Regions Bank v. AjmalHost
Claim Number: FA1307001510683
Complainant is Regions Bank (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington, D.C., USA, United States. Respondent is AjmalHost (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regions-banking.com>, registered with ASCIO TECHNOLOGIES, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2013; the National Arbitration Forum received payment on July 19, 2013.
On July 30, 2013, ASCIO TECHNOLOGIES, INC. confirmed by e-mail to the National Arbitration Forum that the <regions-banking.com> domain name is registered with ASCIO TECHNOLOGIES, INC. and that Respondent is the current registrant of the name. ASCIO TECHNOLOGIES, INC. has verified that Respondent is bound by the ASCIO TECHNOLOGIES, 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 July 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@regions-banking.com. Also on July 30, 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 August 29, 2013, 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 allegations:
1. Policy ¶ 4(a)(i)
2. Policy ¶ 4(a)(ii)
3. Policy ¶ 4(a)(iii)
a. Respondent’s use of the <regions-banking.com> domain name disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii), because the domain name resolves to a website that promotes hyperlinks to Complainant’s competitors in the online banking industry, thus diverting potential customers away from Complainant to third-party competitors. See Complainant’s Hofstatter Exhibit B.
4. Respondent registered the disputed <regions-banking.com> domain name on September 16, 2012.
B. Respondent did not submit a Response.
1. Respondent’s <regions-banking.com> domain name is confusingly similar to Complainant’s REGIONS mark.
2. Respondent does not have any rights or legitimate interests in the <regions-banking.com> domain name.
3. Respondent registered or used the <regions-banking.com> 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 Exhibit A. Previous panels have found that a complainant’s USPTO trademark registration adequately demonstrates its rights in a mark under Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel notes that Respondent is located in Morocco and Complainant does not allege that it has registered its mark in Morocco. However, previous panels have held that the Policy does not require a complainant to register its mark in the country in which a respondent operates in order to sufficiently establish its rights in the mark. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction) Accordingly, the Panel finds that Complainant’s registrations of the REGIONS, REGIONSBANK, and REGIONS BANK marks with the USPTO sufficiently demonstrate its rights in these marks under Policy ¶ 4(a)(i).
Complainant next asserts that Respondent’s <regions-banking.com> domain name is confusingly similar to its REGIONSBANK mark, because the disputed domain name incorporates the mark in its entirety while merely adding a hyphen and the suffix “-ing” to the word “bank.” The Panel notes that the <regions-banking.com> domain name also adds the general top-level domain (“gTLD”) “.com.” However, previous panels have held that the addition of a gTLD is irrelevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel also notes that previous panels have determined that a domain name’s addition of a hyphen is similarly irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See, e.g., Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). As to the addition of the suffix “-ing,” the Panel notes that previous panels have determined that a disputed domain name’s addition of a short suffix to a complainant’s mark does not sufficiently distinguish the domain name from the mark. See, e.g. Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). Here, as in Am. Online, Inc., supra, the <regions-banking.com> domain name merely adds a three-character suffix to Complainant’s REGIONSBANK mark. For the foregoing reasons, the Panel holds that the disputed domain name is confusingly similar to Complainant’s REGIONSBANK mark pursuant to 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 contends that it has not authorized Respondent to use its REGIONSBANK or REGIONS BANK marks, and that Respondent is not commonly known by its <regions-banking.com> domain name pursuant to Policy ¶ 4(c)(ii). The Panel notes that in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), a previous panel concluded that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. Here, the Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “AjmalHost,” which tends to show that Respondent is commonly known by this name and not the name of <regions-banking.com>. In addition, the Panel notes that Respondent has not submitted any additional evidence into the record that tends to show it is commonly known as <regions-banking.com>. Accordingly, the Panel determines based on the record that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s use of the <regions-banking.com> domain name is 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), because Respondent is using the disputed domain name to promote hyperlinks to Complainant’s own banking services without authorization, as well as hyperlinks to Complainant’s competitors in the online financial and banking industry. See Complainant’s Hofstatter Exhibit B. The Panel notes that Complainant’s Exhibit B provides a screenshot of the website resolving from the <regions-banking.com> domain name, which displays hyperlinks entitled “Capital One Checking,” “Ally Bank,” and “Arab Bank,” among others. Previous panels have held that the use of a disputed domain name to promote links to third parties in direct competition with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel determines that Respondent uses the disputed domain name to promote hyperlinks to Complainant’s competitors in the online financial and banking industry, and holds that this use is not protected pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant alleges that Respondent’s use of the <regions-banking.com> domain name disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii), because the domain name resolves to a website that promotes hyperlinks to Complainant’s competitors in the online banking industry, thus diverting potential customers away from Complainant to third-party competitors. See Complainant’s Hofstatter Exhibit B (providing a screenshot of the website resolving from the <regions-banking.com> domain name, which displays hyperlinks entitled “Capital One Checking,” “Ally Bank,” and “Arab Bank,” among others). The Panel notes that in H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), a previous panel found that a respondent’s use of the disputed domain names to resolve to websites promoting links to the complainant’s competitors was evidence of the respondent’s bad faith disruption pursuant to Policy ¶ 4(b)(iii). See also Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel determines that Complainant has provided sufficient evidence that Respondent’s use of the <regions-banking.com> domain name is disrupting Complainant’s business by diverting potential customers away from Complainant and to Complainant’s competitors, and holds that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant next alleges that Respondent’s registration and use of the disputed domain name constitutes attraction for commercial gain, which evidences Respondent’s bad faith under Policy ¶ 4(b)(iv). Specifically, Complainant alleges that the <regions-banking.com> domain name takes advantage of Complainant’s well known REGIONSBANK and REGIONS BANK marks to mislead Internet users attempting to locate Complainant’s website, and that Respondent accrues commercial revenue from the hyperlinks promoted on the disputed domain name’s resolving website. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), a previous panel held that the respondent’s use of the disputed domain name to provide links to the complainant’s competitors was evidence of bad faith under Policy ¶ 4(b)(iv), because respondent “presumably commercially benefited from the misleading domain name by receiving ‘click-through fees.’” Here, as in Associated Newspapers Ltd., supra, Complainant provides evidence that the website resolving from the disputed domain name promotes links to entities such as Capital One, Ally Bank, and Arab Bank, among others. See Complainant’s Hofstatter Exhibit B. Accordingly, the Panel infers that Respondent has used the <regions-banking.com> domain name for inappropriate commercial gain in the form of click-through fees, which evidences Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s REGIONSBANK and REGIONS BANK marks, which evidences bad faith under Policy ¶ 4(a)(iii). Complainant argues that Respondent’s actual knowledge of Complainant’s rights in these marks can be inferred because Complainant’s marks are well known, and the fact the website resolving from the disputed domain name promotes links to services that directly compete with Complainant’s own financial and banking services tends to show that Respondent had actual knowledge of Complainant and the services provided under Complainant’s marks. The Panel notes that 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….[which] is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). In Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), the panel held that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name.” The Panel determines that as in Radio & Records, Inc., Complainant’s REGIONSBANK and REGIONS BANK marks are so well known that Respondent’s actual knowledge of these marks can be inferred. The Panel also concludes that as in Pfizer, Inc., the link between the online banking services provided under Complainant’s REGIONSBANK and REGIONS BANK marks and the online banking services promoted by Respondent on the disputed domain name’s resolving websites is so obvious that it allows Respondent’s actual knowledge of the marks to be imputed. An inference by the Panel that Respondent had actual knowledge of Complainant’s marks would constitute additional evidence of Respondent’s bad faith pursuant to 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 <regions-banking.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 11, 2013
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