Regions Asset Company v. Paul Florin
Claim Number: FA1211001472278
Complainant is Regions Asset Company (“Complainant”), represented by Alison Taroli of Steptoe & Johnson LLP, Washington, D.C. Respondent is Paul Florin (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionsbankforeclosures.org>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2012; the National Arbitration Forum received payment on November 20, 2012.
On November 21, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <regionsbankforeclosures.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@regionsbankforeclosures.org. Also on November 21, 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 December 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <regionsbankforeclosures.org> domain name is confusingly similar to Complainant’s REGIONSBANK mark.
2. Respondent does not have any rights or legitimate interests in the < regionsbankforeclosures.org> domain name.
3. Respondent registered or used the < regionsbankforeclosures.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant licenses the REGIONSBANK mark for the provision of retail banking services.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its REGIONSBANK mark (Reg. No. 1,918,496 registered September 12, 1995).
3. The <regionsbankforeclosures.org> domain name is confusingly similar to Complainant’s REGIONSBANK mark.
4. Respondent uses the <regionsbankforeclosures.org> domain name for a website that advertises links to services that relate directly to and compete directly with Regions’ mortgage services.
5. Respondent commercially benefits from the operation of its website.
6. Respondent registered and has used the subject domain name in bad faith.
7. Respondent is not commonly known by the <regionsbankforeclosures.org> domain name.
8. Respondent registered the <regionsbankforeclosures.org> domain name with actual knowledge of Complainant’s rights in the REGIONSBANK mark.
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.
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 that its registration of the REGIONSBANK mark with the USPTO (Reg. No. 1,918,496 registered September 12, 1995) establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). The Panel agrees that Complainant’s registration with the USPTO is indeed sufficient to confer rights in the mark for the purposes of Policy ¶ 4(a)(i), even despite the fact that Respondent appears to operate outside of the United States. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant also claims that the <regionsbankforeclosures.org> domain name is confusingly similar to its REGIONSBANK mark under Policy ¶ 4(a)(i). Complainant contends that the addition of the term “foreclosures” and the generic top-level domain (“gTLD”) “.org” is insufficient to distinguish Respondent’s <regionsbankforeclosures.org> domain name from Complainant’s REGIONSBANK mark for the purposes of confusingly similar analysis under Policy ¶ 4(a)(i). The Panel finds that the term “foreclosures” is descriptive of Complainant’s banking business, as it must foreclose on various properties from time-to-time during the course of its banking operations, and that the addition of such terms does not distinguish the disputed domain name from the mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). The Panel also finds that the affixation of the gTLD “.org” is not sufficient to render the domain name distinct from the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that Respondent’s <regionsbankforeclosures.org> domain name is confusingly similar ot the REGIONSBANK mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 that Respondent is not commonly known by the <regionsbankforeclosures.org> domain name within the meaning of Policy ¶ 4(c)(ii). The Panel notes that the WHOIS information for the disputed domain name identifies the domain name registrant as “Paul Florin,” which the Panel finds fails to invoke any appearance of substantial similarity to the <regionsbankforeclosures.org> domain name. The Panel also notes that Respondent in this case has failed to satisfy its burden of providing a Response. In light of the foregoing evidence, the Panel finds that Respondent is in fact not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also alleges that Respondent is using the <regionsbankforeclosures.org> domain name to resolve to a website that advertises links to services that relate directly to and compete directly with Regions’ mortgage services. The Panel finds that Respondent’s use of the disputed domain name can be fairly considered neither 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 argues that “Respondent knowingly and purposefully uses the famous REGIONS, REGIONS BANK and REGIONSBANK marks and a descriptor ‘foreclosures,’ which implies that a customer can find Regions’ mortgage services or information on properties that Regions has foreclosed upon, to operate a website advertising foreclosed properties that compete directly with Regions’ services.” Complainant asserts that this practice disrupts its business in bad faith. Upon an examination of the record and relevant UDRP precedent, the Panel determines that Respondent’s registration and use of the <regionsbankforeclosures.org> domain name for this purpose constitutes bad faith disruption of Complainant’s business 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)).
Complainant alleges that Respondent “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.” Complainant posits that Respondent likely receives pay-per-click revenues through the operation of its website. The Panel finds that Respondent seeks to draw traffic to its site , and thus generate a commercial gain, by using a confusingly similar domain name. This, the Panel finds, is grounds for a finding of bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant further alleges that Respondent registered the <regionsbankforeclosures.org> domain name with “full knowledge” of Complainant’s rights in the REGIONSBANK mark, as indicated by Respondent’s use of Complainant’s signature shade of green on its website and provision of links that resolve directly to the websites of Complainant’s chief competitors. Additionally, Complainant urges that its registration of the REGIONSBANK mark with the USPTO demonstrates Respondent’s constructive knowledge of Complainant’s rights in the mark. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, concluding that Respondent registered the <regionsbankforeclosures.org> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <regionsbankforeclosures.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 8, 2013
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