Beneficial Bank v. Emile Jean-Baptiste
Claim Number: FA1111001413731
Complainant is Beneficial Bank (“Complainant”), represented by Joseph Reithmeier, Pennsylvania, USA. Respondent is Emile Jean-Baptiste (“Respondent”), Haiti.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thebeneficialbank.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2011; the National Arbitration Forum received payment on November 1, 2011.
On November 2, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <thebeneficialbank.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.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 November 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@thebeneficialbank.com. Also on November 8, 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 December 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
Beneficial Mutual Savings Bank is a federally chartered bank.
Beneficial Mutual Savings Bank has been FDIC insured since November 21, 1939.
It was established on April 20, 1853.
The United States Government and customers of Beneficial Mutual Savings Bank's are directed to conduct Internet based business activities at the website: http://www.thebeneficial.com
Beneficial Bank asserts that “TheBeneficial.com” and close variations to be its service mark.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Beneficial Bank owns and does business under “thebeneficial.com”. Thebeneficialbank.com has been created to deflect and possibly defraud legitimate customers of Beneficial Bank. Thebeneficial.com is the domain name under which Beneficial Bank conducts business, thebeneficialbank.com appends the word ”bank” the domain name, creating a confusingly similar Internet destination.
[b.] UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Beneficial Bank registered “Thebeneficial.com” on December 22, 2006 – Thebeneficialbank.com was registered in September of 2007. Beneficial Bank owns and conducts banking business under thebeneficial.com whereas thebeneficialbank.com is designed to divert this legitimate business. Registration of Thebeneficialbank.com followed Thebeneficial.com and appears to attempt to capitalize on the confusingly similar name.
[c.] UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). Thebeneficialbank.com has been designed to divert Beneficial bank customers to their site and collect personal identifiable information which may be used for Internet fraud. There is no legitimate banking business conducted, therefore the respondent has no legitimate right to the domain name.
B. Respondent failed to submit a Response in this proceeding.
Complainant Beneficial Bank does business under the THEBENEFICIAL.COM mark and presumably offers banking services.
Respondent Emile Jean-Baptiste registered the <thebeneficialbank.com> domain name on September 25, 2007.
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 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 does not provide any evidence of a trademark registration for its THEBENEFICIAL.COM mark or any mark relating to the disputed domain name. The Panel finds that Complainant need not own a trademark registration in order to demonstrate Policy ¶4(a)(i) rights in a mark as long as Complainant can demonstrate common law rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶4(a)(i)).
Complainant alleges it owns and does business under the THEBENEFICIAL.COM mark and has operated under the mark since December 22, 2006. Complainant fails to include any evidence – or make the assertion – that its mark has acquired secondary meaning. Therefore, the Panel concludes Complainant has not provided sufficient evidence it has common law rights in its THEBENEFICIAL.COM mark pursuant to Policy ¶4(a)(i). See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark).
The Panel finds Policy ¶4(a)(i) not satisfied.
Policy ¶4(a)(ii) requires a complainant to prove a respondent has no rights or legitimate interests in respect of the domain name. Simply saying “Beneficial Bank registered “Thebeneficial.com” on December 22, 2006 – Thebeneficialbank.com was registered in September of 2007. Beneficial Bank owns and conducts banking business under thebeneficial.com whereas thebeneficialbank.com is designed to divert this legitimate business. Registration of Thebeneficialbank.com followed Thebeneficial.com and appears to attempt to capitalize on the confusingly similar name.” is not adequate to prove Policy ¶4(a)(ii).
Confusion is addressed in Policy ¶4(a)(i). Complainant having rights is addressed in Policy ¶4(a)(i). An attempt to divert business is addressed in Policy ¶4(a)(iii). Complainant simply failed to address Policy ¶4(a)(ii)…even in a summary manner. Complainant didn’t even simply make the assertion “Respondent has no rights or legitimate interests with respect to the domain name.” Complainant failed to include any screen shots which might have convinced the Panel Respondent had no rights. Failure to address this point is fatal to Complainant’s requested relief.
The Panel finds Policy ¶4(a)(ii) not satisfied.
Policy ¶4(a)(iii) requires a complainant to claim Respondent’s domain name has been registered and is being used in bad faith. Saying “Thebeneficialbank.com has been designed to divert Beneficial bank customers to their site and collect personal identifiable information which may be used for Internet fraud. There is no legitimate banking business conducted, therefore the respondent has no legitimate right to the domain name.” is not adequate. There was no discussion about bad faith at the time of registration. There was no discussion about bad faith usage.
There are a number of “safe harbors”, such as “circumstances indicating that [Respondent has] registered or […] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.” There is no such allegation here.
Complainant could have claimed Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent engaged in a pattern of such conduct. It didn’t.
Complainant could have claimed Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business. It didn’t.
Complainant could have claimed Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location by using the domain name, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. It didn’t.
Complainant simply failed to provide sufficient evidence to reach the necessary conclusion.
The Panel finds Policy ¶4(a)(iii) not satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes the requested relief shall be DENIED.
Accordingly, it is Ordered the <thebeneficialbank.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, December 8, 2011
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