Two River Community Bank v. Pham Dinh Nhut
Claim Number: FA1502001605278
Complainant is Two River Community Bank (“Complainant”), represented by Robert E. Linkin, New Jersey, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tworivercommunitybank.com>, registered with April Sea Information Technology Company Limited.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2015; the Forum received payment on March 11, 2015. The Complaint was received in both Vietnamese and English.
On March 16, 2015, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <tworivercommunitybank.com> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 17, 2015, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of April 6, 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@tworivercommunitybank.com. Also on March 17, 2015, the Vietnamese language 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
(i) Complainant owns the TWO RIVER COMMUNITY BaNK mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,162,757, first used in commerce Oct. 28, 2000, filed June 11, 2009, registered June 26, 2012). Complainant offers banking services and uses the TWO RIVER COMMUNITY BaNK mark to promote its goods and services. The <tworivercommunitybank.com> domain name is identical to the TWO RIVER COMMUNITY BaNK mark. The domain name contains Complainant’s mark in full and attaches the generic top-level (“gTLD”) domain “.com” to the domain name.
(ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to divert consumers and tarnish Complainant’s mark.
(iii) Respondent has engaged in bad faith registration and use of the <tworivercommunitybank.com> domain name. Respondent registered the disputed domain for the purpose of selling, renting or transferring the disputed domain name to Complainant. Further, Respondent has registered the disputed domain name for the purpose of preventing Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct.
B. Respondent
Respondent did not submit a response. The Panel notes that this <tworivercommunitybank.com> domain name was registered October 5, 2005.
Complainant established that it had rights in the mark contained in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s TWO RIVER COMMUNITY BaNK mark.
Respondent did not register and use the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings in Vietnamese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 the TWO RIVER COMMUNITY BaNK mark through registration with the USPTO (Reg. No. 4,162,757, first used in commerce Oct. 28, 2000, filed June 11, 2009, registered June 26, 2012). Complainant states that it offers banking services and uses the TWO RIVER COMMUNITY BaNK mark to promote its goods and services. Prior panels have concluded that the relevant date for determining rights in a registered mark is the date of filing. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel therefore determines that Complainant has established rights in the TWO RIVER COMMUNITY BaNK mark under Policy 4(a)(i), dating back to June 11, 2009.
Complainant contends that the <tworivercommunitybank.com> domain name is identical to the TWO RIVER COMMUNITY BaNK mark. The disputed domain name contains Complainant’s mark in full and attaches the gTLD “.com” to the domain name. Previous panels have found that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant.). Therefore, the Panel finds that the <tworivercommunitybank.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
As the Panel finds Complainant failed to satisfy Policy ¶ 4(a)(iii) (Registration and Use in Bad Faith), the Panel declines to analyze Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
The Panel notes that Respondent’s October 5, 2005 registration of the disputed domain name predates Complainant’s earliest USPTO filing. Complainant makes no contentions with regards to its recognition by consumers and/or media outlets which might predate Respondent’s October 5, 2005 registration of the disputed domain name. As the Panel fails to find Complainant holds any common law rights in the mark that predate Respondent’s registration of the disputed domain name, the Panel finds that Respondent could not have registered in bad faith according to Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark). The fact that Complainant’s trademark post-dates Respondent’s registration of the disputed domain name by more than three (3) years precludes a finding of bad faith registration. See LML Investments LLC v. P.A. Gordon, FA 1571756 (Nat. Arb. Forum Sept., 2014) (“Respondent could not have registered the domain name to target Complainant’s mark as Complainant did not register the Country Girl mark for 7 years after Respondent registered the disputed domain name. As such, the Panel finds no evidence of bad faith under Policy ¶ 4(a)(i).”).
Complainant claims that Respondent registered the disputed domain for the purpose of selling, renting or transferring the disputed domain name to Complainant. The Panel notes that Complainant has provided no evidence to support this allegation, and has made no showing that Respondent has made either a general or direct offer to sell the disputed domain name. As such, the Panel cannot accept the Complainant’s allegations in this regard.
Further, Complainant alleges that Respondent has registered the disputed domain name for the purpose of preventing Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct. The Panel notes that there is only one disputed domain name in the instant case and Complainant has provided no findings that Respondent has prior UDRP proceedings that resulted in findings of bad faith and transfer, as required under Policy ¶ 4(b)(ii). Given the circumstances, the Panel cannot accept the Complainant’s allegations.
Therefore, the Panel determines that Complainant failed to establish Respondent’s registration and use of the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <tworivercommunitybank.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: April 25, 2015
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