BB&T Corporation v. Jinsoo Yoon
Claim Number: FA0604000672157
Complainant is BB&T Corporation (“Complainant”), represented by Lisa McDougald of BB&T Corporation, PO Box 1255, Winston-Salem, NC, 27102-1255. Respondent is Jinsoo Yoon (“Respondent”), 999-999, KyungJudong, KyungJuSi, Kyungsangbukdo 405759, KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bbandtbank.com>, registered with Cydentity, Inc. d/b/a Cypack.Com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 5, 2006; the National Arbitration Forum received a hard copy of the Complaint April 10, 2006. The Complaint was submitted in both Korean and English.
On April 7, 2006, Cydentity, Inc. d/b/a Cypack.Com confirmed by e-mail to the National Arbitration Forum that the <bbandtbank.com> domain name is registered with Cydentity, Inc. d/b/a Cypack.Com and that Respondent is the current registrant of the name. Cydentity, Inc. d/b/a Cypack.Com verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.Com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 19, 2006, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 9, 2006, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bbandtbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <bbandtbank.com>, is confusingly similar to Complainant’s BB&T mark.
2. Respondent has no rights to or legitimate interests in the <bbandtbank.com> domain name.
3. Respondent registered and used the <bbandtbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BB&T Corporation, is a banking and financial institution incorporated in North Carolina. Complainant owns valid trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BB&T mark. Complainant first registered the BB&T mark with the USPTO on February 11, 1986 (Reg. No. 1,382,662). Complainant has been using the BB&T mark in connection with its banking and financial services business, and also holds domain name registrations for the <bbandt.com> and <bbt.com> domain names, through which Complainant markets its products and services under the BB&T mark.
Respondent registered the <bbandtbank.com> domain name November 9, 2005. Respondent’s disputed domain name resolves to a website that provides links to third-party websites of financial services providers that compete with Complainant.
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."
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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant’s federal trademark registration of the BB&T mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also VICORP Restaurants, Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Furthermore, the Panel finds that the disputed domain name that Respondent registered, <bbandtbank.com>, is confusingly similar to Complainant’s BB&T mark. Respondent’s disputed domain name is comprised of Complainant’s mark with the replacement of the ampersand with the word “and,” and the addition of the term “bank” and the generic top-level domain “.com.” Consequently, the Panel finds that Respondent’s <bbandtbank.com> domain name is confusingly similar to Complainant’s BB&T mark. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain name. Complainant initially bears the burden also of demonstrating that Respondent lacks any rights or legitimate interests in the disputed domain name. Once Complainant demonstrates a prima facie case, the burden of proof shifts to Respondent to demonstrate that it has rights or legitimate interests with respect to the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant made a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The evidence does not suggest that Respondent is commonly known by the <bbandtbank.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use Complainant’s BB&T mark, and the WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <bbandtbank.com> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore, the evidence on record suggests that Respondent
is using the <bbandtbank.com> domain name to divert Internet users
to third-party websites offering financial services in competition with
Complainant’s banking and financial services business. Thus, Respondent’s use of the disputed
domain name does not constitute either 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). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko
Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003)
(“Diverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent registered and is using the <bbandtbank.com>
domain name in connection with a website providing links to a variety of third-party
websites, some of which offer financial services in direct competition with
Complainant. In light of Complainant’s
financial services business and the confusing similarity between the disputed
domain name and Complainant’s BB&T mark, Internet consumers could easily
confuse Respondent’s website with a website operated by or affiliated with
Complainant. As a result, the evidence
on record permits the inference that Respondent has intentionally attempted to
attract, for commercial gain, Internet users to its website, evidencing bad
faith registration and use by Respondent pursuant to 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); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
Additionally, Respondent’s use of Complainant’s BB&T
mark in the <bbandtbank.com> domain name to provide links to
parties offering services in competition with Complainant demonstrates
Respondent’s intent to disrupt Complainant’s business. The Panel finds that such use is evidence of
bad faith registration and use under Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's website.
It is a reasonable inference that Respondent's purpose of registration and use
was to either disrupt or create confusion for Complainant's business in bad
faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
The Panel finds that Complainant satisfied 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 <bbandtbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 24, 2006
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