Investors Bancorp, Inc. v. kelvin bryan / Kome Jade
Claim Number: FA2103001935500
Complainant is Investors Bancorp, Inc. (“Complainant”), represented by Vanessa A. Ignacio, Esq. of Lowenstein Sandler PC, New Jersey, USA. Respondent is kelvin bryan / Kome Jade (“Respondent”), Liechtenstein.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <midwestinvestorsbank.com> and <accessinvestorsbank.com>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2021; the Forum received payment on March 4, 2021.
On March 8, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <midwestinvestorsbank.com> and <accessinvestorsbank.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2021 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@midwestinvestorsbank.com, postmaster@accessinvestorsbank.com. Also on March 12, 2021, 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 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant alleges that the nominal parties controlling the at-issue domain names are effectively controlled by the same person and/or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The WHOIS information for the at-issue domain names indicates similar registrant information for the nominal registrants. The at-issue domain names were each registered using the registrar NameCheap, Inc. within eight days of each other, use the same privacy service, and have the same contact address. Although it is possible that the underlying registrants may or may not differ nominally, they clearly appear to be related to or controlled by the same person, persons, or entity. Significantly, Complainant’s request that the domain name registrants should be treated as a single entity is unopposed. Therefore in light of all the foregoing, the Panel grants Complainant’s request and shall treat the domain names’ registrants as a single entity for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant is New Jersey-chartered commercial bank with over 150 branches across the states of New Jersey, New York, and Pennsylvania and serving customers since 1926.
Complainant has rights in the INVESTORS BANK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <midwestinvestorsbank.com> and <accessinvestorsbank.com> domain names are confusingly similar to Complainant’s INVESTORS BANK mark as incorporate the entirety of the INVESTORS BANK Mark, merely adding “Midwest,” “Access,” and the Top-Level Domain (“TLD”) “.com”.
Respondent lacks rights or legitimate interests in the <midwestinvestorsbank.com> and <accessinvestorsbank.com> domain names. Respondent is not commonly known by “INVESTORS BANK” and Respondent has been granted no license or other rights to use the INVESTORS BANK Mark as part of any domain or for any other purpose. Respondent fails to use the at-issue domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the <accessinvestorsbank.com> domain name to pass itself off as or related to Complainant to “phish” for customers’ financial information. Additionally, Complainant’s information technology department had <midwestinvestorsbank.com> taken down.
Respondent registered and uses the <midwestinvestorsbank.com> and <accessinvestorsbank.com> domain names in bad faith. Respondent registered confusingly similar domain names. Additionally, Respondent registered the at-issue domain names with actual and constructive knowledge of Complainant’s rights in the INVESTORS BANK mark, evidenced by Respondent using the domain names to defraud Complainant’s customers through a phishing scheme. Finally, Respondent is engaged in a phishing scheme and registered the domain names using a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the INVESTORS BANK mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the INVESTORS BANK trademark.
Respondent uses the at-issue domain names to pose as Complainant in furtherance of a phishing scheme.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the INVESTORS BANK mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Additionally, Respondent’s <midwestinvestorsbank.com> and <accessinvestorsbank.com> domain names consists of Complainant’s INVESTORS BANK trademark less its space, prefix by the generic terms “midwest” or “access” with all followed by the top-level “.com.” Under the Policy the differences between Respondent’s domain name and Complainant’s trademark do nothing to distinguish the domain name from Complainant’s mark. Therefore, the Panel concludes that Respondent’s <midwestinvestorsbank.com> and <accessinvestorsbank.com> domain names are each confusingly similar to Complainant’s INVESTORS BANK trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at-issue domain name.
The WHOIS information for <midwestinvestorsbank.com> and <accessinvestorsbank.com> indicates that “kelvin bryan,” and “kome jade” are the domain names’ nominal registrants. The Panel has found that these registrants may be treated as if a single entity and are collectively referred to as Respondent herein. There is nothing in the record before the Panel that indicates that Respondent, or either of the nominal domain name registrants, is otherwise known by either of the <midwestinvestorsbank.com> or <accessinvestorsbank.com> domain names. Given the foregoing, the Panel finds that Respondent is not commonly known by either at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent used the <accessinvestorsbank.com> at-issue domain name to pass itself off as Complainant in connection with a phishing scheme. Such use of the domain name is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also, Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Likewise, Respondent’s <midwestinvestorsbank.com> has been taken down and is thus held passively and as such is also not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of either at-issue domain name.
Respondent’s <midwestinvestorsbank.com> and <accessinvestorsbank.com> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith regarding each domain name pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above with regard to rights and legitimate interests, Respondent uses the <accessinvestorsbank.com> domain name to facilitate a phishing scheme and now holds the <midwestinvestorsbank.com> domain name passively. Respondent’s <accessinvestorsbank.com> website is dressed with content to make it look like it represents a legitimate bank, when the website actually exists to collect private financial information from internet users. Respondent’s use of each domain name shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Moreover, Respondent registered the <midwestinvestorsbank.com> and <accessinvestorsbank.com> domain names knowing that Complainant had trademark rights in INVESTORS BANK. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from the registration of multiple domain names containing Complainant’s mark, and from Respondent’s use of the <accessinvestorsbank.com> to phish for financial information. Therefore, the Panel finds that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark shows that Respondent registered and used its <midwestinvestorsbank.com> and <accessinvestorsbank.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under 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 <midwestinvestorsbank.com> and <accessinvestorsbank.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 8, 2021
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