Regions Bank v. luis ruiz
Claim Number: FA1805001786410
Complainant is Regions Bank (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, District of Columbia, USA. Respondent is luis ruiz (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionstoken.com>, registered with GoDaddy.com, LLC.
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 May 14, 2018; the Forum received payment on May 14, 2018.
On May 14, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <regionstoken.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2018 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@regionstoken.com. Also on May 16, 2018, 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 June 6, 2018, 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, Regions Bank, is a banking subsidiary of Regions Financial Corporation, and operates approximately 1,500 banking offices and 1,900 ATMs across the South, Midwest, and Texas. Complainant has rights in the REGIONS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,881,600, registered Feb. 28, 1995). Respondent’s <regionstoken.com> domain name is confusingly similar to Complainant’s REGIONS mark as it incorporates the mark in its entirety and is differentiated only by the addition of the generic term “token” and the “.com” generic top-level domain name (“gTLD”).
Respondent has no rights or legitimate interests in the <regionstoken.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the REGIONS mark in any manner. 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 domain name resolves to an inactive page.
Respondent registered and is using the <regionstoken.com> domain name in bad faith. Respondent disrupts Complainant’s business and intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Based on an email Respondent sent Complainant, Respondent creates this confusion to use the domain name in furtherance of the development of a token for goods or services related to Complainant’s banking services. Further, Respondent had actual and/or constructive knowledge of Complainant’s rights in the REGIONS mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <regionstoken.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 REGIONS mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,881,600, registered Feb. 28, 1995). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum Jul. 28, 2017) (finding that registration with the USPTO was sufficient to establish the Complainant’s rights in the HOME DEPOT mark). The Panel finds that Complainant’s registration of the REGIONS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <regionstoken.com> domain name is confusingly similar to Complainant’s REGIONS mark because it incorporates the mark in its entirety and is differentiated only by the addition of the generic term “token” and the “.com” gTLD. These changes to the mark are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel finds the <regionstoken.com> domain name is confusingly similar to the REGIONS mark 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <regionstoken.com> domain name, as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <regionstoken.com> domain name lists the registrant as “luis ruiz,” and no information on the record indicates that Respondent owns any trademark or service mark rights in the REGIONS name. The Panel finds that Respondent has not been commonly known by the <regionstoken.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent’s lack of rights or legitimate interests in the <regionstoken.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the domain name resolves to an inactive page. The inactive holding of a domain name does not indicate rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (“Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant provides screenshots of the inactive page that contains a note that website is coming soon and to check back soon to see if the site is available. Based on Complainant’s uncontested allegations and evidence, the Panel finds that Respondent does not have rights or legitimate interests in the respect of the <regionstoken.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant contends that Respondent’s bad faith is indicated by its use of the <regionstoken.com> domain name to offer goods or services related to Complainant’s banking services. Complainant claims this use disrupts Complainant’s business and creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Use of a domain name that disrupts a complainant’s business to offer goods or services related to a complainant’s business can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iii). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). Complainant provides copies of correspondence between Complainant and Respondent in which Respondent acknowledges it is using the disputed domain in furtherance of the development of a token related to Complainant’s banking services. The Panel finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s REGIONS mark and Complainant’s rights because Respondent acknowledges its intent to use the domain name in connection with the development of a token related to Complainant’s banking services. The Panel will disregard Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel finds that Respondent had actual knowledge of Complainant’s mark and registered and used the <regionstoken.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).")."
Complainant has proved this element.
DECISION
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 <regionstoken.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 15, 2018
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