Regions Bank v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2105001949082
Complainant is Regions Bank (“Complainant”), represented by Rachel Hofstatter of Honigman LLP, District of Columbia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionsbanklogin.com>, registered with Internet Domain Service BS Corp.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2021; the Forum received payment on May 28, 2021.
On June 1, 2021, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <regionsbanklogin.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 June 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@regionsbanklogin.com. Also on June 1, 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 June 25, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant claims to operate one of the largest full-service financial institutions in the United States. Complainant has rights in the REGIONS BANK trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 3,282,179, registered Aug. 21, 2007). Respondent’s <regionsbanklogin.com> domain name is confusingly similar to Complainant’s REGIONS BANK trademark, only differing by the addition of the generic term “login” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <regionsbanklogin.com> domain name as it is not commonly known by the disputed domain name and has no relationship to Complainant or the REGIONS BANK trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host a parked website with links to websites which compete directly with Complainant’s business.
Respondent registered and uses the <regionsbanklogin.com> domain name in bad faith. Respondent uses the disputed domain name to host a parked website that links to competing banking and financial services, disrupting Complainant’s business and leading to financial gain for Respondent. Complainant also sent several cease-and-desist letters to Respondent regarding the disputed domain name, and received no response. Additionally, Respondent registered the disputed domain with constructive and actual knowledge of Complainant’s rights in the REGIONS BANK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 1,881,600 REGIONS (word), registered on February 28, 1995 for services in Intl Class 36
- No. 1,914,267 REGIONS (fig), registered on August 22, 1995 for services in Intl Class 36
- No. 3,406,071 REGIONS (fig), registered on April 1, 2008 for services in Intl Class 36
- No. 3,406,072 REGIONS (fig), registered on April 1, 2008 for services in Intl Class 36
- No. 3,505,814 REGIONS (fig), registered on September 23, 2008 for services in Intl Class 36
- No. 1,918,496 REGIONSBANK (word), registered on September 12, 1995 for services in Intl Class 42
- No. 3,282,179 REGIONS BANK (word), registered on August 21, 2007 for services in Intl Class 36, and
- No. 5,800,356 REGIONS BANK (fig), registered July 9, 2019 for services in Intl Class 36.
The disputed domain name was registered on March 26, 2010.
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 asserts rights in the REGIONS BANK trademark through its registration with the USPTO. Registration of a trademark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a trademark under 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.”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 3,282,179, registered Aug. 21, 2007). Thus, the Panel finds that Complainant has rights in the REGIONS BANK trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <regionsbanklogin.com> domain name is confusingly similar to Complainant’s REGIONS BANK trademark, only differing by the addition of the generic term “login” and the “.com” gTLD. Adding a generic term and a gTLD to a trademark may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). In this case, the added term “login” only indicate that the disputed domain name refers to a web site or related online login site/service, provided by the Complainant. The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s REGIONS BANK trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent lacks rights and legitimate interests in the <regionsbanklogin.com> domain name as it is not commonly known by the disputed domain name and has no relationship to Complainant or the REGIONS BANK trademark.
When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, a lack of affiliation with a complainant also indicates that a respondent is not authorized to use the trademark and is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information of record lists “Domain Admin / Whois Privacy Corp.”, and indicates that Respondent utilized a WHOIS privacy service when registering the disputed domain. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <regionsbanklogin.com> domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but instead hosts a parked website displaying hyperlinks to services which compete directly with Complainant’s business. Such use of an infringing domain name does not qualify as either a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain showing various pay-per-click links to competing financial services. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
The Complainant argues that Respondent registered and uses the <regionsbanklogin.com> domain name in bad faith because Respondent hosts a parked website that displays hyperlinks to competing banking and financial services. Such use of a disputed domain name shows both bad faith disruption and attraction to commercial gain pursuant to Policy ¶¶ 4(b)(iii) and (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”).
As previously noted, Complainant provides screenshots of the resolving website for the disputed domain name as evidence of Respondent’s bad faith. The Panel therefore finds that Respondent registered and uses the disputed domain in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also sent several cease-and-desist letters to Respondent regarding the <regionsbanklogin.com> domain name. Previous Panels have held that failure to respond to a cease-and-desist letter may display bad faith under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides copies of the letters sent to Respondent as evidence of Respondent’s bad faith. The Panel notes that not replying to a cease-and-desist demand as such is no evidence of bad faith. However, in combination with the other circumstances and evidences provided by the Complainant, as well as the fact that in this present case it is several cease-and-desist demands that the Respondent has simply decided to not act upon. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant maintains that Respondent registered the <regionsbanklogin.com> domain name with constructive and actual knowledge of Complainant’s rights in the REGIONS BANK trademark.
While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of another’s rights in a trademark is sufficient to establish relevant bad faith, and can be demonstrated by the notoriety of a trademark and the use a respondent makes of the disputed domain. 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."); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
Here, Complainant claims to be one of the largest full-service financial institutions in the United States, and Respondent uses the disputed domain name to host links to various financial services which compete with the Complainant. The Panel agrees that actual knowledge was present here, and therefore finds 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 <regionsbanklogin.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 6, 2021
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