Regions Asset Company v. PrivacyProtect.org / Domain Admin
Claim Number: FA1204001439913
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionsbabk.com>, registered with BARGIN REGISTER, INC.
The undersigned certifies he 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 April 18, 2012; the National Arbitration Forum received payment on April 18, 2012.
After numerous requests, the Registrar, BARGIN REGISTER, INC., has not confirmed to the National Arbitration that the <regionsbabk.com> domain name is registered with BARGIN REGISTER, INC. or Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute despite these issues.
On May 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 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@regionsbabk.com. Also on May 1, 2012, 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 May 24, 2012, 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
Trademark Information:
Mark Reg. No. Reg. Date Goods/Services
REGIONS U.S. Reg. No. 1881600 March 28, 1995 banking services
REGIONS U.S. Reg. No. 1914267 August 22, 1995 banking services
REGIONS U.S. Reg. No. 3406072 April 1, 2008 banking services
REGIONS U.S. Reg. No. 3505814 September 23, 2008 banking services
REGIONS U.S. Reg. No. 3119462 July 25, 2006 banking services
REGIONS U.S. Reg. No. 3406071 April 1, 2008 banking services
REGIONSBANK U.S. Reg. No. 1918496 September 12, 1995 banking services
REGIONS BANK U.S. Reg. No. 3150549 October 3, 2006 banking services
REGIONS BANK U.S. Reg. No. 3282179 August 21, 2007 banking services
FACTUAL
AND LEGAL GROUNDS
This
Complaint concerns the registration and use of the regionsbabk.com
domain name, which name infringes Complainant’s REGIONS, REGIONSBANK, and
REGIONS BANK names and marks. Respondent registered the domain name regionsbabk.com
to usurp the goodwill of Complainant and its REGIONS, REGIONSBANK, and REGIONS
BANK marks. This Complaint is based on the following factual and legal
grounds:
[a.] THE DOMAIN NAME REGIONSBABK.COM IS CONFUSINGLY SIMILAR TO COMPLAINANT’S REGIONS, REGIONS BANK, AND REGIONSBANK MARKS
1. Complainant, Regions Asset Company, owns and maintains all intellectual property, including the REGIONS, REGIONS BANK and REGIONSBANK marks, on behalf of Regions Financial Corporation (“RFC”). RFC is a top ten financial institution in the United States with more than $127 billion in assets. RFC’s banking subsidiary, Regions Bank, operates some 1,700 branches and 2,100 ATMs across a 16-state network in the South, Midwest, and Texas. At Regions Bank branches and on its regions.com site, Regions offers all kinds of personal, small business and commercial banking services. Together, Complainant and its affiliates RFC and Regions Bank are referred to herein as “Regions.”
2. Regions is well recognized and admired for the quality of the services it offers. For example, Regions has been on the Fortune list of Most Admired Superregional Banks in the United States and has been ranked as one of the top small business-friendly financial services providers by the U.S. Small Business Administration. In addition, Regions Bank was recently recognized as a “Top Bank” in the 2011 Temkin Experience Ratings that studied customer service. Regions was one of only 24 companies out of 143 large American companies that scored an overall excellent or good service rating and was ranked first among banks.
3. Regions’ REGIONS mark, alone or with other elements, has been in use in commerce in the United States since at least as early as December 1993 for banking services and for other related financial services such as credit card, debit card, loan, mortgage, investment, trust and insurance services. The advertising and promotion of the REGIONS branded services includes television, radio, print, billboard, and Internet advertising, as well as the presence of the many REGIONS bank locations and automated teller machines (“ATMs”) in the communities Regions serves as well as the Regions’ website located at regions.com.
4. Regions’ REGIONS BANK and REGIONSBANK marks, alone or with a design, has been in use in commerce in the United States since at least as early as December 1993 for banking services and other services that banks provide such as credit card, debit card, checking account, savings account, investment, CD, and money market account services. The advertising and promotion of the REGIONS BANK and REGIONSBANK branded services has included television, radio, print, billboard and Internet advertising, as well as the presence of the many REGIONS BANK locations and automated teller machines (“ATMs”) in the communities Regions serves.
5. By virtue of the long, continued and widespread advertising, promotion and sale of REGIONS, REGIONS BANK and REGIONSBANK branded banking, financial and other services and the quality and excellence of those services, the REGIONS, REGIONS BANK and REGIONSBANK marks are now famous names and marks in the United States that are relied upon by the trade and the public to identify the services of Regions and to distinguish such services from the services of others. The REGIONS, REGIONS BANK and REGIONSBANK marks have come to represent an extremely valuable goodwill belonging exclusively to Regions.
6. Regions owns several U.S. trademark registrations for its REGIONS mark, including Reg. Nos. 1881600, 1914267, 3406072, 3505814, 3119462, and 3406071 for “banking services.” Regions also owns many domain names for its REGIONS brand, including regions.com, where Regions advertises its many banking services and where customers can log into their bank accounts.
7. Regions also owns several U.S. trademark registrations for its REGIONS BANK and REGIONSBANK marks, including Reg. Nos. 1918496, 3150549, and 3282179 for “banking services.” Regions owns many domain names for its REGIONS BANK and REGIONSBANK brands, including regionsbank.com, which resolves to the regions.com website that advertises its many banking services and where customers can log into their bank accounts.
8. Respondent is the registered owner of the domain name regionsbabk.com. At regionsbabk.com, Respondent operates a website that uses Regions’ REGIONS name and mark and a misspelling of Regions’ REGIONS BANK and REGIONSBANK names and marks to attract customers to its site that advertises the services of Regions’ competitors. The site contains links to pages advertising the services of Regions' competitors, for example, “Online Checking Account,” “Online Banking Account,” “Bank Online Banking,” “Free Online Banking,” “Bank Checking,” “Personal Banking,” “Bank Personal Loans,” and “Bank Home Equity,” all services that Regions offers. Each of these links lead to webpages containing links advertising the services of Regions' competitors, such as Bank of America and Ally Bank.
9. Respondent’s regionsbabk.com domain name is confusingly similar to Regions’ famous and registered REGIONS, REGIONS BANK and REGIONSBANK marks. The second level domain name consists of the REGIONS mark and also a misspelling of Regions’ REGIONSBANK and REGIONS BANK marks and URL regionsbank.com.[1] It is well-established that registering domain names that are predictable misspellings of trademarks is a practice known as typosquatting,[2] and that domain names that are the subject of typosquatting are confusingly similar to the marks they mimic.[3] Although the domain name regionsbabk.com does not contain the word “bank,” it is obvious that the Respondent is referring to the REGIONS and REGIONS BANK marks in its domain name as evidenced by the banking links that appear on the regionsbabk.com site.
10. Internet users who are misdirected to Respondent’s website will be confused and mistakenly believe that the regionsbabk.com site is Regions’ site or is affiliated with or sponsored by Regions. At Respondent’s regionsbabk.com website, customers are likely to link to sites that compete with Regions’ banking services. Thus, an Internet user who is searching for Regions’ well known banking and financial services may come to Respondent’s site and mistakenly think that the services are Regions’, employ Regions’ banking services, or are sponsored by Regions. Thus, Internet users searching for REGIONS, REGIONS BANK and REGIONSBANK services who mis-type the website as regionsbabk.com could end up at the websites of Regions’ competitors rather than Regions’ website.
[b.] RESPONDENT HAS NO LEGITIMATE RIGHT OR INTEREST
IN THE REGIONSBABK.COM DOMAIN NAME
11. Respondent uses the regionsbabk.com domain name for a website that advertises links to services that relate to and compete directly with Regions’ services. Respondent links to sites that offer for sale banking and financial services, just like Regions’ services. Thus, Respondent uses the confusingly similar domain name to profit from advertising services competing in the same market as Regions and to cause consumers to falsely believe that they can obtain REGIONS, REGIONS BANK and REGIONSBANK banking or other financial services from the regionsbabk.com website.[4] Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.[5]
12. Respondent never has been commonly known by the name or mark REGIONS, REGIONS BANK, REGIONSBABK or REGIONS BABK, or ever legitimately used any trademark or service mark similar to the second level domain name by which it may come to be known. The WhoIs contact information provided indicates that Respondent is known as “PrivacyProtect.org” or “Domain Admin,” not “Regions,” “Regions Bank,” “regionsbabk,” or “Regions Babk.”[6] Therefore, there is nothing to suggest that Policy ¶4(c)(ii) applies in this case.[7]
13. Regions has no relationship with Respondent.
14. In addition, the intentional misspelling of Regions’ marks in the regionsbabk.com domain name demonstrates that Respondent has capitalized on the misspellings to misdirect Internet users to its domain names when they are seeking Regions’ domain names. Such typosquatting is evidence that Respondent lacks any right or legitimate interest in the regionsbabk.com domain name.[8]
15. Finally, where Complainant contends the Respondent has no rights or legitimate interests in a disputed domain name, the burden of proof shifts to Respondent to come forward with proof to the contrary.[9] Absent a showing to the contrary by Respondent, Complainant has therefore established that Respondent has no legitimate interests in the Disputed Domain Name.
[c.] RESPONDENT’S REGISTRATION AND USE OF THE DOMAIN NAME REGIONSBABK.COM IS IN BAD FAITH
16. Respondent registered and is using the regionsbabk.com domain name in bad faith.
17. Respondent’s registration and use of the regionsbabk.com domain name was with full knowledge of Regions’ prior use of, rights in and goodwill associated with the REGIONS, REGIONSBANK and REGIONSBANK names and marks. Respondent’s bad faith is evidenced in many ways: (1) the regionsbabk.com domain name is a misspelling of Regions’ REGIONS BANK and REGIONSBANK marks;[10] (2) Complainant’s use of the marks REGIONS, REGIONS BANK and REGIONSBANK began prior to the registration of the regionsbabk.com domain name; (3) Complainant’s trademark registrations provided Respondent with constructive notice of Complainant’s rights in the REGIONS, REGIONS BANK and REGIONSBANK marks;[11] (4) Respondent has shielded its identity in the WhoIs database;[12] and (5) Respondent’s advertising of services that compete directly with those of Complainant demonstrates Respondent’s knowledge of Complainant’s rights in the REGIONS, REGIONS BANK and REGIONSBANK marks.[13]
18. On January 27, 2012, Complainant’s attorneys sent a letter to Respondent notifying Respondent that its registration and use of the regionsbabk.com domain name, which at the time was a site advertising loan services, violates Complainant’s rights in and to its registered REGIONS, REGIONS BANK and REGIONSBANK marks. No response has been received.
19. On February 16, 2012, Complainant’s attorneys sent a follow-up letter to Respondent. No response has been received. Since the letter was sent, Respondent continues to use the domain name regionsbabk.com to link to services that compete with Regions, despite having actual knowledge that its use of the regionsbabk.com site in this manner infringes Regions’ exclusive rights to the REGIONS, REGIONS BANK, and REGIONSBANK marks for banking and related financial services.
20. Respondent knowingly and purposefully uses the famous REGIONS, REGIONS BANK, and REGIONSBANK marks to operate a website advertising banking and other financial services that compete directly with Regions’ services. By using this domain name, Respondent disrupts Regions’ business and tries to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s REGIONS, REGIONS BANK, and REGIONSBANK marks, with intent for commercial gain.[14] The deliberate deception of consumers infringes, dilutes and tarnishes Complainant’s REGIONS, REGIONS BANK, and REGIONSBANK marks.
21. Respondent provides links to websites that sell banking and other financial services. Panels have inferred that a respondent receives “pay-per-click fees” when Internet users follow links on its website.[15] By linking to services that directly compete with those of Complainant, Respondent profits from the unauthorized use of Regions’ marks in the domain name regionsbabk.com and purposefully disrupts Regions’ business.[16] The use of Regions’ REGIONS, REGIONS BANK, and REGIONSBANK marks to generate pay-per-click revenues by directing consumers to websites that compete with Regions is not 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).[17]
22. As panels have found, the “overriding objective” of the Policy is to stop the abusive registration of domain names where the registrant exploits the trademark of another for purposes of commercial gain.[18] Such is the case here, in which Respondent has clearly engaged in abusive registration of the regionsbabk.com domain name, exploiting Regions’ REGIONS, REGIONS BANK, and REGIONSBANK trademarks to profit by diverting Internet traffic to its website.
23. Finally, Respondent is a pattern cybersquatter. Many panels have found bad faith on the part of Respondent because of its past engagement in the registration of domain names that are or are similar to trademarks belonging to others. In the vast majority of these cases, the panel found that Respondent engaged in typosquatting and used the disputed domain names to disrupt the complainant’s business and to profit by confusing Internet users seeking the complainant’s goods or services.[19]
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order transferring or cancelling a domain name:
(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.
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.”).
Complainant claims it has rights for its REGIONSBANK mark pursuant to Policy ¶4(a)(i). Previous panels have held registration with the USPTO for a given mark is sufficient to establish Complainant’s rights in a mark pursuant to Policy ¶4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶4(a)(i)). Complainant presents the Panel with evidence of its trademark registration with the USPTO for its REGIONSBANK mark (e.g., Reg. No. 1,918,496 registered September 12, 1995). Based on this evidence, the Panel finds Complainant has sufficiently established its rights in its REGIONSBANK mark pursuant to Policy ¶4(a)(i), regardless of where Respondent resides or operates. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant claims Respondent’s <regionsbabk.com> domain name is confusingly similar to Complainant’s REGIONSBANK mark. Complainant points out the <regionsbabk.com> domain name contains Complainant’s REGIONS mark paired with “babk,” which Complainant claims is a predictable misspelling of the word “bank.” The Panel notes the <regionsbabk.com> domain name also eliminates the space between REGIONS BANK as well as adds the generic top-level domain (“gTLD”)“.com” …none of which would make any difference in this analysis. Since spaces are not allowed in domain names and all domain names must include a TLD, to hold otherwise would effectively eviscerate the UDRP…something this Panel is not prepared to do. Previous panels agree and have determined variances such as misspellings, deleted spaces, and top-level domains are insufficient in distinguishing a disputed domain name from a complainant’s registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶4(a)(i).”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that “[a] domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”). The Panel holds Respondent’s <regionsbabk.com> domain name is confusingly similar to Complainant’s REGIONS BANK mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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 argues Respondent lacks rights and legitimate interest in the <regionsbabk.com> domain name. Previous panels have held when a respondent’s WHOIS information differs from the disputed domain name, a respondent is not commonly known by the disputed domain name. 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); 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). The WHOIS information for Respondent lists the registrant as “PrivacyProtect.org.” Complainant claims Respondent is not related to Complainant and has never authorized Respondent to use Complainant’s mark. Respondent does not provide any evidence it is commonly known by the <regionsbabk.com> domain name. Taking this all into consideration, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant further argues Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of its <regionsbabk.com> domain name. Former panels have held using a confusingly similar domain name to profit from advertisements for third parties competing with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that the respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain names); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Complainant claims Respondent’s <regionsbabk.com> domain resolves to a website containing advertisements for companies that directly compete with Complainant’s business. The Panel notes these competing advertisements appear to be pay-per-click links which Respondent financially profits from (directly or indirectly). Based on this presentation of evidence, the Panel finds Respondent’s use of the disputed domain name to feature pay-per-click advertisements for competing services does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial fair use under Policy ¶4(c)(iii).
Complainant also contends Respondent is engaging in typosquatting behavior. Preceding panels have held engaging in typosquatting behavior is further evidence that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). Complainant claims Respondent is capitalizing on the misspellings in the <regionsbabk.com> domain name, diverting users and disrupting Complainant’s business. The Panel concludes Respondent lacks rights and legitimate interests in the <regionsbabk.com> domain name pursuant to Policy ¶4(a)(ii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is a pattern cybersquatter. Earlier panels have found pattern bad faith registration and use indicates current bad faith registration and use pursuant to Policy ¶4(b)(ii) where a respondent was subject to multiple UDRP proceedings resulting in the panel ordering a disputed domain name transferred. 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). Complainant presents evidence of multiple UDRP cases in which Respondent engaged in typosquatting and used the disputed domain names to disrupt Complainant’s business and profit from confused Internet users. See Gap, Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1332394 (Nat. Arb. Forum Aug. 16, 2010); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1357512 (Nat. Arb. Forum Dec. 17, 2010); see also Target Brands, Inc. v. PrivacyProtect.org / Domain Admin, FA 1371798 (Nat. Arb. Forum Mar. 30, 2011); see also Allstate Ins. Co. v. Privacyprotect.org / Domain Admin, FA 1375041 (Nat. Arb. Forum Apr. 1, 2011). Based on this showing, the Panel finds Respondent is a pattern cybersquatter, which is evidence Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶4(b)(ii).
Complainant seeks to establish Respondent has registered the <regionsbabk.com> domain name in bad faith pursuant to Policy ¶4(b)(iii). Previous panels have held using a confusingly similar domain name to attract Internet users to a site displaying competing links disrupts a complainant’s business and constitutes bad faith registration 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 in bad faith pursuant to Policy ¶4(b)(iii) because respondent 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. Assoc., 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 contends Respondent knowingly and purposefully uses the <regionsbabk.com> domain name to resolve to a website advertising services directly competing with Complainant. Complainant further claims Respondent is disrupting Complainant’s business when attracting Internet users to Respondent’s resolving website. Based on this, the Panel finds Respondent registered and uses the <regionsbabk.com> domain name in bad faith under Policy ¶4(b)(iii).
Complainant also contends Respondent has shown bad faith registration and use according to Policy ¶4(b)(iv). Prior panels have found bad faith registration under Policy ¶4(b)(iv) when a respondent registers a confusingly similar domain which is used to resolve to a commercial website offering hyperlinks to competing businesses. 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 BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”). Complaint claims Respondent is creating a likelihood of confusion by using a confusingly similar domain name in order to attract Internet users to a site featuring pay-per-click links and financially profiting therefrom. Based on Complainant’s assertions and evidence, the Panel finds Respondent registered and uses the <regionsbabk.com> domain name in bad faith pursuant to Policy ¶4(b)(iv).
Complainant also contends it is inconceivable Respondent could have registered the <regionsbabk.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark in light of the fame and notoriety of Complainant's REGIONS BANK mark. Other panels have refused to find bad faith based upon constructive notice and this Panel is also not prepared to do so at this point. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Under these facts and circumstances, this Panel concludes Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name)."
All of the foregoing is academically and legally correct. It completely overlooks the fact Respondent is a commercial privacy service which holds the domain name in question as a nominee for an undisclosed principal. This means cases will accumulate over time to show Respondent is a serial cyber squatter. While this Panel stands by its foregoing traditional analysis, this Panel also finds there is no bona fide reason for a commercial enterprise to register a domain name through a nominee. While this Panel concedes there might well be a reason to register a domain name through a nomine in a personal context, that issue does not arise under the obviously commercial facts of this case. This Panel finds bad faith registration and use sufficiently proven from the fact the domain name’s real owner is not publicly disclosed (which means the WHOIS information is misleading, at best). Respondent has submitted nothing which would suggest otherwise.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <regionsbabk.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, May 31, 2012
[1] Am. Online, Inc. v. Oxford Univ., FA0206000114654 (Nat. Arb. Forum Aug. 21, 2002) (“gTLDs, such as, ‘.net,’ ‘.org’ and ‘.com,’ are not capable of transforming a confusingly similar second level domain into a distinct mark. Generic top-level domains are required in domain names and are not considered influential [in] a Policy 4(a)(i) analysis”).
[2] As the Panel in Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517 (June 28, 2006), stated, “‘Typosquatting’ involves the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark.” See, e.g., Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150 (July 7, 2004); Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035 (Oct. 24, 2001); Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094 (Apr. 3, 2001). In a typical “typosquatting” case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by internet users seeking the complainant’s commercial website and divert them to the respondent’s website. See Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035 (Oct. 24, 2001).
[3] See The Gap, Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1332394 (Nat. Arb. Forum Aug. 16, 2010) (finding Respondent’s bannanarepublic.com domain name confusingly similar to Complainant’s BANANA REPUBLIC mark); NORDSTROM, Inc. and NIHC, Inc. v. PrivacyProtect.org / Domain Admin, FA 1398811 (Nat. Arb. Forum Sept. 8, 2011) (finding Respondent’s nordtrom.com domain name confusingly similar to Complainant’s NORDSTROM mark); see also Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517(June 28, 2006); Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201 (Feb. 26, 2002); Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., StonybrookInvestments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587 (Aug. 10, 2000); Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003–0317 (July 14, 2003).
[4] Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (Aug. 21, 2003) (“Use of a domain name that is identical or confusingly similar to a trademark that applies to goods sold by a Respondent is not a bona fide use if the domain name serves as a ‘bait’ to attract customers to Respondent's website, rather than merely as a descriptor of the Respondent's products.”); IndyMac Bank F.S.B. v. Bakers, FA407000296598 (Nat. Arb. Forum Sept. 2, 2004) (respondent’s use of a confusingly similar domain name to redirect people seeking complainant’s services to a website linking to competing services was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name).
[5] Id.; see also Citigroup Inc. v. PrivacyProtect.org a/k/a Domain Admin, FA 1400922 (Nat. Arb. Forum Sept. 16, 2011) (“[T]he display of links to competing third-party websites is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use.”).
[6] Tercent Inc. v. Lee Yi, FA0301000139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that “nothing in the respondent’s WHOIS information implies that the respondent is ‘commonly known by’ the disputed domain name” is one factor in determining that Policy ¶4(c)(ii) does not apply).
[7] LF, LLC v. PrivacyProtect.org / Domain Admin, FA 1400742 (Nat. Arb. Forum Nov. 1, 2011) (holding there is no evidence to suggest Policy ¶4(c)(ii) applies where the WhoIs information shows that the respondent is known as “PrivacyProtect.org / Domain Admin”).
[8] The Gap, Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1332394 (Nat. Arb. Forum Aug. 16, 2010); (“[T]he use of a common misspelling of a complainant’s mark in a domain name is evidence of typosquatting, which is not evidence of legitimate rights and interests in a disputed domain name.”).
[9] Wal-Mart Stores, Inc. v. Lynda's/Lynda Hickman, WIPO Case No. D2003-0719 (Dec. 7, 2003); Unibanco-Uniao de Bancos Brasileiros S.A. v. Vendo Domain Sale, WIPO Case No. D2000-0671 (Aug. 31, 2000) (discussing burden on the respondent).
[10] See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 (Jan. 18, 2001) (finding that misspelling a mark in a domain name is evidence of bad faith); Hobsons, Inc. v. Peter Carrington a/k/a Party Night Inc., WIPO Case No. D2003-0317 (July 14, 2003); Playboy Enterprises International, Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094 (Apr. 3, 2001); Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035 (Oct. 24, 2001); Sports Warehouse, Inc. v. Laksh Internet Solutions Private Limited, WIPO Case No. D2008-1112 (Sept. 18, 2008); Wachovia Corp. v. American Consumers First, WIPO Case No. D2004-0150 (Jul. 7, 2004).
[11] See Centura Health Corp. v. Jasper Developments c/o domain manager, FA0607000751616 (Nat. Arb. Forum Aug. 24, 2006) (finding that “it is evident that Respondent registered the contested domain name with actual or constructive knowledge of Complainant’s rights in the CENTURA HEALTH mark by virtue of Complainant’s prior registration of its mark with the USPTO. Registration of an identical or confusingly similar domain name despite such actual or constructive knowledge evidences bad faith registration and use of the domain name pursuant to Policy ¶4(a)(iii)”).
[12] Sports Warehouse, Inc. v. Laksh Internet Solutions Private Limited, WIPO Case No. D2008-1112 (Sept. 18, 2008) (finding Respondent’s use of a WhoIs privacy service to be an indicator of bad faith); Dr. Ing. H.C. F. Porsche AG v. Laksh Internet Solutions Private Limited, WIPO Case No. D2008-0691 (Jul. 16, 2008) (the failure of Respondent to identify itself was an indicator of bad faith).
[13] Transportes Aereos Portuguese. v. Domain Deluxe, FA0504000454449 (Nat. Arb. Forum May 19, 2005) (inferring knowledge of complainant’s rights where the domain name consisted in part of the complainant’s mark and the respondent’s services competed directly with complainant’s); Digi Int’l v. DDI Sys., FA0209000124506 (Nat. Arb. Forum Oct. 24, 2002) (presuming bad faith when respondent actually or constructively should have known of complainant’s marks).
[14] Chip Merch., Inc. v. Blue Star Elec., WIPO Case No. D2000-0474 (Aug. 21, 2000) (use of confusingly similar domain names to sell competing goods is not a bona fide offering of goods); IndyMac Bank F.S.B. v. Bakers, FA407000296598 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith”).
[15] Transportes Aereos Portugueses, S.A. v. Domain Deluxe, FA0504000454449 (Nat. Arb. Forum May 19, 2005) (“The Panel infers that Respondent receives pay-per-click fees when Internet users follow the links on its website”).
[16] Transportes Aereos Portugueses, S.A. v. Domain Deluxe, FA0504000454449 (Nat. Arb. Forum May 19, 2005) (finding that respondent’s use of complainant’s mark in its domain name to link to websites competing with complainant was purposefully disruptive of complainant’s business and evidence of bad faith registration and use).
[17] TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
[18] See Dr. Ing. h.c. F. Porsche AG v. Web Services Pty, WIPO Case No. D2008-0620 (June 16, 2008) (“The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”).
[19] See, e.g., The Gap, Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1332394 (Nat. Arb. Forum Aug. 16, 2010); Victoria’s Secret Stores Brand Management, Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1357512 (Nat. Arb. Forum Dec. 17, 2010); Target Brands, Inc. v. PrivacyProtect.org / Domain Admin, FA 1371798 (Nat. Arb. Forum Mar. 30, 2011); Allstate Insurance Company v. Privacyprotect.org / Domain Admin, FA 1375041 (Nat. Arb. Forum Apr. 1, 2011); NORDSTROM, Inc. and NIHC, Inc. v. PrivacyProtect.org / Domain Admin, FA 1398811 (Nat. Arb. Forum Sept. 8, 2011); Wal-Mart Stores, Inc. v. PrivacyProtect.org / Domain Admin, FA 1400433 (Nat. Arb. Forum Sept. 21, 2011); LF, LLC v. PrivacyProtect.org / Domain Admin, FA 1400742 (Nat. Arb. Forum Nov. 1, 2011); Citigroup Inc. v. PrivacyProtect.org a/k/a Domain Admin, FA 1400922 (Nat. Arb. Forum Sept. 16, 2011).
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