WebBank v. Jamal Car / Friske Group / Domain Admin / Whois Privacy Corp.
Claim Number: FA1602001659601
Complainant is WebBank (“Complainant”), represented by Brent T. Winder of Jones Waldo Holbrook & McDonough, PC, Utah, United States. Respondent is Jamal Car / Friske Group / Domain Admin / Whois Privacy Corp. (“Respondent”), British Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cashloanwebbank.com> and <cashloanwebbankcompany.com>, registered with GoDaddy.com, LLC and Internet Domain Service BS Corp, respectively.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2016; the Forum received payment on February 4, 2016.
On February 4, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cashloanwebbank.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 8, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <cashloanwebbankcompany.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On February 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2016 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@cashloanwebbank.com and postmaster@cashloanwebbankcompany.com. Also on February 10, 2016, 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 March 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant has rights in the WEBBANK mark in connection with its banking and financial services. Complainant has registered the WEBBANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,235,984, registered November 6, 2012), which demonstrates Complainant’s rights in its mark. The Panel’s attention is directed to Attached Annex A for a copy of Complainant’s USPTO registration. The <cashloanwebbank.com> and <cashloanwebbankcompany.com> domains are confusingly similar to Complainant’s mark as they incorporate Complainant’s mark in its entirety and merely add the descriptive terms “cash,” “loan,” and “company,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain names to phish for Internet users’ personal information, and to offer services that compete directly with Complainant’s business. The Panel is directed to Attached Annexes B and C for screenshots of the webpages that resolve from Complainant’s <cashloanwebbank.com> and <cashloanwebbankcompany.com> domains.
3. Respondent has registered and is using the disputed domain names in bad faith. First, Respondent’s use of the domains to offer services that compete directly with Complainant’s business violates Policy ¶ 4(b)(iii). Second, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by offering services that compete directly with Complainant. Third, Respondent uses the domains in an attempt to phish for Internet users’ personal information. Finally, Respondent registered the domains with actual knowledge of Complainant’s mark.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <cashloanwebbank.com> and <cashloanwebbankcompany.com> domain names are confusingly similar to Complainant’s WEBBANK mark.
2. Respondent does not have any rights or legitimate interests in the cashloanwebbank.com> and <cashloanwebbankcompany.com> domain names.
3. Respondent registered or used the <cashloanwebbank.com> and <cashloanwebbankcompany.com> domain names 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.
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(f), 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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant argues that the domains identify different registrants, but are believed to be commonly owned. In so arguing, Complainant notes that the websites that resolve from both domains purport to be online cash loan businesses, and that the website for <cashloanwebbankcompany.com> refers to itself repeatedly as <cashloanwebbank.com>. The record contains a printout of the webpage that resolves from the <cashloanwebbankcompany.com> domain.
The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Complainant has rights in the WEBBANK mark in connection with its banking and financial services. Complainant has registered the WEBBANK mark with the USPTO (Reg. No. 4,235,984, registered November 6, 2012). See Compl., at Attached Annex A. Complainant argues that its trademark registration demonstrates Complainant’s rights in its mark. The Panel finds that a trademark registration with the USPTO suffices to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), respecting the geographic disparity of the parties. 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.”). As such, the Panel finds that Complainant has demonstrated its rights in the WEBBANK mark pursuant to Policy ¶ 4(a)(i).
The <cashloanwebbank.com> and <cashloanwebbankcompany.com> domains are confusingly similar to Complainant’s mark as they incorporate Complainant’s mark in its entirety and merely add the descriptive terms “cash,” “loan,” and “company,” and the gTLD “.com.” Previous panels have held that the addition of a descriptive term to a complainant’s mark does not serve to adequately distinguish a domain from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Previous panels have also found that the affixation of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Therefore, the Panel finds that Respondent’s domains are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Jamal Car / Friske Group / Domain Admin / Whois Privacy Corp.” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses its disputed domain names to phish for Internet users’ personal information, and to offer services that compete directly with Complainant’s business. Previous panels have decided that neither a respondent’s use of a domain to phish for Internet users’ personal information nor a respondent’s use of a domain to offer products and/or services that directly compete with a complainant’s business constitutes 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). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant argues that Respondent’s use of the domains to offer services that compete directly with Complainant’s business violates Policy ¶ 4(b)(iii). Past panels have found evidence of bad faith registration and use where a respondent uses a domain to sell products and/or services that are in direct competition with a complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). As such, the Panel finds that Respondent registered and is using the disputed domains in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by offering services that compete directly with Complainant. Previous panels have determined that a respondent’s use of a domain to sell products and services that compete directly with a complainant’s business constitutes bad faith registration and use per Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). For this reason, the Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(b)(iv).
Complainant alleges that Respondent uses the domains in an attempt to phish for Internet users’ personal information. Previous panels have agreed that a respondent’s attempt, through a domain, to acquire Internet users’ personal information is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). Accordingly, the Panel decides that Respondent registered and is using the domains in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the domains with actual knowledge of Complainant’s mark. In making its argument, Complainant relies on the fame and continued use of its mark. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See 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). Accordingly, the Panel accepts Complainant’s argument, and it finds that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cashloanwebbank.com> and <cashloanwebbankcompany.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 17, 2016
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