BofI Federal Bank v. Thomas Panuzio / Global Security Capital Group
Claim Number: FA1710001756286
Complainant is BofI Federal Bank (“Complainant”), represented by David M. Kramer of DLA Piper LLP, Washington DC, USA. Respondent is Thomas Panuzio / Global Security Capital Group (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bofiequipmentfinance.com>, registered with TierraNet Inc. d/b/a DomainDiscover.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 30, 2017; the Forum received payment on October 30, 2017.
On October 31, 2017, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the Forum that the <bofiequipmentfinance.com> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 November 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@bofiequipmentfinance.com. Also on November 1, 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 November 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a diversified financial services company with approximately $8 billion in assets, and that provides innovative banking and lending products and services to personal and business banking customers throughout the United States under its family of BOFI marks. Complainant registered the BOFI mark in 2013. It filed its application for the BOFI EQUIPMENT FINANCE mark on April 5, 2016; the mark was registered on March 7, 2017. Both marks are registered in the United States.
Complainant alleges that the disputed domain name is identical to Complainant’s BOFI EQUIPMENT FINANCE mark as it contains the mark in its entirety and simply appends the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is a former employee of Complainant, and Respondent is not commonly known by the disputed domain name. During Respondent’s employment by Complainant, Complainant did not license, authorize, or otherwise permit Respondent to apply for any domain name incorporating the BOFI marks, either on behalf of the company, or for its own benefit. The mere fact that Respondent was formerly an employee of Complainant does not give rise to any right or legitimate interest in the domain name. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to a website offering services competitive with Complainant’s services. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s legitimate business by using the domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s BOFI marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location, or of a product or service on Respondent’s website or location. Respondent creates this confusion to redirect users to a competitor’s website, <acfinance.com>. Further, the fact that the Respondent registered the domain name while Respondent was still employed by Complainant, and then immediately set up to redirect users to Respondent’s competing business after Respondent’s departure from Complainant, is compelling evidence of bad faith registration of the domain name. Additionally, the timing of Respondent’s registration of the domain name while still an employee of Complainant and about two months after Complainant began using the BOFI EQUIPMENT FINANCE mark in commerce supports a finding of opportunistic bad faith. Finally, Respondent had actual knowledge of Complainant’s business as Respondent was a former employee of Complainant and the domain name resolves to a website offering competing financial services. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks BOFI and BOFI EQUIPMENT FINANCE and uses them to market banking, lending, and financial services.
Complainant’s rights in its BOFI and BOFI EQUIPMENT FINANCE marks date back to, respectively, 2013 and April 5, 2016.
The disputed domain name was registered on June 8, 2016.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name resolves to a web site that offers services that compete with those of Complainant. Respondent was an employee of Complainant and was aware of Complainant’s marks.
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.”).
The disputed domain name is identical to Complainant’s mark as it contains the BOFI EQUIPMENT FINANCE mark in its entirety and simply appends the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The relevant date for the mark is the filing date, see Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful); see also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel therefore finds that the disputed domain name is identical to the BOFI EQUIPMENT FINANCE mark under Policy ¶4(a)(i).
Further, the disputed domain name is confusingly similar to Complainant’s BOFI mark, as it incorporates the mark in its entirety and merely adds the descriptive term “equipment finance”. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”).
Complainant has not authorized respondent to register a domain name containing its mark. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Thomas Panuzio / Global Security Capital Group” as the registrant. There is no evidence in the file to show that Respondent has ever been legitimately known by the BOFI or BOFI EQUIPMENT FINANCE marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Further, Respondent was a former employee of Complainant and registered the disputed domain name while employed by Complainant. A respondent, whether currently or formerly employed by a complainant, may not register a domain name using a complainant’s mark without prior authorization by a complainant. See Dominic Vetere v. DAVE CARRIER / DC FINANCE INC, FA 1707259 (Forum Jan. 24, 2017)(holding that “former employees of a company no longer hold any rights or legitimate interests in the company’s mark”); see also Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Forum Mar. 14, 2006) (holding that the respondent, the Chief Financial Officer of the complainant, was not authorized or licensed to register or use domain names that incorporate Complainant’s mark and therefore did not have rights or legitimate interests in the domain name containing the complainant’s mark). Thus the Panel finds that Respondent lacked rights and legitimate interests to register the disputed domain name.
Further, Respondent uses the disputed domain name to redirect users to a website offering services in direct competition with Complainant. Using an identical or confusingly similar domain name to redirect users to a website offering competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent uses the domain name for competing purposes, and thus fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii), of the domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already mentioned, Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Specifically, the disputed domain name redirects users to a site called <acfinance.com> that offers competing financial services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (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).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Respondent registered the domain name while Respondent was still employed by Complainant, and then immediately set it up to redirect users to Respondent’s competing business after Respondent’s departure from Complainant. A former employee who registers an identical or confusing similar domain name reflecting the complainant’s marks can allow for a finding of bad faith. See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) ("Respondent's registration of the company name of his former employer as a domain name is an act of bad faith."). Thus the Panel also concludes that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii).
Further, the timing of Respondent’s registration of the domain name while still an employee of Complainant and about two months after Complainant began using the BOFI EQUIPMENT FINANCE mark in commerce supports a finding of opportunistic bad faith. Opportunistic bad faith can be used to support a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Accordingly, the Panel finds that Complainant has properly supported its opportunistic bad faith argument, and is finds that this evidence supports a finding of bad faith by Respondent.
Lastly, Respondent had actual knowledge of Complainant’s BOFI and BOFI EQUIPMENT FINANCE marks: Respondent was a former employee of Complainant and the domain name resolves to a website offering competing financial services. Actual knowledge of Complainant's rights in a mark prior to registering an identical or confusingly similar domain name can support a finding of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Consequently, the Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under 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 <bofiequipmentfinance.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 27, 2017
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