Square 1 Bank v. Kurt Bowker
Claim Number: FA1302001484016
Complainant is Square 1 Bank (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Kurt Bowker (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <squareonebanking.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 7, 2013; the National Arbitration Forum received payment on February 7, 2013.
On February 8, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <squareonebanking.com> 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 February 11, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of March 4, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@squareonebanking.com. Also on February 11, 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 March 20, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant markets venture capital, commercial banking and investment services under the SQUARE 1 BANK service mark.
Complainant holds rights in the SQUARE 1 BANK service mark by reason of its registration of the mark with the United States Patent and Trademark Office (“USPTO”), Registry No. 3,198,443, registered January 16, 2007.
The disputed domain name was registered on December 20, 2012.
Respondent’s <squareonebanking.com> domain name is confusingly similar to Complainant’s SQUARE 1 BANK mark.
Respondent has not been commonly known by the disputed domain name.
Respondent has no connection or affiliation with Complainant, and Complainant has not authorized Respondent’s use of this domain name.
The <squareonebanking.com> domain name resolves to a website promoting banking services that compete with Complainant’s financial services business.
Respondent has no rights to or legitimate interests in the domain name.
Respondent registered and uses the contested domain name to disrupt Com-plainant’s business.
Respondent seeks to confuse Internet users who access the website resolving from the contested domain name into believing that they will be doing business with Complainant.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the SQUARE 1 BANK service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <squareonebanking.com> domain name is con-fusingly similar to Complainant’s SQUARE 1 BANK mark. The domain name contains the entire mark, merely substituting the word “one” for the numeral “1” in the mark,” and adding the generic Top Level Domain (“gTLD”) “.com” and the suffix “ing” to the term “bank.” These alterations of the mark, made in creating the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name, such as “.net” or “.com,” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the mark of another).
See also J.P. Commc’ns, Inc. v Mainstream Adver., FA 1270452 (Nat. Arb. For-um July 11, 2009) (concluding that a respondent’s substitution of the word “ten” for the numeral “10” in the <top10wholesale.com> domain name did not disting-uish the domain name from a UDRP complainant’s TOP TEN WHOLESALE mark because of their phonetic similarity).
As to Respondent’s addition of the suffix “ing” to form the term “banking” in the domain name, see, for example, Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words or adding letters to the terms of a UDRP Complainant’s mark in forming a domain name, a respond-ent does not create a distinct name, but instead renders the resulting domain name confusingly similar to that complainant’s mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the SQUARE 1 BANK mark, that Respondent has no connection or affiliation with Complainant, and that Com-plainant has not authorized Respondent’s use of the <squareonebanking.com> disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Kurt Bowker,” which does not resem-ble the domain name. On this record, we conclude that Respondent has not been commonly known by the <squareonebanking.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in them as described in Policy ¶ 4(c)(ii), where the relevant WHOIS information identified the registrant of the domain name only as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” and where there was no other evidence in the record suggesting that that re-spondent was commonly known by the domain names in dispute).
We next observe that Complainant asserts, without objection from Respondent, that the <squareonebanking.com> domain name, which is confusingly similar to Complainant’s SQUARE 1 BANK mark, resolves to a website offering banking services in competition with the business of Complainant. In the circumstances described in the Complaint, we may comfortably presume that Respondent profits from this employment of the domain name. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncom-mercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain names for either a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain names to divert Internet users to a website that offered services com-peting with those offered by a UDRP complainant under its marks).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent registered and uses the contested domain name to disrupt Complainant’s business as alleged in the Complaint. This demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Com-plainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are likewise convinced from the evidence that Respondent seeks, for its prof-it, to confuse Internet users who access the <squareonebanking.com> domain name into believing that they will be doing business with Complainant. This stands as evidence of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See, for example, Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that a respondent came within Policy ¶ 4(b)(iv) by displaying a UDRP complainant’s mark on its website resolving from a domain name confusingly similar to that complainant’s mark, and there offering services identical to those marketed by that complainant).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <squareonebanking.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
March 31, 2013, Panelist
Dated: Terry F. Peppard
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