Popular, Inc. v. ann marchieson
Claim Number: FA1306001502970
Complainant is Popular, Inc. (“Complainant”), represented by Stephanie M. Boomershine of Michael W.O. Holihan, P.A., Florida, USA. Respondent is ann marchieson (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bkcopopular.com>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2013; the National Arbitration Forum received payment on June 3, 2013.
On June 4, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <bkcopopular.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 June 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@bkcopopular.com. Also on June 7, 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 July 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 < bkcopopular.com> domain name, the domain name at issue, is confusingly similar to Complainant’s POPULAR mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the POPULAR mark, which it uses in connection with banking services. Complainant, through its subsidiaries, operates hundreds of branch banks in Puerto Rico, the U.S. Virgin Islands and British Virgin Islands, California, New York, New Jersey, Illinois, and Florida in conjunction with its POPULAR mark. Complainant is the owner of a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,991,584 registered Sept. 6, 2005). Respondent’s <bkcopopular.com> domain name contains the POPULAR mark in its entirety, along with adding the letters “bkco.” The letters “bkco” are presumed to be an abbreviation for “bank” or “bankco.” Respondent also added the generic top-level domain (“gTLD”) “.com.” Complainant has not authorized Respondent to use its trademark or register the disputed domain name, and Complainant’s counsel wrote a cease and desist letter to Respondent regarding the use of the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a website that advertises banking services while utilizing Complainant’s POPULAR mark throughout the site. The resolving website includes a link to an “i-Bank Login.” Once the link is clicked on, the page prompts users to enter their user name and login PIN. Respondent’s disputed domain name resolves to a website that offers services that compete with those of Complainant, thereby disrupting Complainant’s business. The disputed domain name is likely to confuse Internet users, and may lead some users to believe the disputed domain name is affiliated with or sponsored by Complainant. Respondent had knowledge of Complainant’s mark prior to registration of the disputed domain name because of Complainant’s role in the financial industry for over 100 years. Respondent registered the <bkcopopular.com> domain name on September 21, 2012.
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 has rights in the POPULAR mark, used in connection with banking services. Complainant, through its subsidiaries, operates hundreds of branch banks in Puerto Rico, the U.S. Virgin Islands and British Virgin Islands, California, New York, New Jersey, Illinois, and Florida in conjunction with its POPULAR mark. Further, Complainant is the owner of a registration with the USPTO (Reg. No. 2,991,584 registered Sept. 6, 2005). Panels have determined that a complainant need not have a trademark registration in the same jurisdiction in which a respondent operates in order to prove its rights under Policy ¶ 4(a)(i). See 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). So long as the complainant has a trademark registered through a federal trademark authority, panels regularly find that to be sufficient in proving a complainant's rights under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Therefore, the Panel finds that Complainant has rights to the POPULAR mark under Policy ¶ 4(a)(i).
The disputed domain is confusingly similar to Complainant’s mark. Respondent’s <bkcopopular.com> domain name contains the POPULAR mark in its entirety, along with adding the letters “bkco.” In light of the use made by Respondent of the website associated with the disputed domain name, this Panel presumes the letters “bkco” to be an abbreviation for “bank” or “bankco.” Respondent has also added the generic top-level domain (“gTLD”) “.com.” In Tower Research Capital, LLC, managing member of Limestone Trading, LLC v. Limestone, FA 1349315 (Nat. Arb. Forum Dec. 22, 2010), the panel found that the use of “fx” as an abbreviation for the descriptive term “foreign exchange market,” in addition to the use of “lmst” as an abbreviation for the LIMESTONE mark, rendered the <fxlmst.com> domain name confusingly similar under Policy ¶ 4(a)(i). Thus, the Panel finds that the term “bkco” is an abbreviation for “bankco,” and this abbreviation does not sufficiently distinguish the disputed domain name from Complainant’s mark. The addition of a gTLD is not relevant for the purposes of confusing similarity analysis. 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). Therefore, Respondent’s <bkcopopular.com> domain name is confusingly similar to Complainant’s POPULAR mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 has not authorized Respondent to use its trademark or register the disputed domain name. Further, Complainant explains that its counsel wrote a cease and desist letter to Respondent regarding the use of the disputed domain name. The WHOIS information for the disputed domain name lists “ann marchieson” as the domain name registrant. Panels have looked to the WHOIS information, whether or not the respondent was authorized to use the mark by the complainant, and the record as a whole to determine whether the respondent is 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). Because Respondent was not authorized by Complainant to use the POPULAR mark and neither the WHOIS record nor any other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii).
The disputed domain name resolves to a website that advertises banking services while utilizing Complainant’s POPULAR mark throughout the site. The use of a confusingly similar domain name to advertise and offer services that compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”). Therefore, the Panel finds that Respondent’s use of the <bkcopopular.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The resolving website includes a link to an “i-Bank Login.” Once the link is clicked on, the page prompts users to enter their user name and login PIN. Previous panels have found that requests to obtain personal information constitute phishing, which is evidence of a respondent’s lack of rights and legitimate interests. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (concluding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the <bkcopopular.com> domain name under Policy ¶ 4(a)(ii) because Respondent’s conduct constitutes phishing.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s disputed domain name resolves to a website that offers services that compete with those of Complainant, thereby disrupting Complainant’s business. Offering competing services through a confusingly similar domain name constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). The website associated with the disputed domain name is likely to confuse Internet users, and may lead some users to believe the disputed domain name is affiliated with or sponsored by Complainant, especially considering the fact that Respondent’s site employs similar color schemes, fonts, and logos as Complainant’s site and uses Complainant’s copyrighted and trademarked properties. Panels have found that the use of a confusingly similar domain name to advertise and offer competing services constitutes bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Similarly here, this Panel finds that Respondent registered and is using the <bkcopopular.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Lastly, it is clear that Respondent had constructive knowledge of Complainant’s mark prior to registration of the <bkcopopular.com> domain name because of Complainant’s role in the financial industry for over 100 years. Complainant, through its subsidiaries, operates hundreds of branch banks in Puerto Rico, the U.S. Virgin Islands and British Virgin Islands, California, New York, New Jersey, Illinois, and Florida in conjunction with its POPULAR mark. While constructive notice has been regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bkcopopular.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 5, 2013
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