Regions Bank v. Tan Kim Fong
Claim Number: FA1305001501458
Complainant is Regions Bank (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington, D.C., United States. Respondent is Tan Kim Fong (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionbank.com>, registered with ENOM, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2013; the National Arbitration Forum received payment on May 23, 2013.
On May 24, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <regionbank.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 May 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 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@regionbank.com. Also on May 29, 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 June 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 allegations:
i. disrupts Complainant’s business in violation of Policy ¶ 4(b)(iii); and
ii. constitutes an attempt to attract internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s REGIONSBANK mark, for Respondent’s commercial gain, in violation of Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its REGIONS and REGIONS BANK marks.
2. Respondent’s <regionbank.com> domain name is confusingly similar to Complainant’s marks.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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 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 asserts that it owns rights in the following trademarks through registrations with the USPTO: the REGIONS mark (Reg. No. 1,881,600, registered February 28, 1995); the REGIONSBANK mark (Reg. No. 1,918,496, registered September 12, 1995); and the REGIONS BANK trademark and design (Reg. No. 3,150,549, registered October 3, 2006). See Complainant’s Pippen III Decl., Exhibit A. The Panel notes that Complainant appears to reside in the United States. Under Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i). Accordingly, the Panel finds that Complainant’s registrations of the REGIONS, REGIONSBANK, and REGIONS BANK marks with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <regionbank.com> domain name is confusingly similar to its REGIONS, REGIONSBANK, and REGIONS BANK marks, because the disputed domain name merely deletes the letter “s” from Complainant’s REGIONSBANK and REGIONS BANK marks. The Panel notes that Respondent’s <regionbank.com> domain name adds the generic top-level domain name (“gTLD”), “.com,” to Complainant’s REGIONSBANK mark. However, the the addition of a gTLD such as “.com” does not affect whether the at-issue domain name is confusingly similar under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000). Thus, the Panel disregards Respondent’s addition of “.com” for the purpose of conducting a confusingly similarity analysis under Policy ¶ 4(a)(i). Furthermore, in Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000), the Panel found that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to the mark. The Panel makes the conclusion that the <regionbank.com> domain name is confusingly similar to Complainant’s REGIONSBANK mark for the purposes of Policy ¶ 4(a)(i), despite the changes made to the mark within the domain name.
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 asserts that Respondent is not commonly known by its <regionbank.com> domain name, because the WHOIS information identifies “Tan Kim Fong” as the registrant, and Respondent has failed to submit evidence that it is commonly known as “regionbank.” Complainant also suggests that it has not authorized Respondent’s use of the <regionbank.com> domain name and that Complainant has no relationship with Respondent whatsoever. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the Panel concluded 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. In accordance with this precedent, the Panel finds that Respondent is not commonly known by the <regionbank.com> domain name, and thus does not have rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Complainant further suggests that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), respectively. Complainant contends that the <regionbank.com> domain name resolves to a website that advertises links to competitors that directly compete with Complainant’s banking and financial services, including the provision of checking accounts, small business accounts, and mortgages. See Complainant’s Hofstatter Decl., Exhibit B (showing that the disputed domain name resolves to a website advertising links to various competitors that offer financial services similar to Complainant’s services). In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the Panel held that, because the respondent’s disputed domain names resolved to a website featuring a series of advertising links to various third-parties, many of whom offered products and services in direct competition with those offered by under the complainant’s mark, the respondent did not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Accordingly, the Panel finds that Respondent’s use of the disputed domain name to link to Complainant’s competitors does not fall under the protected uses described in Policy ¶¶ 4(c)(i) and (iii).
The Panel notes that, in addition to containing hyperlinks that advertise services in direct competition with Complainant’s banking services, the website resolving from the <regionbank.com> domain name also contains links advertising products and services unrelated to Complainant’s banking services, including educational degrees and wedding stationery. In Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), the Panel found that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names. Therefore, the Panel finds that Respondent’s use is not protected under Policy ¶¶ 4(c)(i) or (iii) simply because the <regionbank.com> website displays some hyperlinks that are unrelated to Complainant’s banking services.
As discussed in the previous section, the Panel notes that Respondent has engaged in typosquatting by registering a domain name that is a common misspelling of Complainant’s REGIONSBANK and REGIONS BANK marks and differs from these marks by merely one letter. Under Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007), typosquatting of this nature “provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).” Therefore, the Panel infers that Respondent, as a typosquatter, lacks rights or legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered multiple domain names that have been the subject of multiple adverse UDRP proceedings. See Complainant’s Hofstatter Decl., Exhibit E (attaching the following fifteen UDRP decisions granting relief against Respondent: Am. Online, Inc. v. Fong, FA 590806 (Nat. Arb. Forum December 16, 2005); AOL Inc. v. Qadir a/k/a Fong, FA 1322494 (Nat. Arb. Forum June 21, 2010); CBOCS Props. Inc. v. Fong, D2011-1007 (WIPO July 26, 2011); Countrywide Fin. Corp. v. Fong, FA 1175424 (Nat. Arb. Forum May 7, 2008); DiscoverU v. Fong, FA 934477 (Nat. Arb. Forum April 13, 2007); Expedia, Inc. v. Fong, FA 827672 (Nat. Arb. Forum December 5, 2006). In Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007), the Panel held that prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations, which constitutes bad faith pursuant to Policy ¶ 4(b)(ii). Given Respondent’s extensive record of prior adverse UDRP proceedings, the Panel finds that Respondent has registered the <regionbank.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
In addition, Complainant suggests that Respondent’s use of the <regionbank.com> domain name to advertise banking and other financial services that compete directly with Complainant’s services disrupts Complainant’s business in violation of Policy ¶ 4(b)(iii). In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the fact that the disputed domain names resolved to websites that listed links to competitors of the complainant was sufficient evidence that the respondent intended to disrupt the complainant’s business, which indicated bad faith pursuant to Policy ¶ 4(b)(iii). Because Respondent’s <regionbank.com> domain name similarly resolves to a website that links to Complainant’s competitors in the financial and banking services industry, the Panel finds that Respondent intends to disrupt Complainant’s business, which constitutes bad faith under Policy ¶ 4(b)(iii).
Similarly, Complainant also contends that Respondent’s use of the <regionbank.com> domain name to advertise directly competing services to those of Complainant constitutes an attempt by Respondent to attract Internet users to its website by creating a likelihood of confusion with Complainant’s REGIONSBANK mark for Respondent’s commercial gain, in violation of Policy ¶ 4(b)(iv). Complainant argues that the disputed domain name deliberately creates a likelihood of confusion with Complainant’s REGIONSBANK mark because the domain name merely deletes the letter “s” and constitutes a predictable misspelling of Complainant’s REGIONSBANK mark. Moreover, Complainant calls upon the Panel to infer that Respondent profits in the form of “click-through fees” by linking to services that directly compete with those of Complainant, and thus achieves commercial gain in violation of Policy ¶ 4(b)(iv). In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the disputed domain name resolved to a website containing links to the complainant’s competitors. The Panel inferred from this that the respondent commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” See id. Under this precedent, the Panel chooses to infer that Respondent received “click-through fees” from its posting of links to Complainant’s competitors, which the Panel determines is sufficient to support a finding of bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent had actual and constructive knowledge of its REGIONS, REGIONSBANK, and REGIONS BANK marks, which tends to show the registration of the <regionbank.com> domain name was made in bad faith. Specifically, Complainant argues that Respondent’s actual and constructive knowledge of Complainant’s marks can be inferred based on the following facts: Complainant used these marks as early as 1995 and registered them with the USPTO; the disputed domain name differs from Complainant’s mark by merely one letter, which tends to show that Respondent knew of the mark and intended to deliberately profit from a predictable misspelling of the mark; and finally, the website that resolves from the disputed domain name contains links to services that directly compete with Complainant’s own financial and banking services, which tends to show that Respondent had actual knowledge of Complainant and the services provided under Complainant’s marks. A respondent’s constructive notice of a complainant’s ownership of a mark is generally insufficient to support a finding of bad faith under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration). However, a respondent’s actual knowledge of a complainant’s ownership of a mark can be inferred by the facts, and that such an inference is sufficient to support a finding of bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”)
In the instant case, because Respondent’s <regionbank.com> domain name differs by only one letter from Complainant’s REGIONSBANK and REGIONS BANK marks, and because the website that resolves from the disputed domain name contains links to services that compete directly with services provided by the Complainant, the Panel infers that Respondent had actual knowledge of Complainant’s rights in its REGIONSBANK and REGIONS BANK marks, and thus also infers that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that the disputed domain name is identical to Complainant’s REGIONSBANK and REGIONS BANK marks, except for the domain name’s elimination of the single letter “s.” The disputed domain name is thus a predictable misspelling of Complainant’s REGIONSBANK and REGIONS BANK marks. Moreover, as discussed above, Respondent has a history of registering domain names that similarly infringe on other well-known marks. Thus, Complainant contends, Respondent’s registration of the disputed domain name constitutes deliberate typosquatting in an attempt to attract confused internet users seeking services provided under Complainant’s marks. Under Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), a finding that the respondent engaged in typosquatting constitutes evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Thus, the Panel agrees with Complainant’s contention that Respondent has engaged in typosquatting, the Panel finds that Respondent acted in bad faith 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 <regionbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 10, 2013
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