Regions Asset Company v. PrivacyProtect.org / Domain Admin
Claim Number: FA1203001434152
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regonsbank.com>, registered with RegisterMatrix.
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 March 12, 2012; the National Arbitration Forum received payment on March 12, 2012.
On March 25, 2012, RegisterMatrix confirmed by e-mail to the National Arbitration Forum that the <regonsbank.com> domain name is registered with RegisterMatrix and that Respondent is the current registrant of the name. RegisterMatrix has verified that Respondent is bound by the RegisterMatrix 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 March 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2012 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@regonsbank.com. Also on March 26, 2012, 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 April 20, 2012, 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its REGIONS BANK mark.
2. Respondent’s <regonsbank.com> domain name is confusingly similar to Complaint’s mark.
3. Respondent has no rights to or legitimate interests in the disputed 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 claims rights in the REGIONS BANK mark based on its long standing use of the mark and its trademark registrations with the USPTO (e.g., Reg. No. 1,918,496 registered September 12, 1995). Past panels have determined that a USPTO trademark registration is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). However, the Panel notes that Respondent resides or operates in Australia and not the United States. Nevertheless, prior panels have further held that a trademark registration with one national trademark authority is sufficient and that a complainant is not required to hold a trademark registration within the country where the respondent resides or operates in order to establish rights. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel concludes that Complainant owns rights in the REGIONS BANK mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <regonsbank.com> domain name is confusingly similar to Complainant’s REGIONS BANK mark. Complainant argues that the disputed domain name contains a common misspelling of Complainant’s mark. The Panel notes that the disputed domain name differs from Complainant’s mark by the removal of the letter “I” and the space between terms, as well as the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels maintained that the removal of a letter from a complainant’s mark failed to adequately distinguish the disputed domain name from the mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Moreover, past panels have concluded that the removal of a space and the addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Consequently, the Panel holds that Respondent’s <regonsbank.com> domain name is confusingly similar to Complainant’s mark for the purposes of 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 asserts that Respondent is not commonly known by the <regonsbank.com> domain name. Complainant argues that the WHOIS information, which identifies the registrant of the disputed domain name as “PrivacyProtect.org / Domain Admin,” indicates that Respondent is not commonly known by the disputed domain name. Complainant further claims that Respondent and Complainant have no relationship that would allow Respondent to register a domain name containing Complainant’s REGIONS BANK mark. The Panel notes that Respondent did not respond to this case and did not present any evidence that it is commonly known by the <regonsbank.com> domain name. Prior panels have neglected to find that the respondent is commonly known by a disputed domain name if the WHOIS information does not indicate such a fact and the complainant did not authorize the respondent to use the complainant’s mark. 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). In light of this UDRP precedent, the Panel finds that Respondent is not commonly known by the <regonsbank.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <regonsbank.com> domain name. Complainant contends that Respondent uses the <regonsbank.com> domain name to host advertisement hyperlinks that resolve to Complainant’s competitors in the banking and financial services industries. Complainant alleges that these hyperlink advertisements are entitled “Online Banking,” “Checking Account,” “Home Mortgages,” “Credit Card,” “Internet Banking,” etc. Previous panels have found that the hosting of competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a confusingly similar disputed domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel determines that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <regonsbank.com> domain name.
Complainant argues that Respondent’s registration and use of the <regonsbank.com> domain name demonstrates typosquatting because Respondent uses a common misspelling to take advantage of typing and spelling mistakes made by Internet users. Past panels have determined that the misspelling of a complainant’s mark in an attempt to take advantage of Internet users’ typing or spelling mistakes constitutes typosquatting, which is evidence that the respondent lacks rights and legitimate interests in the disputed domain name. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel determines that Respondent is guilty of typosquatting. The Panel concludes that Respondent does not own rights and legitimate interests in the <regonsbank.com> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has been a respondent in previous UDRP proceedings in which the panels have ordered the transfer of the disputed domain names to the respective respondents. See Gap, Inv. v. PrivacyProtect.org, FA 1332394 (Nat. Arb. Forum Aug. 16, 2010); see also Victoria’s Secret Stores Brand Management, Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum Dec. 17, 2010); see also Target Brands, Inc. v. PrivacyProtect.org, FA 1371798 (Nat. Arb. Forum Mar. 30, 2011); see also Allstate Ins. Co. v. PrivacyProtect.org, FA 1375041 (Nat. Arb. Forum Apr. 1, 2011). Past panels have held that prior UDRP cases involving the respondent may be treated as evidence that the respondent registered and uses the disputed domain name as a part of a pattern of bad faith registration and use. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). Based on the evidence of past UDRP cases involving Respondent, the Panel finds that Respondent registered and uses the <regonsbank.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant avers that Respondent’s registration and use of the <regonsbank.com> domain name disrupts Complainant’s business. Complainant argues that Respondent provides hyperlink advertisements that resolve to Complainant’s competitors in the banking and financial services industries. Prior panels have concluded that a respondent disrupts a complainant’s business by hosting competing hyperlinks, which evidences the respondent’s bad faith registration and use of the disputed domain name. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel determines that Respondent disrupts Complainant’s business. The Panel finds that Respondent registered and uses the <regonsbank.com> domain name under Policy ¶ 4(b)(iii).
Complainant contends that Respondent is guilty of typosquatting. Previous panels have determined that typosquatting is evidence of a respondent’s bad faith registration and use of a disputed domain name. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Tthe Panel previously found that Respondent is guilty of typosquatting, and the Panel concludes that Respondent registered and uses the <regonsbank.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the REGIONS BANK mark when Respondent registered the disputed domain name. Complainant further argues that Respondent had actual knowledge of Complainant’s REGIONS BANK mark because the disputed domain name is so similar to Complainant’s mark and the resolving website advertises Complainant’s competitors. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel does agree with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <regonsbank.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use 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 <regonsbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 7, 2012
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