Citizens Financial Group, Inc. v. Paul Taylor
Claim Number: FA1701001714579
Complainant is Citizens Financial Group, Inc. (“Complainant”), represented by Robert M. O'Connell of Fish & Richardson P.C., Massachusetts, USA. Respondent is Paul Taylor (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwcitizensbankonline.com>, registered with Above.com Pty Ltd.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2017; the Forum received payment on January 27, 2017.
On February 2, 2017, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <wwwcitizensbankonline.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2017 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@wwwcitizensbankonline.com. Also on February 3, 2017, 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, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant, Citizens Financial Group, Inc., is a financial service firm, which offers retail and commercial banking products and services to individuals, small businesses, middle-market companies, large corporations and institutions. In connection with this business, Complainant uses the CITIZENS BANK ONLINE mark to render its services. Complainant has rights to the CITIZENS BANK ONLINE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,407,272, registered Nov. 21, 2000). Respondent’s <wwwcitizensbankonline.com> domain name is confusingly similar to Complainant’s CITIZENS BANK ONLINE mark, as the disputed domain name contains the mark in its entirety—less the spaces—and merely adds the letters “www” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <wwwcitizensbankonline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the CITIZENS BANK ONLINE mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name redirects to various websites, including (a) a page that contains a notice that the device accessing the page has been exposed to a virus; (b) search results from the Yahoo! search engine; (c) a page offering services that compete with Complainant; or (d) a page containing pay-per-click links to services that compete with Complainant.
Respondent has registered and used <wwwcitizensbankonline.com> in bad faith. Respondent’s bad faith is evident by the fact that the disputed domain name redirects to at least two different sites which link to competitors of complainant. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the CITIZENS BANK ONLINE mark at the time it registered and subsequently used the disputed domain name. Respondent’s bad faith is further evident through its typosquatting behavior. Finally, Respondent’s failure to make an active use of the disputed domain name and distribution of malware through the disputed domain name are further evidence of its bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <wwwcitizensbankonline.com> domain name.
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 (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 claims rights in the CITIZENS BANK ONLINE mark based upon registration of the mark with the USPTO (Reg. No. 2,407,272, registered Nov. 21, 2000). Registration of a mark with the USPTO is sufficient to establish rights in that mark according to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel therefore holds that Complainant’s registration of the CITIZENS BANK ONLINE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s <wwwcitizensbankonline.com> domain name is confusingly similar to Complainant’s CITIZENS BANK ONLINE mark, as the disputed domain name contains the mark in its entirety—less the spaces—and merely adds the letters “www” and the gTLD “.com.” Omission of spaces from a mark and addition of a gTLD are irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Similarly, addition of the letters “www” to the beginning of a mark in order to from a domain name does not distinguish the domain name for the purposes of a Policy ¶ 4(a)(i) analysis for confusing similarity. See Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016) (concluding that the addition of “www” takes advantage of a common typing error, and does not distinguish the domain name from the mark or overcome a finding of confusingly similar). The Panel therefore finds Respondent’s <wwwcitizensbankonline.com> to be confusingly similar to Complainant’s CITIZENS BANK ONLINE mark pursuant to Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <wwwcitizensbankonline.com> amounts to typosquatting because Respondent failed to include the required period between “www” and “citizensbankonline.” Addition of “www” to the beginning of a complainant’s mark to create a domain name is an example of typosquatting, and can enhance a finding of confusing similarity. See Bank of Am. Corp. v. InterMos, FA 95092 (Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). The Panel agrees that Respondent’s typosquatting behavior is further evidence of the confusing similarity of the disputed domain name per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 (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 (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 <wwwcitizensbankonline.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CITIZENS BANK ONLINE mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Paul Taylor.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in <wwwcitizensbankonline.com> is evinced by its failure to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name redirects to various websites, including (a) a page that contains a notice that the device accessing the page has been exposed to a virus; (b) search results from the Yahoo! search engine; (c) a page offering services that compete with Complainant; or (d) a page containing pay-per-click links to services that compete with Complainant. Use of a disputed domain name to resolve to a website that attempts to download viruses or malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Additionally, use of a disputed domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent’s lack of rights or legitimate interests is evident from its failure to make an active use of <wwwcitizensbankonline.com>. Inactive holding of a disputed domain name can be evidence of a respondent’s lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Complainant contends that the disputed domain name is “parked” and that Respondent’s behavior does not amount to an active use of the disputed domain name. The Panel agrees and finds Respondent to be lacking rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant contends that Respondent’s use of <wwwcitizensbankonline.com> to redirect Internet users to a website featuring links to Complainant’s competitors is evidence of its bad faith registration and use of the disputed domain name. Such use can be evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The disputed domain name resolves to a variety of websites, some of which host links to competitors of Complainant. The Panel therefore finds Respondent to have acted in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also contends, in the alternative, that Respondent’s bad faith is evinced by its failure to make an active use of the disputed domain name. Failure to make use of a domain can be evidence of bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel recalls Complainant’s argument that Respondent’s use of the disputed domain name to redirect to various webpages does not amount to an active use. The Panel agrees and finds Respondent to have registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant asserts that its trademark registrations for the CITIZENS BANK and CITIZENS BANK ONLINE mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has at least constructive knowledge of Complainant's rights in the mark. 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 and the nature of the disputed domain name’s construction, 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 Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”).
Finally, Complainant argues that Respondent’s typosquatting behavior is in itself evidence of Respondent’s bad faith registration and use of <wwwcitizensbankonline.com>. Addition of a “www” prefix to a famous mark evinces actual knowledge of a trademark holder’s rights, as well as bad faith typosquatting per Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Complainant argues that the addition of the letters “www” to the beginning of Complainant’s mark in order to form the disputed domain name constitutes typosquatting. The Panel agrees and find Respondent to have acted in bad faith per Policy ¶ 4(a)(i) in registering and using the disputed domain name.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwcitizensbankonline.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 14, 2017
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