OneWest Bank N.A. v. David Pope
Claim Number: FA1412001593014
Complainant is OneWest Bank N.A. (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is David Pope (“Respondent”), Bulgaria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onewestcharteredbank.com>, registered with Name.com, Inc.
The undersigned certifies that he acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2014; the National Arbitration Forum received payment on December 2, 2014.
On December 3, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <onewestcharteredbank.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 December 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2014 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@onewestcharteredbank.com. Also on December 9, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the ONEWEST BANK mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,735,172, registered Jan. 5, 2010). Complainant uses the ONEWEST BANK mark to identify its banking and financing services. The <onewestcharteredbank.com> domain name is confusingly similar to the ONEWEST BANK mark as the added term “chartered” references the same banking and financial services that Complainant offers, and the presence of a gTLD is not distinctive.
Respondent has no rights in the disputed domain name. Respondent is not authorized to use the mark, and there is no indication in the record that Respondent is commonly known by the <onewestcharteredbank.com> name. Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of a phishing website. The resolving website is nearly identical to Complainant’s own website as it includes Complainant’s logos, mark, and distinctive trade dress. The subject website also includes a “Login” tab inviting users to enter personal financial and identifying information. This use of the disputed domain name cannot constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use. Respondent’s bad faith is demonstrated by its efforts to pass itself off as Complainant in an attempt to procure sensitive information from Complainant’s customers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, OneWest Bank N.A., has registered the ONEWEST BANK mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,735,172, registered Jan. 5, 2010). Complainant uses the ONEWEST BANK mark to identify its banking and financing services.
Respondent, David Pope, registered the <onewestcharteredbank.com> name on August 8, 2014. Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of a phishing website. The resolving website is nearly identical to Complainant’s own website as it includes Complainant’s logos, mark, and distinctive trade dress. The subject website also includes a “Login” tab inviting users to enter personal financial and identifying information.
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(e), 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.”).
Complainant uses the ONEWEST BANK mark to identify its banking and financing services. Complainant owns rights in the ONEWEST BANK mark under Policy ¶ 4(a)(i) as the mark is registered with the USPTO. 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.”).
Respondent’s <onewestcharteredbank.com> domain name is confusingly similar to the ONEWEST BANK mark under Policy ¶ 4(a)(i). The added term “chartered” references the same banking and financial services that Complainant offers thereby heightening confusion, and the presence of a gTLD is not distinctive. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The disputed domain name differs from the mark at issue by the omission of the space between the two-word mark, but that such alteration is irrelevant to the analysis given the impossibility of replicating spaces in domain names. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent has no rights in the disputed domain name. Respondent is not authorized to use Complainant’s mark. The WHOIS information identifies “David Pope” as the registrant. Respondent is not commonly known by the <onewestcharteredbank.com> name under Policy ¶ 4(a)(i). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain name to pass itself off as Complainant. Respondent’s resolving website is nearly identical to Complainant’s website as it includes Complainant’s logos, mark, and distinctive trade dress. Respondent’s use of the disputed domain name and resolving website to imitate Complainant’s website and offerings demonstrates that Respondent has made no bona fide offering of goods or services through the disputed domain name, nor any legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Respondent is using the disputed domain name in furtherance of a phishing website. The subject website mirrors Complainant’s own website and also includes a “Login” tab inviting users to enter personal financial and identifying information. The Panel finds that Respondent’s phishing for 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 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 Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (maintaining that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Respondent’s bad faith is shown by its efforts to pass itself off as Complainant in an attempt to procure sensitive information from Complainant’s customers. See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” See also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (maintaining that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onewestcharteredbank.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 13, 2015
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