Signature Bank v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2104001940678
Complainant is Signature Bank (“Complainant”), represented by Paddy Tam of CSC Digital Brand Services AB, Sweden. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <signautreny.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2021; the Forum received payment on April 8, 2021.
On April 8, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <signautreny.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 April 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 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@signautreny.com. Also on April 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 May 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, founded in 2001, is one of the top 40 largest banks in the United States. Complainant has rights in the SIGNATURE BANK mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,132,120, registered April 24, 2012).
2. Respondent’s <signautreny.com>[i] domain name is confusingly similar to Complainant’s SIGNATURE BANK mark as it incorporates a purposeful misspelling of the dominant portion of Complainant’s SIGNATURE BANK trademark and adds the generic, geographic designation “ny.”
3. Respondent lacks rights or legitimate interests in the <signautreny.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or permitted Respondent to register or use Complainant’s SIGNATURE BANK mark.
4. Respondent further lacks rights or legitimate interests in the domain name because Respondent offers it for sale and uses it in connection with a rotating series of webpages.
5. Respondent registered and uses the <signautreny.com> domain name in bad faith. First, Respondent offers the domain name for sale.
6. Second, Respondent has a history of bad faith registration.
7. Third, Respondent engaged in typosquatting.
8. Fourth, Respondent registered the domain name using a privacy shield and failed to respond to Complainant’s cease and desist letter.
9. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the SIGNATURE BANK mark prior to registering the <signautreny.com> domain name, evidenced by the famous nature of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SIGNATURE BANK mark. Respondent’s domain name is confusingly similar to Complainant’s SIGNATURE BANK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <signautreny.com> domain name and that Respondent registered and uses the domain name in bad faith.
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”).
Complainant has rights in the SIGNATURE BANK mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 4,132,120, registered April 24, 2012). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel holds that Complainant has rights in the SIGNATURE BANK mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <signautreny.com> domain name is confusingly similar to Complainant’s SIGNATURE BANK mark as it incorporates a purposeful misspelling of the dominant portion of Complainant’s SIGNATURE BANK trademark and adds the generic, geographic designation “ny.” Adding a geographic term and a gTLD to the misspelled, dominant portion of a mark fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD); see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”); see additionally Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).”). Accordingly, the <signautreny.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <signautreny.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <signautreny.com> domain name as Respondent is commonly known by the domain name, nor has Complainant authorized or permitted Respondent to register or use Complainant’s SIGNATURE BANK mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the <signautreny.com> domain name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico.” Complainant correctly points out there is no evidence in the record to suggest that Respondent was authorized to use the SIGNATURE BANK mark. Therefore, the Panel holds that Respondent is not commonly known by the <signautreny.com> domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent further lacks rights or legitimate interests in the <signautreny.com> domain name because Respondent offers it for sale and uses it in connection with a rotating series of webpages. Offering a domain name incorporating the mark of another for sale or using it in connection with a rotating series of webpages is further evidence that a respondent lacks rights or legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”); see also MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”). Complainant provides screenshots showing the <signautreny.com> domain name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain. Complainant also provides screenshots showing the <signautreny.com> domain name’s resolving website occasionally redirects internet users to third party websites such as the registrar’s parking page, online retailer shops, or Google search engine — each time a user types in the URL a different website will be displayed. Therefore, the Panel finds Respondent lacks rights and legitimate interests in the <signautreny.com> domain name per Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <signautreny.com> domain name in bad faith as Respondent offers the domain name for sale. Offering a domain name for sale can demonstrate bad faith per Policy ¶ 4(b)(i) where it incorporates the mark of another. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Complainant provides a screenshot showing the <signautreny.com> domain name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain. Therefore, the Panel holds that Respondent registered and uses the <signautreny.com> domain name in bad faith per Policy ¶ 4(b)(i).
Complainant also contends Respondent registered and uses the <signautreny.com> domain name in bad faith as Respondent has a history of bad faith registration. A respondent’s prior adverse UDRP decisions can demonstrate bad faith per Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”). The record shows that Respondent has received adverse rulings in the following UDRP proceedings: For Your Ease Only, Inc. v Carolina Rodrigues / Fundacion Comercio Electronico, FA1302001483711 (Jul 14, 2019); Webster Financial Corporation and Webster Bank, National Association v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1806001792378 (Jul 25, 2018); Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1808001801365 (Sep 06, 2018); Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO D2020-0018, (Feb 24, 2020); Discover Financial Services v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO D2020-3107 (Jan 01, 2021). Therefore, the Panel holds that Respondent registered and uses the <signautreny.com> domain name in bad faith per Policy ¶ 4(b)(ii).
Complainant also contends Respondent registered the <signautreny.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the SIGNATURE BANK mark prior to registration of the domain name based on the famous nature of the mark. Actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith per Policy ¶ 4(a)(iii) and can be demonstrated by the fame of the mark. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 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).”). Complainant argues that Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business because Respondent registered a domain name that incorporates a misspelling of the dominant portion of Complainant’s SIGNATURE BANK and adds the related, geographical descriptor “ny.” Complainant also argues Complainant’s mark is well-known because Complainant appeared on Forbes' Best Banks in America list for the ninth consecutive year in 2019. The Panel agrees that Respondent registered the <signautreny.com> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <signautreny.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 20, 2021
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