Regions Bank v. Above.com Domain Privacy
Claim Number: FA1501001600146
Complainant is Regions Bank (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, District of Columbia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionsw.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 15, 2015; the National Arbitration Forum received payment January 16, 2015.
On January 19, 2015, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <regionsw.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. verified that Respondent is bound by the ABOVE.COM PTY LTD. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2015, 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@regionsw.com. Also on January 20, 2015, 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 February 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant uses the REGIONS mark to promote its banking and financial services business. The REGIONS mark is duly registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,881,600, registered Feb. 28, 1995). The <regionsw.com> domain name takes the entire REGIONS mark and adds a single letter “w” and the gTLD “.com.”
Respondent has no right to or legitimate interests in the <regionsw.com> domain name. The <regionsw.com> domain name is not a name by which Respondent was ever commonly known. Further, the <regionsw.com> domain name resolves to a website that promotes competing and related advertising hyperlinks that are not bona fide offerings of goods or services. See Compl., at Attached Decl. Of Hofstatter, Ex. B–C.
Respondent registered and is using the <regionsw.com> domain name in bad faith. Respondent seeks to capitalize from a likelihood of confusion among Internet users as to the source and/or origin of the <regionsw.com> domain name. Respondent had to have had full knowledge of Complainant’s rights in the REGIONS mark prior to registering and using the domain name given the use made of it.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the <regionsw.com> domain name February 29, 2008, some 13 years after Complainant established legal rights in the mark through registration.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Complainant has rights to and legitimate interests in the domain name that
contained its protected mark in its entirety.
Respondent has no such rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 Complainant to 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 such 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar:
Complainant uses the REGIONS mark to promote its banking and financial services business. The REGIONS mark is duly registered with the USPTO (e.g., Reg. No. 1,881,600, registered Feb. 28, 1995). This Panel agrees that USPTO registration is evidence of Policy ¶ 4(a)(i) trademark rights. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims that the <regionsw.com> domain name takes the entire REGIONS mark and adds a single letter “w” and the gTLD “.com.” This Panel agrees that merely adding a random letter to a trademark and the necessary gTLD does nothing more than create a confusingly similar domain name within the meaning of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel Finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 the <regionsw.com> domain name is not a name by which Respondent has ever been commonly known. The Panel agrees that as Respondent is using a privacy service relative to its identity, and Respondent has otherwise failed to submit a response to these allegations, no basis exists to find for Respondent under Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant also argues that the <regionsw.com> domain name resolves to a website that promotes competing and related advertising hyperlinks that are not bona fide offerings of goods or services. See Compl., at Attached Decl. Of Hofstatter, Ex. B–C. This Panel agrees again that the evidence suggests that Respondent is using the domain name to promote bank-related advertising to third-party websites. See id. As such, the Panel finds that Respondent’s use of the domain name falls outside the protections allotted under Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Complainant has rights and interests in the mark contained in its entirety within the disputed domain name and that Respondent has no such rights or legitimate interests in the Complainant’s protected mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant believes that Respondent seeks to capitalize from a likelihood of confusion among Internet users as to the source and/or origin of the <regionsw.com> domain name. The Panel again looks to Exhibits 2 and 3 to the Hofstatter Declaration to note that the domain name is used for advertising of competing goods. The Panel agrees that given the confusing similarity of the domain name, it is apparent that Respondent is seeking to profit from a likelihood of confusion between the REGIONS mark and the advertising available on the domain name’s website. See, e.g., 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).”).
Complainant claims that Respondent had to have had full knowledge of Complainant’s rights in the REGIONS mark prior to registering and using the domain name. While panels have concluded that constructive notice is not sufficient to support bad faith findings, the Panel here finds that, due to the fame of Complainant's mark and Respondent’s use of the mark and domain name, Respondent had actual knowledge of the mark and Complainant's rights in it. Thus, the Panel finds 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").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <regionsw.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 23, 2015
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