DECISION
Dacotah Banks, Inc. v. Domain Admin / Domain Service, Inc
Claim Number: FA2503002146901
PARTIES
Complainant is Dacotah Banks, Inc. ("Complainant"), represented by Jamie N. Nafziger of Dorsey & Whitney LLP, Minnesota, USA. Respondent is Domain Admin / Domain Service, Inc ("Respondent"), represented by Mike Knight, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dakotabank.com>, registered with DropCatch.com 626 LLC.
PANEL
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on March 25, 2025. Forum received payment on March 25, 2025.
On March 26, 2025, DropCatch.com 626 LLC confirmed by e-mail to Forum that the <dakotabank.com> domain name is registered with DropCatch.com 626 LLC and that Respondent is the current registrant of the name. DropCatch.com 626 LLC has verified that Respondent is bound by the DropCatch.com 626 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 March 27, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2025 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@dakotabank.com. Also on March 27, 2025, 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.
A timely Response was received and determined to be complete on May 12, 2025.
On May 13, 025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant, Dacotah Banks, Inc., is a full-service, state-chartered banking institution that provides banking, insurance, mortgage and trust and wealth management services to its customers. Complainant began its operations in 1955 and has a significant presence in Minnesota, North Dakota and South Dakota. Complainant also provides online banking services through its mobile app and website at "www.dacotahbank.com", which features its DACOTAH BANK and DACOTAH BANK & Design trademarks.
Complainant has developed significant common law rights in the well-recognized DACOTAH BANK word mark due to its continuous and exclusive use of the mark since 1964.
The <dakotabank.com> domain name is confusingly similar to Complainant's registered DACOTAH BANK & Design trademark and common law DACOTAH BANK and DACOTAH BANK & Design trademarks.
Respondent has no rights or legitimate interests in respect of the domain name. The website for the <dakotabank.com> domain name is a clear attempt to impersonate and pass off as Complainant. Respondent's website displays links for directly competitive services, namely banking services. Other panels have concluded that this type of passive parking, especially for directly competitive services, does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The phrase Dakota Bank, or any variation of it, does not appear anywhere in the Whois record for the domain name. Where the registrant information does not show that a respondent is known by marks in the disputed domain name, panels have concluded that the respondent does not have legitimate rights or interests in the domain name. Therefore, Respondent has no reason to use the DAKOTA BANK mark or the <dakotabank.com> domain name except to improperly create the impression of an association with, or to trade off the goodwill of, Complainant.
Respondent is not a licensee or subsidiary of Complainant. Respondent has never been authorized to use Complainant's DACOTAH BANK or DACOTAH BANK & Design marks, for which the trademark registration and use long predate the registration date of Respondent's domain name.
Respondent has registered and used the domain name in bad faith. Respondent clearly had actual or constructive knowledge of the mark at the time of registration. This is evidence of bad faith pursuant to Paragraph 4(b) of the Policy. Even the most perfunctory trademark, search engine, or domain name availability search would have revealed that Complainant had registered the DACOTAH BANK & Design mark, is exclusively using the DACOTAH BANK marks, and is the owner of a domain name incorporating the mark DACOTAH BANK.
Respondent's domain name fully incorporates Complainant's trademark DACOTAH BANK and it contains the distinctive element of Complainant's DACOTAH BANK & Design mark. Respondent registered the domain name nearly 60 years after Complainant began offering its services under the marks and 28 years after Complainant first obtained a trademark registration for the DACOTAH BANK & Design mark. This suggests Respondent knew of Complainant's trademarks and registered the domain name with bad faith intent to unfairly capitalize on Complainant's trademark rights.
Respondent attempts to disrupt Complainant's business by diverting Internet users to Respondent's website and uses the domain name to create confusion with Complainant's marks for Respondent's commercial gain. Respondent uses a domain name that fully incorporates Complainant's mark and directs users to a website displaying pay-per-click advertisements.
Respondent's domain name also causes initial interest confusion. Respondent could easily use the domain name to contact and defraud Complainant's banking customers as part of a phishing campaign. The domain names differ by only two letters and sound identical. The average Internet customer is unlikely to notice that "h" has been dropped and the similar sounding consonants "c" and "k" have been switched if reviewing emails from Respondent and is likely to assume that any such communications are directly from Complainant. In the financial services area, this risk is especially problematic for consumers because they stand to lose the money they have in the bank.
These circumstances suggest that Respondent has acquired and is using the domain name in bad faith primarily for the purpose of disrupting Complainant's business and intentionally attempting to attract users by creating a likelihood of confusion with Complainant's marks to gain commercially via Respondent's deceptive actions. Therefore, Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent says this dispute involves a banking domain name consisting of the merger or blending of the two common words "Dakota" and "Bank" which, together, form the common business banking name "DakotaBank" used by numerous banks both locally and nationally. A search of Google for "Dakota Bank" shows that there are a "half a dozen" or more banks using "Dakota" in their chosen domain names. A search of Google for "dacotah or dakota spelling" shows that the spelling "Dacotah" is an older, alternative spelling of "Dakota". Both spellings refer to the Native American people and the states of North and South Dakota.
Respondent is a professional domain name investor with more than 1000 generic domain names under ownership and offered for sale. <dakotabank.com> is a generic, memorable "two-word" blended domain name with an estimated GoDaddy "GO value List" appraisal of more than $9,800 according to the domain investor GoDaddy domain appraisal tool.
Respondent has sold comparable domains for considerable sums, such as <riversidebank.com> at $7,000. Comparable domains sold by others would be <ezbank.com> at $50,000 and <bankfirst.com> at $800,000. Based on these strong domain name values a decision to purchase <dakotabank.com> was made by Respondent in October of 2023 when it became available in a public auction. It was expiring on October 3, 2023, so Respondent chose to participate in the public auction at DropCatch.com. If Complainant had desired to acquire the <dakotabank.com> domain name it could have placed a bid to join the public auction or demanded that DropCatch stop the auction and award Complainant the domain name. They did neither. When Respondent won the <dakotabank.com> domain name at auction for $59 USD, the price paid was based on its quality and memorable nature.
Similar business banking domain names that are currently owned by Respondent that have been purchased at auction in a similar manner are <dakotastatebank.com>, <jasperbank.com> and <timberbank.com>. This is consistent with Respondent's bona fide business plan of acquiring quality memorable domain names to list for sale or lease to the general public, not specifically targeting Complainant in any way.
A simple search of the USPTO's Trademark Electronic Search System for the "Dakota Bank" term lists "Zero" exact match Live trademark for "Dakota Bank" which are owned by Complainant or any other party.
Complainant's mark is also non-exclusive and for a narrow class of services. Because Respondent has no plan to use the domain name for banking services, Respondent does not believe that general public sale of a common banking domain name infringes Complainant's mark.
A simple Google search for "Dakota Bank" lists numerous other banking companies that are using the "Dakota Bank" term in their domain names. Examples are <dakota.xyz>, <dakotacommunitybank.com>, <bnd.nd.gov>, <westerndakotabank.com>, <firstdakota.com>, <dakotawesternbank.com>, <dakotalandfcu.com> and <dhb.bank>, the domain name of Dakota Heritage Bank of North Dakota.
Respondent has not used his domain name <dakotabank.com> for the "banking business" nor any of the services listed in Complainant's trademark registration. Respondent had never heard of Dacotah Bank until the filing of this Complaint.
The <dakotabank.com> domain name has never been used by Respondent to interfere in any way with Complainant's business, nor to target Complainant. "Dakota" is not a typo of "Dacotah." "Dakota" is actually the preferred spelling, used by a number of other banks without issue. The domain name is currently "parked" at Bodis.com, with generic related PPC ads and an inquiry message at the top of the page. It has never been offered for sale directly to Complainant. Offering a generic domain for public sale, in itself, is not "bad faith" targeting of Complainant's limited trademark rights in what is otherwise a common business banking name.
Holding a domain name that is a common business name and is demonstrably used in commerce by various companies and banks around the world is not a bad faith registration.
In Dr. Muscle v. Michael Krell, FA1903001833036, decided April 19, 2019, the panel held:
"Domain name speculation alone is not bad faith. Rather, to constitute bad faith, the speculation must be targeted to the trademark value of the name".
Complainant does not explain how a domain name that, for years, was offered for sale by the previous owner, suddenly became diversionary or confusing to consumers when it expired and was again directed to a "for sale" webpage. Merely directing a common phrase domain name to a "for sale" lander does not constitute targeting of Complainant's mark.
Complainant has known, for many years, that the <dakotabank.com> domain name was already registered with the preferred spelling of "Dakota" and that Complainant could have acquired it from HugeDomains.com in 2017 or before. However, eight years later in 2025, Complainant chose not to attempt to purchase on ordinary commercial terms from Respondent but decided to use the UDRP as a plan to obtain the domain name thru a legal method. The domain name is currently, and since acquisition, listed for sale at Afternic.com, the GoDaddy.com domain marketplace.
It is apparent that Respondent has registered many other "two-word" domain names; that he did not target Complainant's trademark; that Respondent has not offered to sell the domain name to Complainant in particular; and that Complainant could have acquired the domain name from DropCatch.com at auction but chose not to do so. Respondent had a legitimate business reason for registering the domain name and has neither acquired the domain name nor used it since acquisition in "bad faith".
Respondent respectfully requests that the complaint be denied and that the complainant be found guilty of Reverse Domain Name Hijacking.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the DACOTAH BANK design mark through registration with the USPTO (Reg. No. 2,070,341 registered on June 10, 1997 for "banking, loan financing, credit card services, investment brokerage and consultation, investment of funds for others, funds investment, and insurance brokerage"). The word "bank" is disclaimed.
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0 "), section 1.7.
The Panel finds Respondent's <dakotabank.com> domain name to be confusingly similar to Complainant's DACOTAH BANK design mark, only differing from the text of the mark by the omission of the space between the words and the commonly used alternative spelling "Dakota" instead of "Dacotah", which have the same pronunciation. These differences are insufficient to distinguish the domain name from Complainant's mark. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
In light of this finding, it is unnecessary to consider whether Complainant has established that it has common law rights in the DACOTAH BANK word mark.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <dakotabank.com> domain name was registered on September 30, 2023, many years after the registration of Complainant's DACOTAH BANK design mark. It resolves to a parking page displaying what appear to be pay-per-click links associated with banking.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <dakotabank.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent, a domain name investor, bought the <dakotabank.com> domain name at auction and did so with intent to sell it to the general public, as with the similarly structured domain names <dakotastatebank.com>, <jasperbank.com> and <timberbank.com>.
As noted in UDRP Perspectives ("www.udrpperspectives.org"), section 2.6:
"Speculating in and trading in domain names when done without intent to profit from other's trademarks can in and of itself, constitute a "legitimate interest" under the Policy – even without actually using the domain name in connection with its dictionary meaning.
Speculating in and trading in domain names can indeed constitute a legitimate interest under the Policy. Such a practice may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e. the sale of the domain name itself).
Where a Respondent is in the business of investing in domain names, a legitimate interest may be found since the Complainant's arguments as to a lack of a legitimate interest will have been rebutted."
The Panel finds that Respondent has shown that it has rights or legitimate interests in respect of the domain name because, as a domain name investor in similarly structured domain names who bought the descriptive <dakotabank.com> domain name at auction upon its expiry and without awareness of Complainant's DACOTAH BANK mark, Respondent registered and is using the domain name in connection with a bona fide offering of goods or services, namely the offering of the domain name itself for sale to the general public.
Complainant has failed to establish this element.
Registration and Use in Bad Faith
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent did not register the <dakotabank.com> domain name in bad faith and is not using it in bad faith.
Complainant has failed to establish this element.
Reverse Domain Name Hijacking
Reverse Domain Name Hijacking ("RDNH") is defined in Rule 1 as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". Rule 15(e) provides, in part:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Here, as in Alpha Bank S.A. v. Ehren Schaiberger, WIPO D2024-0818:
"In the case at hand, the Panel finds no evidence that the Complaint was brought in bad faith. The Complainant has valid trademark rights and seems to have been legitimately convinced that, when registering the Disputed Domain Name, the Respondent was targeting the Complainant. The Complainant may have erroneously believed that the registration of the Disputed Domain Name for resale purposes constitutes a strong argument in support of bad faith…"
The Panel therefore declines to find that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.
DECISION
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dakotabank.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: May 15, 2025
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