Bank of the Sierra, a California corporation v. Hulmiho Ukolen / Poste restante
Claim Number: FA1411001589764
Complainant is Bank of the Sierra, a California corporation (“Complainant”), represented by Vonn R. Christenson of Christenson Law Firm, LLP, California, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankoftheseirra.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2014; the National Arbitration Forum received payment on November 12, 2014. The Complaint was submitted in both English and Finnish.
On November 16, 2014, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <bankoftheseirra.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 November 25, 2014, the Forum served the Finnish language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@bankoftheseirra.com. Also on November 25, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant uses BANK OF THE SIERRA to promote its investment and banking services. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,711,134, registered Nov. 17, 2009, filed Sept. 29, 2008).
2. Respondent has no rights or legitimate interests in the <bankoftheseirra.com> domain name. Respondent is not commonly known as the <bankoftheseirra.com> domain name, and Complainant has not otherwise licensed or authorized Respondent’s use of the mark in Internet domain names. The <bankoftheseirra.com> domain name’s website merely suggests hyperlinks to competing banks, and thus is not a bona fide offering of goods or services.
3. Respondent has registered and is using the <bankoftheseirra.com> domain name in bad faith. Respondent is capitalizing on the similarity between the domain name and Complainant’s mark in order to profit from confused Internet users who mistake the two.
4. Respondent had to have actual knowledge of Complainant’s rights prior to registering and using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Finnish, thereby making Finnish the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
1. Complainant is a United States company engaged in the provision of banking and investment services.
2. The BANK OF THE SIERRA mark has been registered by Complainant with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,711,134, registered Nov. 17, 2009, filed Sept. 29, 2008).
3. As well as Complainant’s trademark rights by virtue of the USPTO registration, Complainant has also established common law trademark rights in the BANK OF THE SIERRA mark commencing in 1996.
4. The <bankoftheseirra.com> domain name was registered on September 27, 2005. The website to which the domain name resolves contains hyperlinks to competing banks and other entities offering competing banking and investment services.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the BANK OF THE SIERRA mark to promote its investment and banking services. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,711,134, registered Nov. 17, 2009, filed Sept. 29, 2008).Complainant has used the BANK OF THE SIERRA mark itself continuously since 1996. Complainant first used the domain name <bankofthesierra.com> on April 17, 1996, in connection with its already existing banking services. The Panel finds that the trademark registration dates Complainant’s rights back to 2008 and hence after the date on which the disputed domain name was registered. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). However, the Panel agrees that Complainant’s use of a domain name to host website related to its business since 1996 is suggestive of Policy ¶ 4(a)(i) common law rights through secondary meaning dating back to the 1996 first use. The Panel therefore finds that Complainant has established trademark rights in BANK OF THE SIERRA prior to the registration of the disputed domain name. See Williams v. WhoisGuard Protected, FA 1043246 (Nat. Arb. Forum Sept. 11, 2007) (finding that a complainant had sufficiently established common law rights where the popularity of complainant’s website identical to complainant’s trademark had allowed complainant to generate substantial revenue from advertisements featured on the site).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BANK OF THE SIERRA mark.Complainant argues that the <bankoftheseirra.com> domain name is Complainant’s entire mark and that it has been incorporated into the domain name, with a minor transposition of letters in the word “sierra” and the addition of a gTLD. As such, it is submitted that the domain name is confusingly similar to the mark. The Panel agrees that the mere misspelling of the mark that is memorialized in this domain name makes the domain name confusingly similar to the BANK OF THE SIERRA mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BANK OF THE SIERRA mark and to use it in its domain name and has simply made a minor transposition of letters in the word “sierra”;
(b) Respondent registered the disputed domain name on September 27, 2005;
(c) Respondent registered and used the disputed domain name without the permission or authority of Complainant;
(d) Complainant claims that Respondent is not commonly known by the <bankoftheseirra.com> domain name. The Panel observes that “Hulmiho Ukolen” is listed as the registrant of record for the domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel held that there was no reason to find for the respondent when nothing in the available record substantiated a finding under Policy ¶ 4(c)(ii). Thus, the Panel agrees that Respondent is not known by the <bankoftheseirra.com> domain name under Policy ¶ 4(c)(ii);
(e) Complainant also claims that the <bankoftheseirra.com> domain name’s website contains hyperlinks to competing banks, and thus is not a bona fide offering of goods or services. In the absence of a response in this proceeding the Panel accepts Complainant’s contentions in that regard as true and agrees that use of a domain name for related and competing advertising is not a use protected under either Policy ¶ 4(c)(i), or Policy ¶ 4(c)(iii). Moreover, the Panel has made its own examination of the website to which the disputed domain name resolves and finds that it has many links on it to competing banking and investment services, including one specific link to Bank Sierra which is not a link to Complainant but a link to the providers of goods and services in competition with Complainant or unrelated to Complainant’s business. 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is capitalizing on the similarity between the domain name and Complainant’s mark in order to profit from confused Internet users who mistake the two. As the Panel agrees with this contention, the Panel also agrees there is an attempt to profit from the similarity between the disputed domain name and the mark. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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).”).
Secondly, Complainant claims that Respondent had to have actual knowledge of Complainant’s rights prior to registering and using the disputed domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and retention of the disputed domain name using the BANK OF THE SIERRA mark, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankoftheseirra.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 23, 2014
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