Regions Bank v. Sapper Consulting/ Madeline Smith
Claim Number: FA2306002048260
Complainant is Regions Bank (“Complainant”), represented by Rachel Hofstatter of Honigman LLP, District of Columbia, USA. Respondent is Sapper Consulting/ Madeline Smith (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <regionsbankrealestate.com>, <regionsbank-realestate.com>, <regions-realestatecapital.com> and <regions-recapital.com>, registered with Dynadot 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on June 8, 2023; Forum received payment on June 8, 2023.
On June 9, 2023, Dynadot Inc confirmed by e-mail to Forum that the <regionsbankrealestate.com>, <regionsbank-realestate.com>, <regions-realestatecapital.com> and <regions-recapital.com> domain names are registered with Dynadot Inc and that Respondent is the current registrant of the names. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 June 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2023 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@regionsbankrealestate.com, postmaster@regionsbank-realestate.com, postmaster@regions-realestatecapital.com, postmaster@regions-recapital.com. Also on June 15, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
A. Complainant
Complainant states that it is a full-service provider of consumer and commercial banking, wealth management, and mortgage products and services. Complainant is one of the nation’s largest full-service providers of consumer and commercial banking, wealth management, and mortgage products and services. Its parent company is a member of the S&P 500 Index and has $163 billion in assets. Complainant operates approximately 1,300 banking offices and 2,000 automated teller machines (“ATMs”) across the South, Midwest, and Texas; it has been ranked in the top 10 percent of companies in the Temkin Experience Ratings for five consecutive years, including 2018; it was also ranked No. 1 among super regional banks in 2017 American Customer Satisfaction Index (“ACSI”) report on overall customer satisfaction and was No. 1 in customer satisfaction in 2015. Complainant has rights in the REGIONS and REGIONSBANK marks based upon their registration in the United States in 1995.
Complainant alleges that the disputed domain names are identical or confusingly similar to its REGIONS or REGIONSBANK marks as they contains the marks and merely add a hyphen, and/or generic/descriptive terms along with the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s marks. Respondent fails to use the disputed domain names to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use as the disputed domain names redirect to Complainant’s legitimate website.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. The disputed domain names redirect to Complainant’s legitimate website. Respondent had actual knowledge of Complainant’s rights in its marks at the time of registration. The <regions-recapital.com> domain name may have been used in furtherance of email phishing.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the marks REGIONS and REGIONSBANK dating back to 1995 and uses them to provide banking and financial services.
The disputed domain names were registered in 2023.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain names are redirected to Complainant’s legitimate website.
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 disputed domain names incorporate Complainant’s REGIONS or REGIONSBANK marks and merely add a hyphen and generic/descriptive terms along with the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), adding a gTLD and/or a hyphen and/or a generic/descriptive term to a mark is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information for the disputed domain names shows that the registrant’s name is “Sapper Consulting/ Madeline Smith”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The disputed domain names redirect to Complainant’s legitimate web site. This is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). And the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that the <regions-recapital.com> domain name may have been used in furtherance of email phishing. As evidence, it presents a screen shot of a “domain profile” according to which the domain name in question has a high spam score. However, Complainant does not indicate the source of the screen shot. Thus the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation.
According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), a Panel may conduct limited factual research regarding disputed domain names:
Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.
The Panel has determined that there are MX records for all of the disputed domain names, therefore it is possible that Respondent may intend to use them in connection with emails for phishing. However, for the reasons given below, the Panel does not need to determine whether Respondent actually does intend to engage in a phishing scheme.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, the disputed domain names redirect to Complainant’s legitimate website. This constitutes bad faith use under the Policy. See Bittrex, Inc. v. M D, FA2001001878566 (Forum Feb. 14, 2020) (“Redirecting traffic to a complainant’s website may constitute bad faith per Policy ¶ 4(a)(iii)); see also D Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Consequently, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s marks: the disputed domain names redirect to Complainant’s legitimate website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). 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 Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the marks prior to Respondent’s registration of the disputed domain names and that this constitutes 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 <regionsbankrealestate.com>, <regionsbank-realestate.com>, <regions-realestatecapital.com> and <regions-recapital.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 12, 2023
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