Simple Finance Technology Corp v. CDN Properties Incorporated CDN Properties Incorporated
Claim Number: FA1408001575811
Complainant is Simple Finance Technology Corp (“Complainant”), represented by Scott P. Ceresia of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is CDN Properties Incorporated CDN Properties Incorporated (“Respondent”), represented by Roberto Manno of WEBLEGAL, Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simplebank.com>, registered with Internet.bs Corp.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2014; the National Arbitration Forum received payment on August 19, 2014.
On August 26, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <simplebank.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 August 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 2014 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@simplebank.com. Also on August 26, 2014, 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.
A timely Response was received and determined to be complete on September 12, 2014.
On September 17, 2014 Complainant submitted an Additional Submission that was in compliance with Supplement Rule # 7.
On September 22, 2014 Respondent submitted an Additional Submission that was in compliance with Supplement Rule # 7.
On September 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the SIMPLE mark in furtherance of an online banking company providing consumers with a suite of all-electronic banking services. Complainant does not own any trademark registrations for the SIMPLE mark, but has amassed common law rights. Complainant was incorporated in Delaware in November 2009 under the name “Simple Finance Technology Corp.” Complainant launched its online banking platform in January 2010 using the domain name <banksimple.com>. Complainant has been the subject of significant press reviews and media coverage. Complainant has enjoyed significant growth since its inception. In 2013, the company had 20,000 customers and had processed more than $200 million in transactions. At the date of this Complaint, Complainant has gained well over 120,000 customers and is on track to process over $2 billion in transactions in 2014. Complainant has spent considerable time and resources in promoting the SIMPLE mark. The <simplebank.com> domain name is confusingly similar to the SIMPLE mark as the added term “bank” has an obvious relation to Complainant.
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS record. Further, Respondent is using the disputed domain name with a parked website that promotes links relating to banking services. These sponsored links offer banking and financial services that compete with Complainant. Respondent likely generates click-through fees from the linked pages.
Respondent’s current bad faith is evidenced by a history of cybersquatting. In addition, Respondent is in violation of Policy ¶ 4(b)(iii) as the disputed domain name resolves to a website promoting links to third-party businesses that compete with Complainant. Respondent’s use of the disputed domain name in connection with click-through fees is a further indication of bad faith under Policy ¶ 4(b)(iv). Finally, Respondent was aware of Complainant’s SIMPLE mark when it chose to register the disputed domain name based on the notoriety and reputation of the mark.
Respondent must have acquired or registered the disputed domain name at some point between May 19 and August 7, 2012.
B. Respondent
Complainant has not attained the requisite rights in the SIMPLE mark. Complainant has been turned away by trademark agencies, and has provided insufficient evidence to establish common law rights.
Respondent participates in the trading of generic and descriptive domain names, which is a legitimate business as demonstrated by UDRP jurisprudence.
Respondent’s use of the disputed domain name to generate links directed as services or websites related to the domain name’s description is legitimate.
Respondent acquired the <simplebank.com> domain name in 2003, prior to Complainant’s incorporation in 2009, for the descriptive and generic terms of the name. The <simplebank.com> domain name was registered May 22, 2003 by Michele Dinoia, who is the settler/trustee of the CDN Properties Incorporated, the actual registrant of record.
Respondent alleges Reverse Domain Name Hijacking.
C. Complainant’s Additional Submission
In its Additional Submission Complainant basically repeats its allegations in that Complainant has established common trademark rights in his name SIMPLE. Further that the Domain Name at issue, “simplebank.com”, is identical to Complainant’s common law trademark and that Respondent has no rights or legitimate interests in the Domain Name. Finally, that Respondent registered the Domain Name and is now using the Domain Name in bad faith.
Complainant admits, that the domain name at dispute was registered the first time in 2003. However, Complainant denies Respondent’s allegations, that there is an “unbroken chain of ownership” between it and the prior registrant, Michele Dinonia/SZK.com. Respondent has concocted a wholly novel theory claiming that it is entitled to “tack on” use of the Disputed Domain Name dating back to its creation date in 2003 despite the fact that the domain name was owned by a different registrant. Complainant contends, that this theory is supported by neither documentary evidence nor legal precedent, and must be rejected.
D. Respondent’s Additional Submission
Also Respondent repeats its allegations, especially on the lack of valid UDRP prior rights on the SIMPLE common law mark. Regarding the unbroken chain of ownership Respondent submits further documents.
The Panel finds that:
1. The domain name <simplebank.com> is confusingly similar to Complainant’s registered trademark.
2. The Respondent has not established rights or legitimate interests in the domain name <simplebank.com>.
3. The Respondent has registered and is using the domain name <simplebank.com> 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.
The Panel agrees that even though Complainant does not provide evidence of a registration for the SIMPLE mark with a national trademark registrar, such evidence is not necessary if it can show clear secondary meaning in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i))
In order to proceed with common law rights, the complainant is required to show secondary meaning in the mark at issue. In AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009), the panel explained, “‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’” In considering whether a mark has achieved secondary meaning, prior panels have looked to sales figures, the nature and extent of advertising, and customer and media recognition. See, e.g., Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). In arguing that its SIMPLE mark has acquired the requisite secondary meaning to justify this proceeding, Complainant recites its business efforts with emphasize on such factors espoused in Gourmet Depot. To start, Complainant provides that it uses the SIMPLE mark in furtherance of an online banking company providing consumers with a suite of all-electronic banking services. Complainant was incorporated in Delaware in November 2009 under the name “Simple Finance Technology Corp.” Complainant explains that it launched its online banking platform in January 2010 using the domain name <banksimple.com>. Complainant emphasizes that it has been the subject of significant press reviews and media coverage. Further, Complainant claims significant growth since its inception. Specifically, in 2013, the company had 20,000 customers and had processed more than $200 million in transactions. At the date of this Complaint, Complainant has gained well over 120,000 customers and is on track to process over $2 billion in transactions in 2014. Complainant further notes it has spent considerable time and resources in promoting the SIMPLE mark. Considering this evidence, the Panel agrees that the SIMPLE mark has garnered secondary meaning. Therefore the Panels finds Complainant has demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant claims the <simplebank.com> domain name is confusingly similar to the SIMPLE mark as the added term “bank” has an obvious relation to Complainant. The Panel agrees that the additions of a descriptive term and a generic top-level domain are insufficient to distinguish the <simplebank.com> domain name from the incorporated SIMPLE mark, and therefore find Policy ¶ 4(a)(i) confusing similarity. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS record. The Panel observes that the WHOIS record identifies “CDN Properties Incorporated CDN Properties Incorporated” as registrant of the domain name. As Respondent fails to contest that it is not commonly known by the <simplebank.com> domain name, the Panel agrees that Complainant has satisfied its Policy ¶ 4(c)(ii) burden. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Further, Complainant argues that Respondent is using the disputed domain name in connection with a parked website that promotes links relating to banking services. Complainant contends these sponsored links offer banking and financial services that compete with Complainant, and Respondent likely generates click-through fees from the linked pages. Complainant directs the Panel to see that the resolving page promotes links to competitors such as PNC, Chase, and HSBC. Prior panels have concluded that the promoting of competing links is not a use protected under Policy ¶ 4(c)(i) and (iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Accordingly, the Panel agrees that Respondent has not operated the <simplebank.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues Respondent’s current bad faith is evidenced by a history of cybersquatting. Complainant directs the Panel to three previous UDRP decisions adverse to Respondent: Possis Medical, Inc. v. CDN Properties Incorporated, FA 964416 (Nat. Arb. Forum June 5, 2007); Guitar Center, Inc. v. CDN Properties Incorporated, FA 1510604 (Nat. Arb. Forum September 3, 2013); Yahoo! Inc. v. CDN Properties Incorporated, FA 1560952 (Nat. Arb. Forum July 7, 2014). As prior panels have considered prior findings of bad faith, the Panel here also agrees that Respondent has shown the requisite pattern of bad faith to warrant a finding under Policy ¶ 4(b)(ii). 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).
In addition, Complainant argues that Respondent is in violation of Policy ¶ 4(b)(iii) as the disputed domain name resolves to a website promoting links to third-party businesses that compete with Complainant. The Panel recalls the domain name resolves to a page listing hyperlinks to competing banks such as PNC, Chase, and HSBC. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel wrote, “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” This Panel agrees that Respondent’s competing hyperlinks evince Policy ¶ 4(b)(iii) bad faith.
Complainant next argues that Respondent’s use of the disputed domain name in connection with click-through fees tied to competing hyperlinks is a further indication of bad faith under Policy ¶ 4(b)(iv). Prior panels have agreed that the use of competing links to generate click-through fees may evince bad faith. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Since the present Panel agrees that Respondent has attempted to confuse users as to Complainant’s affiliation with the resolving page in an effort to generate profit via click-through competing links, the Panel finds evidence of Respondent’s bad faith use and registration.
Finally, Complainant argues that Respondent was aware of Complainant’s SIMPLE mark when it chose to register the disputed domain name based on the notoriety and reputation of the mark. In so arguing, Complainant asserts Respondent must have acquired or registered the disputed domain name at some point between May 19 and August 7, 2012. See Compl. at Attached Ex. 14. Prior panels used actual knowledge as evidence of Policy ¶ 4(a)(iii) in the past. For example, in Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012), the panel wrote, “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”
According to the Registrar’s Verification the domain name at dispute was created on May 21, 2003. Complainant has submitted clear and comprehensible evidence, that the <simplebank.com> domain name was originally registered by Michele Dinoia/SZK.com based in Pineto, Italy. Furthermore Complainant could demonstrate that the disputed domain name was registered to Michele Dinoia for approximately nine years from May 2003 through the summer of 2012. These allegations were not contested by Respondent. According to the presented documents there is no doubt for the Panel that the actual Respondent, CDN Properties Incorporated, based in Panama City, must have acquired or registered the disputed domain name at some point between May 19 and August 7, 2012. However, Respondent claims to have acquired the disputed domain name in 2003, which is prior to Complainant’s incorporation in 2009. Respondent contends that Michele Dinoia, was not a “party” who sold the domain to another undertaking, but rather is the settlor/trustee of CDN Properties Incorporated, the actual registrant. According to Respondent the change of the registrant from Michele Dinoia to CDN Properties Incorporated was not a substantial change of ownership, but rather a formal change in registration data.
The Panel is aware that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate. However, the Panel is not convinced that the evidence presented by the Respondent is appropriate to clearly establish an unbroken chain of ownership. As support for this claim Respondent submits only the first page of a General Power of Attorney purporting to empower Mr. Dinoia to act as a trustee for the benefit of the Respondent. The Panel finds that this partial document is not proof enough for the alleged unbroken chain of ownership.
For the Panel it is not really logical to declare that CDN Properties is the “actual
registrant” when Annex 5 states that CDN Properties was not even incorporated as a company until September 2006, more than 3 years after Mr. Dinoia first registered the Disputed Domain Name in May 2003. Furthermore the Panel finds that Respondent has failed to submit any documentation evidencing
the identity of the trust allegedly established for CDN Properties’ benefit; the nature of the assets allegedly included within that trust; whether such assets
included the Disputed Domain Name; and whether, assuming the Disputed Domain Namewas included within the assets, such assets were actually transferred into CDN Properties’ possession. Nor has Respondent submitted any of the telltale documents one would expect to support this claim, such as a trust agreement or written assignment from the trust to CDN Properties. The complete absence of such evidence is highly suspicious. The only reasonable
inference to be drawn is that it simply does not exist. The Panel therefore rejects
Respondent’s unsupported claims of an unbroken chain of ownership. See, e.g., Del Monte Corporation v. David Crum packer, D2000-0498 (WIPO Aug. 21, 2000) (“The Panel can only conclude from this absence of documented proof that Mr. Crum packer’s claims of purported plans to conduct a fruit sales business on the Internet under the ORCHARD SELECT name or WWW.ORCHARDSELECT.COM domain name are not credible”); ARM
Industries, Inc. d/b/a Halco Lighting Technologies v. CFM Holdings Limited (on behalf of Just Raw Pte Ltd), D2011-1094 (WIPO Sept. 6, 2011) (“Although the Response states that ‘Just Raw Pte Ltd was appointed by the Respondent to register the Domain Name on behalf of the Respondent,’ this statement is unsupported by any evidence or documentation in the Response and, therefore, should be disregarded by the Panel as an insufficient conclusory statement
unsupported by evidence”). See also Paragraph 3.7 of WIPO 2.0 (acquisition deemed a new registration unless “evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate”) (emphasis added). The subsequently with Respondent’s Additional Submission presented documents, a Beneficial Ownership Declaration, dated September 18, 2014 and an extract of the Public Register of the Republic of Panama, are not sufficient to dispel the Panel’s doubts about Respondent’s allegations regarding the unbroken chain of ownership.
Since the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel is of the view that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <simplebank.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: September 30, 2014
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