Umpqua Bank v. Host Master / Transure Enterprise Ltd
Claim Number: FA1903001836375
Complainant is Umpqua Bank (“Complainant”), represented by Bill Barber, Oregon, USA. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <upmquabank.com>, registered with Above.com Pty Ltd.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2019; the Forum received payment on March 28, 2019.
On March 31, 2019, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <upmquabank.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 April 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2019 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@upmquabank.com. Also on April 4, 2019, 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 April 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
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.”
Respondent failed to submit a Response to the Complaint filed in these administrative proceedings. Accordingly, the Panel is permitted to decide the matter based on Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules. The Panel may also draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Nonetheless, in order to obtain an order that a domain name should be cancelled or transferred, paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements on the balance of probabilities, namely, that:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
The Panel makes the preliminary observation that Complainant’s submissions are poorly drafted and omit critical information. The Panel has struggled through the Complaint where other panelists may have refused it summarily under paragraph 4(a)(i) and/or paragraph 4(a)(iii) of the Policy, above, for reasons which emerge in the following discussion.
When required to nominate the trademark or service mark information on which the Complaint is premised, Complainant states that its claim “is based on the domain name of UPMQUABANK.COM.” This appears to be a mistaken reference to the disputed domain name. Later, Complainant states that it provides banking and other financial services and “was formed in 1953 and has used the domain name UMPQUABANK.COM since July 31st, 2000.”
Complainant then states that
“the domain name at issue is remarkably similar and intentionally confusing to
a trade mark or service mark in which the Complainant has rights.” However,
there is no identification of the relevant trademark or service mark in which
rights are claimed. There is no evidence of a Federal or State trademark registration,
but the Complaint includes “supporting information” being four annexures
described as “Annex 1 – Proof of Existence; Annex 2 – Domain Name Registration;
Annex 3 – Yahoo Finance Excerpt
and Annex 4 – Umpqua Bank Webpage Excerpt”.
Complainant goes on to state that it:
“suspects and asserts that Respondent registered the domain name UPMQUABANK.COM in attempt (sic) to trick users into thinking they are dealing with Umpqua Bank and to persuade users that it is okay to share their private information with Respondent.
…
Respondent does not have a legitimate interest nor any rights to use Umpqua Bank’s domain name. As mentioned, Respondent is attempting to deceive the general public, including customers and consumers of Umpqua Bank, so that such individuals think they are dealing with Umpqua Bank and should send non-public personal information to Respondent.”
Seemingly in support of those allegations the submissions then refer to “attached Annex 5 and the following: ‘Upmquabank Typosquatting Website.png’”. The Panel notes here that Annex 5 to the Complaint is bibliographic WhoIS information pertaining to the registration of the disputed domain name and that there is nothing in Annex 5 or elsewhere identified as “Upmquabank Typosquatting Website.png”.
Complainant further submits that:
“Respondent registered the domain name ‘upmquabank.com’ in bad faith and such registration was clearly done to trick innocent customers and consumers into sharing their personal information with a malicious third party. Also, Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s name 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.”
The factual findings pertinent to the decision in this case are that:
1. Complainant is a Portland, Oregon, headquartered business which provides banking and financial services to people in the states of Oregon, Washington, California, Nevada, and Idaho;
2. Complainant provides those services by reference to the name UMPQUA BANK; and
3. the disputed domain name was registered on May 4, 2009.
The Panel now turns to consideration of paragraph 4(a) of the Policy.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[i] There is no evidence that Complainant holds a national trademark registration. However, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Accordingly, to satisfy paragraph 4(a)(i) Complainant must prove that it has rights in an unregistered or so-called common law trademark which is either identical or confusingly similar to the disputed domain name.[ii]
Common law trademark rights may be established through use and public recognition of a term or sign such that it has come to acquire secondary meaning.[iii] The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview”)[iv], asks at paragraph 1.3: “What does a complainant need to show to successfully assert unregistered or common law trademark rights? ” The consensus viewpoint of panelists includes the following statement:
“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
Here, Complainant makes no specific assertion of unregistered or common law trademark rights but refers to use of its domain name and other establishment documents. None of this information contains the usual factual indicia of acquired distinctiveness. Having regard to that part of the WIPO Overview outlined above, there is insufficient proof of unregistered trademark rights of any kind and the Complaint might be refused at this point.
At its highest, the supporting information accompanying the Complaint shows that Complaint is an Oregon state-chartered bank founded in 1953 which originally traded under a different name but which since 2000 has owned a domain name, <umpquabank.com>, which now resolves to Complainant’s official website where it is claimed that Complainant operates several hundred branches of its bank across a number of states. The information shows use of a logo mark composed of the words “UMPQUA BANK” together with a stylised fur tree device.
Having regard once more to the WIPO Overview, the Panel notes that the word “Umpqua” refers to an indigenous people of present-day Oregon and is a word which might be used by any number of Oregon businesses in their trading styles. To that extent it lacks inherent distinctiveness to identify one business. That said, the Panel’s own limited research shows there to be only one “Umpqua Bank” and it might be reasonably inferred that the regulatory framework would only permit that. Further, albeit that it is not known when Complainant changed its name, it is reasonable to infer that this most likely contemporaneous with registration of the domain name <umpquabank.com> in 2000. Further, it is a reasonable inference that since that time Complainant has been known as “Umpqua Bank” and the Panel treats this as the relevant trademark for the purposes of the Policy. There is nothing which might suggest that use of that trademark has not been continuous. Furthermore, there is no reason for the Panel to question the website information about the present scope of Complainant’s business.
On balance and absent challenge from Respondent the Panel finds that there is just enough to show common law trademark rights in the term UMPQUA BANK.
With that finding, it follows on quickly that the disputed domain name is confusingly similar to the trademark. Once again, Complainant makes no specific contentions, but it can be observed that the domain name merely transposes the letters “m” and “p” within the mark and adds the “.com” generic top-level domain (“gTLD”). The addition and alteration are trivial and do not avoid a finding of confusing similarity.[v]
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are established.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating that it has those rights or interests.[vi]
The publicly available WHOIS information identifies the domain name holder as “Host Master / Transure Enterprise Ltd” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights.
As noted above, Complainant asserts that Respondent registered the domain name in order to deceive Internet users into thinking they are dealing with Complainant. There is no evidence at all with the Complaint as to how the disputed domain name has been used and the claim about deceptive intention is described by Complainant as its “suspicion”. The Panel notes that the domain name has been registered for almost a decade and so it must assume that this suspicion has not been realized to date. Nevertheless, absent a Response, a reasonable inference (if it can be drawn) of a likely phishing scheme can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. That inference might be drawn here since the domain name includes the word “bank” without explanation.[vii] That said, a more direct approach can be achieved by visiting the disputed domain name, as the Panel has done, to discover that it resolves to a landing page with numerous links to goods and services having no connection with Complainant’s business under the trademark. Countless decisions under this Policy have held that such use is not a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds that a prima facie case exists that Respondent lacks rights or a legitimate interest in the disputed domain name and that in the absence of a Response the onus which then fell to Respondent to show rights or legitimate interest has not been discharged. The second element of the Policy is accordingly satisfied.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith. Further guidance is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
Complainant’s submissions are that (a) Respondent registered the domain name in bad faith with the intention to trick innocent customers and consumers into sharing their personal information with a malicious third party, and (b) Respondent’s actions fall under paragraph 4(b)(iv) above. On the evidence the Panel cannot find any reliable indication of Respondent’s intentions ten years ago when the domain name was registered, malicious or otherwise. Nonetheless, the Panel’s own research shows that the current use of the domain name is not in good faith and so there is a reasonable argument for the application of paragraph 4(b)(iv) of the Policy. The Panel has found the domain name to be confusingly similar to the trademark. The resolving website (as it now exists) is most likely for commercial gain in some form or another, probably by way of referral fees. In terms of the Policy, the Panel finds it more likely than not that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the resolving website by creating a likelihood of confusion with the Complainant’s trademark as to the source of that website.
The Panel finds registration and use in bad faith and so the final element of the Policy has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <upmquabank.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: April 28, 2019
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”
[iii] See, for example, Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) holding that complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”; Copper Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC, FA 1604460 (Forum Apr. 4, 2015) finding complainant failed to establish secondary meaning where no evidence was provided with respect to sales under the mark and money spent promoting the mark; CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) finding complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”
[iv] See http://www.wipo.int/amc/en/domains/search/overview3.0
[v] See, for example, RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) finding confusing similarity where respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name; see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
[vi] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vii] See, for example, Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018).
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