Regions Asset Company v. Above.com Domain Privacy
Claim Number: FA1110001412693
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 <rigions.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 21, 2011; the National Arbitration Forum received payment on October 21, 2011.
On October 24, 2011, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <rigions.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 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@rigions.com. Also on October 25, 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 22, 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 <rigions.com> domain name is confusingly similar to Complainant’s REGIONS mark.
2. Respondent does not have any rights or legitimate interests in the <rigions.com> domain name.
3. Respondent registered and used the <rigions.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Regions Asset Company, offers financial services under its REGIONS mark and operates over 1,800 branches and 2,100 ATMs. 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, Above.com Domain Privacy, registered the <rigions.com> domain name on November 26, 2006. The disputed domain name resolves to a website that hosts hyperlinks to Complainant’s competitors in the financial services industry.
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 provides evidence of its trademark registrations with the USPTO for its REGIONS mark (e.g., Reg. No. 1,881,600 registered February 28, 1995). In , Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels found that a trademark registration with the USPTO is sufficient to establish Policy ¶ 4(a)(i) rights. In AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), and Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006), the panels also concluded that a complainant is not required to register a mark within a country a respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007). The Panel finds that Complainant’s owns rights in its REGIONS mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <rigions.com> domain name is confusingly similar to Complainant’s REGIONS mark. The disputed domain name contains a common misspelling of Complainant’s REGIONS mark, which replaces the letter “e” with the letter “i,” and the generic top-level domain (“gTLD”) “.com.” In Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001), and Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000), the panels determined that featuring a misspelling of a complainant’s mark fails to differentiate a disputed domain name from the complainant’s mark. Similarly, in Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), and Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), the panels held that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Consequently, the Panel finds that Respondent’s <rigions.com> domain name is confusingly similar to Complainant’s REGIONS mark pursuant to Policy ¶ 4(a)(i).
The Panel determines Complainant satisfies Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <rigions.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant has made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <rigions.com> domain name. Complainant alleges that Respondent is not related to Complainant in any way. Complainant provides the WHOIS information, which lists the registrant of the disputed domain name as “Above.com Domain Privacy.” Respondent has failed to respond to this case and fails to provide evidence that it is commonly known by the disputed domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels found that a respondent was not commonly known by a disputed domain name when a respondent is not authorized to use the complainant’s mark, the WHOIS information does not indicate that the respondent is commonly known by the domain, and the respondent failed to present any contradicting evidence. Based on this precedent, the Panel holds that Respondent is not commonly known by the <rigions.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant claims that Respondent uses the domain name to offer hyperlinks that resolve to third-party competitors in the financial industry. In ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panels concluded that a respondent’s hosting of competing hyperlinks is evidence that the respondent lacks rights and legitimate interests in a domain name. Therefore, the Panel finds that Respondent is making neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <rigions.com> domain name pursuant to Policy ¶ 4(c)(iii).
Moreover, Respondent has engaged in typosquatting by registering and using a disputed domain name that contains a common misspelling of Complainant’s REGIONS mark. Typosquatting is evidence that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(i). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007), and IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003).
The Panel determines Complainant satisfies Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the disputed domain name in bad faith because Respondent’s resolving website disrupts Complainant’s business by providing competing hyperlinks. Complainant provides screen shots that support its contention. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panels held that a respondent’s registration and use of the domain name for the purpose of hosting competing hyperlinks constitutes bad faith registration and use. Thus, the Panel finds that Respondent registered and uses the <rigions.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also alleges that Respondent is attempting to commercially benefit by receiving click-through fees from the competing hyperlinks and creating confusion as to Complainant’s affiliation with the disputed domain name. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), and Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panels determined that a respondent registered and used a disputed domain name in bad faith by hosting competing hyperlinks at a confusingly similar domain name for commercial gain through the receipt of click-through fees. Consequently, the Panel finds that Respondent registered and uses the <rigions.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent registered and uses a typosquatted version of Complainant’s REGIONS mark in bad faith pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003), and Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005).
Finally, Complainant contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the REGIONS mark. In Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), and Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), the panels held that while constructive notice has not been generally held to suffice for a finding of bad faith registration and use, a panel may nonetheless find that a respondent registered and is using a disputed domain name in bad faith under Policy ¶ 4(a)(iii) if the respondent is found to have had actual notice of Complainant’s trademark rights. Based on the competing content of the website resolving from the confusingly similar disputed domain name, the Panel finds that Respondent had actual knowledge of Complainant’s REGIONS mark and that Respondent registered and uses the <rigions.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel determines Complainant satisfies 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 <rigions.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 6, 2011
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