WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Emigrants Savings Bank v. Registrant [2456745]:bingbing cao Case No. D2010-0115 1. The Parties
The Complainant is Emigrants Savings Bank of New York, United States of America, represented by Dorsey & Whitney, LLP, United States of America.
The Respondent is Registrant [2456745]: bingbing cao of Beijing, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2010. On January 26, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Disputed Domain Name. On January 26, 2010, Moniker Online Services, LLC 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 January 28, 2010 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 January 29, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 23, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on March 4, 2010. The Panel finds that it was properly constituted. 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 is the Emigrant Savings Bank, a large savings bank in the United States of America. The Complainant made trade mark applications in the United States of America in June 2008 for DOLLARSAVINGSDIRECT and for DOLLARSAVINGSDIRECT.COM and asserts that it owns common law rights in these marks dating from the date of first use in commerce being August 8, 2008. The Complainant also owns the domain name which it has used to advertise its banking services and products since August 8, 2008. 5. Parties' Contentions A. Complainant
The Complainant says that it has made considerable efforts and expended a lot of resources in advertising and promoting its two marks (the “DOLLARSAVINGS DIRECT marks”). It submits that it has spent around USD 4 million in promotional costs which has resulted in attracting approximately USD 2 billion on deposits through its Dollarsavingsdirect services and therefore has developed considerable goodwill and reputation in relation to its marks in the United States of America. It further submits that the Disputed Domain Name differs from its DOLLARSAVINGSDIRECT mark only by omitting the letter “s” from the word “savings” and is therefore confusingly similar to the Complainant's trade mark.
The Complainant submits that the Respondent has not made use of or demonstrable preparations to use the Disputed Domain Name in connection with any bona fide goods or services and neither is the Respondent known by the Disputed Domain Name. It is also not making a legitimate non-commercial or fair use of the Disputed Domain Name. It is in fact using the Disputed Domain Name to mislead consumers and to divert them to its website where it promotes the goods and services of the Complainant's competitors. Consequently, the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Further, the Complainant says that the Respondent registered the Disputed Domain Name purposefully to cause consumer confusion and to trade off the goodwill attaching to the DOLLARSAVINGSDIRECT marks. The very close similarity between the Disputed Domain Name and the Complainant's marks effectively amounts to typo squatting according to the Complainant and the fact that the Disputed Domain Name resolves to a pay-per-click site featuring links to the Complainant's competitors and also to the Complainant itself indicates that the Respondent must have been aware of the Complainant's DOLLARSAVINGSDIRECT marks at the time of registration.
As far as use in bad faith is concerned, the Complainant says that the Respondent purposefully tailored its website in an effort to emulate the Complainant's website so as to confuse consumers into thinking that the Respondent's website was somehow authorised, sponsored, or affiliated with the Complainant. In particular the Respondent removed the original image of a United States dollar bill and replaced it with the same picture of Benjamin Franklin as used on the Complainant's site, it displayed the same type of display of rate information made on the Complainant's website and changed the title on its website to “dollarsavingsdirect” exactly in the same fashion as on the Complainant's website.
Overall, the Complainant says that the way in which the Respondent has developed its site to emulate the Complainant's, the use of links to the Complainant's competitors and even the use of a link from the Complainant's own name “Emigrant Savings Bank” to websites of its competitors and the fact that the Respondent registered the Disputed Domain Name approximately one week after the Complainant launched its “www.” website is further evidence of use in bad faith and shows the Respondent's intention to free ride on the Complainant's marks, goodwill by misleading consumers. The use of a proxy service to hide its identity is further evidence of the Respondent's bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant does not have registered trade mark rights for its trade marks. However it has made United States trade mark applications for its DOLLARSAVINGSDIRECT marks, has sold products under the marks from an active website and says that it has spent substantial sums on advertising and promoting the marks (USD 4 million). Further it submits that these efforts have attracted very significant amounts of deposits (USD 2 billion). The Respondent has not filed a response and in these circumstances the Panel has no reason to doubt the veracity of the Complainant's submissions.
Although the DOLLARSAVINGSDIRECT marks are comprised of commonly used words the “dollarsavingsdirect” element is not a standard combination of these words and possesses some element of distinctiveness. Together with the Complainant's evidence of use the Panel considers as a result that the Complainant has provided sufficient evidence to demonstrate that through use its marks have developed the requisite level of secondary meaning for the purposes of the Policy. See for example Fairview Commercial Lending, Inc. v. Aleksandra Pesalj,WIPO Case No. D2007-0123 ().
The Disputed Domain Name differs from the key element of the Complainant's DOLLARSAVINGSDIRECT marks (discounting the “.com” element of one of the marks) by only one letter and therefore the Panel considers that it is confusingly similar to the Complainant's DOLLARSAVINGSDIRECT mark. Accordingly, the Complaint succeeds in relation to the first element of the Complaint. B. Rights or Legitimate Interests
The onus is upon the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this case.
The Panel accepts the Complainant's submissions that the Respondent does not appear to have been known by the Disputed Domain Name, has not made demonstrable preparations to use the Disputed Domain Name other than in relation to its
pay-per-click site and is not making a legitimate non-commercial use of the Disputed Domain Name.
Previous panels have found that the mere fact that the Disputed Domain Name resolves to a pay-per-click site is not of itself evidence of rights or legitimate interests arising from a bona fide offering of goods or services (see for example Compart AG v. C/Vertical Axis, Inc., WIPO Case No. D2009-0462 (). The fact that the Respondent's website has been re-titled to mirror the Complainant's trade mark instead of using the spelling of the Disputed Domain name and that it features a series of links to the Complainant's competitors' websites including through a link from the Complainant's name is not consistent with the Respondent having rights or legitimate interests in the Disputed Domain Name. The evidence of the Respondent having changed the look of its website, as further referred to below in relation to bad faith, only serves to reinforce this view.
In the Panel's view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to file a response. Accordingly the Complaint succeeds in relation to the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant says that the Respondent registered the Disputed Domain Name approximately one week after the Complainant launched its “www.” website and that this coupled with the fact that the Disputed Domain Name only differs by one letter from the Complainant's trade mark demonstrates that this is a classic example of typo squatting in which the Respondent clearly intended to register the Disputed Domain Name to take advantage of the Complainant's rights ( see for example Hobsons, Inc. v. Peter Carrington aka Party Nights, Inc., WIPO Case No. D2003-0317 (; and )
In the circumstances of the case the Panel is inclined to accept the Complainant's submissions. In particular the Panel is further persuaded of the Respondent's bad faith by the evidence that it purposefully tailored its website in an effort to emulate the Complainant's website by removing the original image of a United States dollar bill and replacing it with the same picture of Benjamin Franklin as used on the Complainant's website, using the same type of display of rate information as made on the Complainant's website and changing the title on its website to “dollarsavingsdirect” exactly in the same fashion as on the Complainant's website.
Overall the Panel considers that this is a case that fulfills the requirements of paragraph 4(b)(iv) of the Policy in that the Respondent has intentionally attempted to attract for intentional gain, Internet users to its website by creating a likelihood of confusion as to the source, affiliation or endorsement of its website. The Respondent's attempt to use a privacy service to mask its identity only reinforces this view.
On this basis the Complaint succeeds in relation to the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: March 14, 2010
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