BOK Financial Corporation v. Success incorporated *
Claim Number: FA1301001481487
Complainant is BOK Financial Corporation (“Complainant”), represented by Penina Michlin Chiu, Oklahoma, USA. Respondent is Success incorporated * (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankoklahoma.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2013; the National Arbitration Forum received payment on January 22, 2013.
On January 23, 2013, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <bankoklahoma.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 January 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2013 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@bankoklahoma.com. Also on January 24, 2013, 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 February 19, 2013, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bankoklahoma.com> domain name is confusingly similar to Complainant’s BANK OF OKLAHOMA mark.
2. Respondent does not have any rights or legitimate interests in the <bankoklahoma.com> domain name.
3. Respondent registered and used the <bankoklahoma.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns a trademark registration for its BANK OF OKLAHOMA mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,116,816 filed June 20, 2005, registered July 18, 2006). Complainant has owned and maintained the <bankofoklahoma.com> domain name since at least December of 1998.
Respondent registered the <bankoklahoma.com> domain name on May 28, 2001 and uses it to provide links to Complainant’s competitors in the financial 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."
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.”).
The Panel finds that Complainant’s registration of its BANK OF OKLAHOMA mark with the USPTO confers rights in the mark under Policy ¶ 4(a)(i) dating back to June 20, 2005, the date on which Complainant filed its trademark application. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
Complainant states that it has provided banking and related financial services under the BANK OF OKLAHOMA mark on an ongoing and continuous basis since at least 1975. Complainant claims that it is the largest federally chartered bank in Oklahoma, operating 89 branches in Oklahoma as well as 8 branches in other states. Complainant also avers that it has owned and maintained the <bankofoklahoma.com> domain name since at least December of 1998. In view of the evidence provided by Complainant, the Panel finds that Complainant’s extensive use of the BANK OF OKLAHOMA mark has resulted in the mark’s accrual of secondary meaning associated with Complainant and its provision of financial services. Accordingly, the Panel finds that Complainant has established common law rights in the BANK OF OKLAHOMA mark under Policy ¶ 4(a)(i) which predate Respondent’s May 28, 2001 registration of the <bankoklahoma.com> domain name. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
Respondent’s <bankoklahoma.com> domain name is confusingly similar to Complainant’s BANK OF OKLAHOMA mark pursuant to Policy ¶ 4(a)(i), as it merely deletes the word “of” and the spaces between words, and adds the generic top-level domain (“gTLD”) “.com.” These changes are insufficient to distinguish the disputed domain name from Complainant’s mark. Thus, the Panel finds that Respondent’s <bankoklahoma.com> domain name is confusingly similar to Complainant’s BANK OF OKLAHOMA mark pursuant to Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 alleges that Respondent is not commonly known by the name “Bank Oklahoma” and states that it did not authorize Respondent’s registration of the <bankoklahoma.com> domain name. The WHOIS information on file lists Respondent’s identity as “Success incorporated *,” which bears no resemblance to the <bankoklahoma.com> domain name. The Panel therefore finds that Respondent is not commonly known by the <bankoklahoma.com> domain name under 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further alleges that Respondent has not used the <bankoklahoma.com> domain name in accordance with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). Complainant provides that the disputed domain name resolves to a parked page advertising competing financial services provided by third parties. Complainant claims that Respondent collects click-through advertising fees through the operation of its site. The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website featuring competing hyperlinks does not qualify as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant cites UDRP decisions to support its proposition that Respondent has established a pattern of registering domain names in bad faith. See NH Hoteles, S.A. v. Success, Inc., D2012-1288 (WIPO Aug. 14, 2012); see also Societe des Technologies de l’Aluminum du Saguena Inc. v. Success Inc., D2008-0268 (WIPO Apr. 14, 2008). The Panel finds that Respondent’s history of registering other domain names in bad faith is an indication of bad faith under Policy ¶ 4(b)(ii). SeeTRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
The disputed domain name resolves to a website dominated by hyperlinks that redirect Internet users to Complainant’s competitors. The Panel finds that Respondent’s registration of a confusingly similar domain name, coupled with Respondent’s collection of click-through revenues, demonstrates that Respondent has intentionally attempted to create confusion with Complainant in order to generate a commercial gain. This is bad faith 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 claims that Respondent’s use of the disputed domain name to provide links to financial services that compete with those provided by Complainant under its BANK OF OKLAHOMA mark suggests that Respondent had actual knowledge of Complainant and its rights in the mark at the time Respondent registered the disputed domain name. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the BANK OF OKLAHOMA mark prior to registering the <bankoklahoma.com> domain name, additional 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).
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 <bankoklahoma.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 25, 2013
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