Regions Asset Company v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1202001429484
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <regoins.com>, <regoinsbank.com>, and <wwwregions.com>, registered with Moniker Online Services, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2012; the National Arbitration Forum received payment on February 14, 2012.
On February 15, 2012, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 February 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2012 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@regoins.com, postmaster@regoinsbank.com, postmaster@wwwregions.com. Also on February 21, 2012, 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 March 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names are identical to Complainant’s REGIONS and/or REGIONS BANK marks.
2. Respondent does not have any rights or legitimate interests in the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names.
3. Respondent registered and used the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns and maintains all intellectual property on behalf of Regions Financial Corporation, which provides banking and financial services under its REGIONS and REGIONS BANK marks. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its REGIONS, REGIONSBANK, and REGIONS BANK marks:
MARK REG. NO. REG. DATE
REGIONS 1,881,600 February 28, 1995;
REGIONS 1,914,267 August 22, 1995;
REGIONS 3,119,462 July 5, 2006;
REGIONS 3,406,071 April 1, 2008;
REGIONS 3,406,072 April 1, 2008;
REGIONS 3,505,814 September 23, 2008;
REGIONSBANK 1,918,496 September 12, 1995;
REGIONS BANK 3,150,549 October 3, 2006; &
REGIONS BANK 3,282,179 August 21, 2007.
Respondent registered the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names no earlier than June 29, 2005, and uses them to resolve to a website that hosts competing hyperlinks, some of which are entitled “HSBC Business Direct,” “Online Banking Account,” “PNC Bank Virtual Wallet,” and “Visa Credit Cards.”
Respondent has been a respondent in previous UDRP cases in which the panels ordered the transfer of the disputed domain names to the respective panels. See Capital One Fin. Corp. v. Domain Admin a/k/a Taranga Services Pty Ltd, FA 1285637 (Nat. Arb. Forum Nov. 2, 2009); see also Am. Airlines, Inc. v. Domain Admin a/k/a Taranga Services Pty Ltd, FA 1306277 (Nat. Arb. Forum Mar. 29, 2010); see also United Servs. Auto. Assoc. v. Taranga Services Pty Ltd c/o Domain Admin, FA 1309777 (Nat. Arb. Forum Apr. 12, 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."
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.
(4) 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.”).
The Panel notes that Respondent resides or operates in New Zealand. However, the Panel finds that Complainant’s USPTO trademark registrations sufficiently establish Complainant’s rights in the marks under Policy ¶ 4(a)(i), regardless of where Respondent resides or operates. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <regoins.com> and <wwwregions.com> domain name contain common misspellings of Complainant’s REGIONS mark, and either transposes the letters “o” and “i” or removes the period separating the “www” prefix from the rest of the domain name. Respondent’s <regoinsbank.com> domain name also differs from Complainant’s REGIONSBANK mark by the mere transposition of the letters “o” and “i.” The disputed domain names also contain the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations do not adequately distinguish the disputed domain names from Complainant’s marks. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel thus finds that the <regoins.com> and <wwwregions.com> domain names are confusingly similar to Complainant’s REGIONS mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
It is well established that 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not, and has never been, commonly known by the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names. Complainant states that Respondent is not related to Complainant. The WHOIS information identifies “Domain Admin / Taranga Services Pty Ltd” as the registrant of the disputed domain names. The Panel therefore concludes that Respondent is not commonly known by the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark.)
Complainant alleges that Respondent’s <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names resolve to a website that hosts competing hyperlinks, which Respondent profits from. The Panel agrees and finds that Respondent makes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”).
Complainant asserts that Respondent uses intentional misspellings of Complainant’s REGIONS and REGIONSBANK marks in order to capitalize on Internet users’ mistakes, which constitutes typosquatting. Typosquatting is evidence that Respondent lacks rights and legitimate interests in the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also 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.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been a respondent in previous UDRP cases in which the panels ordered the transfer of the disputed domain names to the respective complainants. This is evidence a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Respondent provides hyperlinks on the website resolving from the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names to Complainant’s competitors in the banking and financial services industries. Respondent undoubtedly commercially benefits from these hyperlinks, and disrupts Complainant’s business. Thus, the Panel finds that Respondent registered and uses the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names in bad faith 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 confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent registered and uses the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names in order to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks with intent for commercial gain. The Panel therefore finds that Respondent registered and uses the <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Respondent’s typosquatting is also evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
The Panel finds that Complainant has satisfied 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 <regoins.com>, <regoinsbank.com>, and <wwwregions.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 26, 2012
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