant makes a prima facie case to support its allegations, the burden shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights to or legitimate interests in the disputed domain name. However, this Panel still examines the record to determine whether Respondent has rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known by the <regionsonline.com> domain name. The WHOIS information lists the registrant of the disputed domain name as “TECH DOMAIN SERVICES PRIVATE LIMITED.” Using the WHOIS information, the Panel finds that the Respondent here is not nominally similar to Complainant’s mark and thus may not say that it is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006).
Complainant urges next that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <regionsonline.com> domain name and thus cannot show rights on that basis. Complainant provides screen shots of the disputed domain name that show that the resolving website hosts hyperlinks to third parties that offer competing financial and banking services. A respondent does not make a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of a disputed domain name when the domain name resolves to a website that contains competing hyperlinks. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), and Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007).
The Panel finds that Respondent has no rights to or interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly urges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent registered and uses the <regionsonline.com> domain name in bad faith under a Policy ¶ 4(b)(ii) evaluation. Complainant argues that Respondent has been a respondent in previous UDRP cases in which the disputed domain names were transferred to the respective complainants. See Mac Acquisition IP LLC v. Tech Domain Services Private Limited, FA 1304373 (Nat. Arb. Forum Mar. 10, 2010); see also Jeld-Wen, Inc. v. Tech Domain Services Private Limited, FA 1318227 (Nat. Arb. Forum June 2, 2010); see also Quantimetrix Corp. v. Tech Domain Services Private Limited, FA 1327526 (Nat. Arb. Forum July 22, 2010). Prior UDRP proceedings involving the respondent and the transfer of domain names may be considered as evidence supporting findings of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), and Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003). The Panel finds that Respondent registered and uses the <regionsonline.com> domain name as a part of a pattern of bad faith registration and use under a Policy ¶ 4(b)(ii) analysis.
While Complainant does not allege bad faith registration and use under Policy ¶ 4(b)(iii), past panels, in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), found that a respondent’s registration and use of a disputed domain name to provide competing hyperlinks disrupts a complainant’s business, constituting evidence supporting findings of bad faith registration and use. Therefore, the Panel finds that Respondent registered and uses the <regionsonline.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant did assert that Respondent registered and uses the <regionsonline.com> domain name in bad faith under Policy ¶ 4(b)(iv). Where a respondent is profiting from competing hyperlinks, such use supports findings that the respondent registered and used the disputed domain name in order to commercially gain by creating confusion as to the complainant’s affiliation with the domain name. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) This Panel finds accordingly pursuant to Policy ¶ 4(b)(iv) for the <regionsonline.com> domain name.
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <regionsonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 21, 2011.
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