Orient Bank Limited v. Brian Yu / iContents
Claim Number: FA1504001616735
Complainant is Orient Bank Limited (“Complainant”), represented by Apio Jamina of SHONUBI MUSOKE & CO ADVOCATES, Uganda. Respondent is Brian Yu / iContents (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orientbank.com>, registered with TUCOWS, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2015; the Forum received payment on April 28, 2015.
On April 28, 2015, TUCOWS, INC. confirmed by e-mail to the Forum that the <orientbank.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 April 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 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@orientbank.com. Also on April 30, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a financial institution providing financial and banking services within and outside Uganda.
Complainant holds registrations for the ORIENT BANK trademark, on file with the Registrar of Trademarks of the Republic of Uganda, including Registry No. 23853, registered February 27, 2001.
Complainant also has common law rights in the ORIENT BANK mark based on commercial use of the mark dating from October 25, 1990.
Respondent registered the <orientbank.com> domain name on February 7, 2000.
Respondent’s <orientbank.com> domain name is identical to Complainant’s ORIENT BANK mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the ORIENT BANK mark.
Respondent has failed to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead Respondent holds the domain name for sale on its resolving website.
Respondent acquired the disputed domain name for the purpose of selling it.
The website resolving from the domain name displays, among other things, misleading statements relating to Complainant’s banking services, board of directors, job vacancies and recruitment.
Respondent does not have any right to or legitimate interests in respect of the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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:
i. the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name was registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules the Panel may decide this proceeding on the basis of Complainant's undisputed representations 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 out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the ORIENT BANK trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with the national trademark authority of Uganda. See, for example, Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a UDRP complainant had established rights to the MILLER TIME mark through its national trademark registration).
Because Respondent’s registration of the <orientbank.com> domain name precedes the registration of Complainant’s ORIENT BANK mark, Complainant also asserts rights in its mark under the common law dating from a time prior to the domain name’s registration. Respondent does not deny that Complainant has such common law rights. Therefore Complainant has rights in its mark sufficient for purposes of Policy ¶ 4(a)(i) notwithstanding the timing of Respondent’s domain name registration vis-à-vis that of Complainant’s trademark registration. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can establish common law rights in its mark).
This is true without regard to whether Complainant has acquired rights in its mark in a jurisdiction (here Uganda) other than that in which Respondent resides or does business (here South Korea). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that rights in a mark be acquired in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <orientbank.com> domain name is substantively identical, and therefore confusingly similar, to Complainant’s ORIENT BANK trademark. The domain name contains the entirety of the mark and is differentiated only by deletion of the space between the terms of the mark and the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity or confusing similarity under the standards of the Policy. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding the domain name <termquote.com> identical to a UDRP complainant’s TERMQUOTE mark).
See also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of the spaces between the terms of a mark of a UDRP complainant to form a domain name does not establish distinctiveness from the mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <orientbank.com> domain name, and that Complainant has not authorized Respondent to use its ORIENT BANK mark. Moreover, the pertinent WHOIS information identifies its registrant only as “Brian Yu,” which does resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, showing that a respondent was commonly known by that domain name, and where a UDRP complainant asserted that it did not license or otherwise authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <orientbank.com> domain name to host a website which displays misleading statements relating to Complainant’s banking services, board of directors, job openings and recruitment. This employment of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial use so as to suggest that Respondent has rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i) or 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s attempts to pass itself off as a UDRP complainant online via an unauthorized use of that complainant’s mark in a domain name was evidence that that respondent had no rights to or legitimate interests in the domain name).
In these circumstances, we likewise conclude that Respondent’s attempt to sell the disputed domain name is further proof that Respondent has no legitimate interests in it. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that a UDRP respondent’s effort to sell a contested domain name suggested that it has no legitimate use for it).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
In the circumstances here obtaining, Respondent’s attempt to sell the disputed <orientbank.com> domain name stands as evidence of Respondent’s bad faith in its registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).
We are also persuaded by the evidence that Respondent’s use of the domain name to disseminate misleading statements relating to Complainant’s banking services, board of directors, job openings and recruitment disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this too is proof of Respondent’s bad faith in the registration and use of the domain name. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding bad faith where, given the content of the website resolving from a contested domain name, a respondent likely registered the domain name with the intent to disrupt a UDRP complainant's business and create confusion among Internet users).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <orientbank.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 4, 2015
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