URS FINAL DETERMINATION


Yadkin Bank et al. v. Eli's Software Encyclopedia et al.
Claim Number: FA1505001618236


DOMAIN NAME

<yadkin.financial>
 <yadkin.loans>
 <yadkin.mortgage>


PARTIES


   Complainant: Yadkin Bank Johnathan Buck of Greensboro, NC, United States of America
  
Complainant Representative: Cyveillance of Reston, VA, United States of America

   Respondent: Eli's Software Encyclopedia Eli Tomlinson of Clarks Summit, PA, United States of America
  

REGISTRIES and REGISTRARS


   Registries: Just Cover, LLC,June Woods, LLC,MORTGAGE Registry
   Registrars: Godaddy LLC,GoDaddy.com, LLC

EXAMINER


   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 Examiner in this proceeding.
   Antonina Pakharenko-Anderson, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: May 7, 2015
   Commencement: May 8, 2015
   Response Date: May 22, 2015
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION



   Findings of Fact: Under URS 9.1. the evidences will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire records used by the Examiner to make a Determination. URS 8.2. reads that the burden of proof shall be clear and convincing evidences. Under URS 8.6. if the Examiner finds that all three standards provided for by URS 8.1. are satisfied by clear and convincing evidences and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favour of the Complainant. The Complainant holds the valid trademark registration for the YADKIN (U.S. trademark reg. no. 4444997 covering banking and financial services) and the brand is in use. The disputed domain names redirect to http://Eli.domains, a site that features domains, grouped by name, for sale by Eli Tomlinson. The Complainant asserts that the Respondent was on constructive notice of the Complainant’s registered trademark when registering these domains. Thus, the Complainant contends that that the Respondent has registered and used the disputed domain names in bad faith by acquiring the names primarily for the purpose of capitalizing on the goodwill of the Yadkin Bank mark, that is intensified by intentional purchase of industry relevant tlds including ".financial,” “.loans,” & “.mortgage”. Thus, the Complainant asserts that the Respondent used these domains to garner more attention for his website selling domains, http://Eli.domains that also infers bad faith motivation at registration. The Complainant also asserts that the Respondent intended to profit off of the purchase of these domains. Prior to submission of the response as to the substance, Respondent sent an e-mail wherein Respondent suggested the terms for the amicable resolution and suggested selling all the disputed domain names to the Complainant for the amount of $313.02. The records of the case do not indicate that the Complainant agreed on a settlement. Further, in its response the Respondent does not contest that the Complainant has valid trademark rights in the YADKIN name and does not show that he has any rights or legitimate interests in domain names. Still, the Respondent contends that he has not done anything that could be construed to capitalize on the goodwill of the Complainant’s trademark and contends that he has not engaged in any activity that would confuse the public as to the source, sponsorship, affiliation, or endorsement of his website.

  

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The registered domain names <yadkin.financial>, <yadkin.loans>, <yadkin.mortgage> fully incorporate the word mark YADKIN for which the Complainant holds a valid national registration and that is in current use. TLDs “.financial”, “.loans” and “.mortgage” are descriptive for the services in respect of which the Complainant’s mark is used. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity. Thus “.financial”, “.loans” and “.mortgage” is of no consequence here. Respectively, the Examiner finds that the domain names <yadkin.financial>, <yadkin.loans>, <yadkin.mortgage> are identical to the Complainant’s YADKIN mark under URS 1.2.6.1. (i).


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The domain names are neither generic nor descriptive. No evidence has been presented that before notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the domain names in issue in connection with any type of bona fide offering of goods or services. Rather the Complainant submitted evidences that the Respondent was using the domain names to redirect Internet users to the Respondent’s own web site at "http://Eli.domains" where no mention was made of the domain names in issue or a name corresponding to the domain names in issue. Furthermore, such evidence does not support a finding of legitimate noncommercial or fair use of the domain name nor has any evidence been presented to suggest otherwise. Nor has any evidence been presented that the Respondent is commonly known by the domain names in issue. The Examiner therefore concludes that the Respondent has no rights or legitimate interests in the domain names under URS 1.2.6.2.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


The Examiner finds that the Respondent had actual knowledge of the Complainant’s mark YADKIN and its rights therein at the time the Respondent registered the domain names in issue. This finding is based on the facts that the Respondent does not contest that the Complainant has valid trademark rights in the YADKIN name and that all the domain names comprise the YADKIN mark and are registered in TLDs which are descriptive of services of the Complainant’s registration for the mark YADKIN. To support its assertion of bad faith by the Respondent, the Complainant has submitted evidence of the Respondent using the domain names in issue to redirect Internet users to the Respondent’s own commercial Web site at "http://Eli.domains". A review of the site also shows that no mention was made of the domain name in issue or a name corresponding to the domain name in issue on this site. Such use accordingly suggests an attempt by the Respondent to profit from the Internet traffic from Internet users seeking the Complainant’s Web site by the incorporation of the YADKIN mark in the domain names in issue. The fact that the disputed domains were registered in TLDs “.financial”, “.loans” and “.mortgage” which are descriptive for the services in respect of which the Complainant’s mark is used also contributes to the finding of bad faith. The Respondent is using the confusion in the minds of consumers over the use of the YADKIN mark to divert users to the own external website at which his services are promoted, that cannot support the finding of the good faith. Thus, the Examiner finds the domain names <yadkin.financial>, <yadkin.loans>, <yadkin.mortgage> which are used to deceive Internet users into viewing the external website of a non-related operator to be misleading that supports finding of bad faith registration under URS 1.2.6.3.(d).


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. yadkin.financial
  2. yadkin.loans
  3. yadkin.mortgage

 


Antonina Pakharenko-Anderson
Examiner
Dated: May 25, 2015

 

 

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