U.S. Bank N.A. v. Chris Rugh / Rugly LLC
Claim Number: FA2202001985137
Complainant is U.S. Bank N.A. (“Complainant”), represented by Gregory Golla of Merchant & Gould P.C., Minnesota, USA. Respondent is Chris Rugh / Rugly LLC (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usbank.feedback>, registered with TLD Registrar Solutions 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2022; the Forum received payment on February 21, 2022.
On February 22, 2022, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <usbank.feedback> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions 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 February 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2022 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@usbank.feedback. Also on February 22, 2022, 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 March 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 made the following contentions.
Complainant, U.S. Bank N.A., provides banking related services to millions of customers throughout the United States. Complainant maintains registration in the USBANK mark with the United States Patent and Trademark Office (USPTO). (e.g. Reg. No. 2,445,731 Reg. Apr. 24, 2001). See Compl. Ex. 1. The <usbank.feedback> domain name is identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s mark while removing the punctuation and adding the “feedback” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <usbank.feedback> domain name. Respondent is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s USBANK mark. Respondent does not have any rights or legitimate interests in the domain name because Respondent diverts users onto its own website away from Complainant’s website by making prominent use of Complainant’s marks.
Respondent registered and uses the <usbank.feedback> domain name in bad faith because Respondent acted with actual knowledge of Complainant’s rights in the USBANK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides banking and related services to millions of customers throughout the United States.
2. Complainant has established its trademark rights in the USBANK mark with the United States Patent and Trademark Office (USPTO). (e.g. Reg. No. 2,445,731 Reg. Apr. 24, 2001).
3. Respondent registered the <usbank.feedback> domain name on January 11, 2016.
4. Respondent has caused the domain name to be used to divert internet users onto its own website and away from Complainant’s website by making prominent and unauthorized use of Complainant’s trademarks, thereby showing that it has no rights or legitimate interests in the domain name and that it 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 thus made out the first of the three elements that it must establish.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the USBANK mark through its registration of the trademark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides copies of its records with the USPTO (e.g. Reg. No. 2,445,731 Reg. Apr. 24, 2001). See Compl. Ex. 1. Therefore, the Panel finds that Complainant has rights in the USBANK mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s USBANK mark. Complainant argues the <usbank.feedback> domain name is identical or confusingly similar to Complainant’s USBANK mark because it wholly incorporates Complainant’s mark adding in the “.feedback” gTLD to form a domain name. A domain name may be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of a gTLD. See 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.”). Therefore, the Panel finds that the <usbank.feedback> domain name is identical or confusingly similar to Complainant’s USBANK mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s USBANK mark and to use it in its entirety in its domain name;
(b) Respondent registered the <usbank.feedback> domain name on January 11, 2016;
(c) Respondent has caused the domain name to be used to divert internet users onto its own website and away from Complainant’s website by making prominent and unauthorized use of Complainant’s trademark;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent does not have any rights or legitimate interests in the <usbank.feedback> domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s USBANK mark. Where a respondent does not provide evidence to the contrary, a respondent may not be commonly known by a domain name, under Policy ¶ 4(c)(ii), where identifying WHOIS information is unrelated to a domain name and where a respondent is not authorized to use a complainant’s mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). WHOIS information lists “Chris Rugh / Rugh LLC” as the registrant of the domain name. See Registrar Email Verification. Complainant submits and has established that Respondent has not received permission to use its USBANK mark. Therefore, the Panel finds Respondent is not commonly known by the <usbank.feedback> domain name under Policy ¶ 4(c)(ii);
(f) Respondent is not using the <usbank.feedback> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent diverts users away from Complainant’s website by making use of complainant’s marks. Diverting users causing confusion as to the affiliation between a respondent and complainant may be evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving website which makes prominent use of Complainant’s marks, which Complainant submits causes users to believe some association between the domain name, the services provided on the website, and Complainant. See Compl. Ex. 5. Therefore, the Panel finds that Respondent is not using the <usbank.feedback> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues Respondent registered and uses the <usbank.feedback> domain name in bad faith because Respondent acted with actual knowledge of Complainant’s rights in the USBANK mark. Actual knowledge may be found where a respondent uses a well-known mark of another. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant’s mark is highly associated with banking services. Complainant submits that Respondent’s use of Complainant’s marks on its website and within the domain name causes confusion amongst the public. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the USBANK mark and thus registered and is using the <usbank.feedback> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usbank.feedback> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 21, 2022
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