WIPO Domain Name Decision D2018-2481 for clearbank.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ClearBank Limited v. Privacydotlink Customer 2450865 / Kwangpyo Kim, Mediablue Inc. Case No. D2018-2481 1. The Parties
The Complainant is ClearBank Limited of London, United Kingdom, represented by Lawdit Solicitors Limited, United Kingdom.
The Respondent is Privacydotlink Customer 2450865 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom / Kwangpyo Kim, Mediablue Inc. of Gwang-Ju, Republic of Korea, represented by ESQ, P.C., United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2018. On October 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 31, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 2, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 12, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2018. Upon request of the Respondent, the due date for Response was automatically extended to December 7, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center December 7, 2018.
The Center appointed Flip Jan Claude Petillion, The Hon Neil Brown Q.C., and Thomas Hoeren as panelists in this matter on January 11, 2019. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, ClearBank Limited, is a financial institution offering clearing and other banking services to financial service providers. The Complainant was established on August 7, 2015 and is based in London, United Kingdom.
The Complainant is the holder of a multitude of trade- and service mark registrations for and relating to the mark CLEARBANK, which it uses in connection with its banking and financial services. The Complainant’s trademark portfolio includes, inter alia, the following trade- and service mark registrations:
- CLEARBANK, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 015011141 on May 30, 2016 in classes 35, 36, 38, 42 and 45;
- CLEARBANK, word mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 5174439 on April 4, 2017 in classes 35, 36, 38, 42 and 45;
- CLEARBANK, international word mark registered with the World Intellectual Property Office (“WIPO”) under No. 1392668 on September 15, 2017 in classes 9, 35, 36, 38, 42 and 45, with designations in various countries, including the Republic of Korea, where the Respondent is residing.
The Disputed Domain Name was created on October 16, 2003 and was acquired by the Respondent on February 2, 2014 at a public auction following the expiry of the registration of the Disputed Domain Name. The Disputed Domain Name resolves to a standard parking page displaying pay-per-click (“PPC”) links related to banking and other financial services.
Before initiating UDRP proceedings, the Complainant attempted to purchase the Disputed Domain Name from the Respondent. The Respondent, claiming that he was unaware of the identity of the Complainant, responded to multiple inquiries regarding the sale of the Disputed Domain Name, with one offer from the Respondent amounting to 300,000 USD. 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks in which it claims to have rights. The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used, or has not prepared to use the Disputed Domain Name in connection with a legitimate noncommercial or fair use. In addition, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant asserts that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name. According to the Complainant, the underlying purpose of the Respondent’s website is to park the Disputed Domain Name until it can be sold for an inflated amount exceeding the Respondent’s out-of-pocket expenses directly related to the registration of the Disputed Domain Name and, pending that event, obtain some measure of financial compensation through confusion of Internet visitors caused by the sponsored third-party links. Furthermore, the Complainant claims that the Respondent has engaged in a pattern of registering domain names comprising well‑known trade marks in which he has no obvious rights or legitimate interests. B. Respondent
The Respondent submits that he has purchased the Disputed Domain Name at a public auction well before the Complainant and his trademark rights even existed.
The Respondent contends that he does have rights and a legitimate interest in the Disputed Domain Name. The Respondent claims that he had chosen to acquire the Disputed Domain Name because the term “clear bank” is a combination of two common dictionary words and that he had aimed to profit from the generic value of the words without targeting or intending to take advantage of the Complainant’s (then non-existing) rights in those words. The Respondent also attests that he is the owner of many other similar domain names that include a combination of common descriptive words, including the word “bank”.
The Respondent further contends that he has not registered nor used the Disputed Domain Name in bad faith. The Respondent claims that he has used the Disputed Domain Name for the purpose of PPC advertising rela