The Complainant is KeyCorp of Cleveland, Ohio, United States of America, represented by Thompson Hine LLP, United States of America.
The Respondent is Key Bank Networks, Morgan Brooks of Austin, Texas, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2016. On February 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 5, 2016, the Center sent an email communication to the Complainant requesting clarifications regarding its choice of mutual jurisdiction. The Complainant filed an amended Complaint on February 9, 2016.
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 February 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2016.
The Center appointed William R. Towns as the sole panelist in this matter on March 16, 2016. 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 offers banking, financial, investment, and related services in the United States. The Complainant is the owner of numerous United States trademark registrations for KEYBANK and other KEYBANK-formative marks. The Complainant and its predecessor-in-interest have offered financial, banking and related services under the KEYBANK marks since as early as 1967. The Complainant has offered online banking services under the KEYBANK mark since as early as 1995, and is a major provider of equipment financing services.
The Respondent registered the disputed domain name on July 23, 2015, according to relevant information in the Registrar’s WhoIs database. The disputed domain name currently resolves to a website at “www.” (the “Respondent’s website”). The Respondent identifies itself online as “Key Bank Networks” and “KBN”. The Respondent represents on its website that it has been serving a wide range of businesses for nearly 30 years and is a national leader in equipment leasing and financing solutions.
The Complainant’s legal representative on November 24, 2015, sent a cease and desist letter to the Respondent by certified mail, email and facsimile, to which the Complainant received no reply. The certified mail letter, sent to the postal address shown on the Respondent’s website, was returned to sender because of “insufficient address”. On December 2, 2015, the Complainant’s legal representative sent a second warning letter by regular mail and email, and left voice mail messages for the Respondent on December 2, 2015 and December 3, 2015, requesting a return call. After receiving no reply from the Respondent to any of these communications, the Complainant brought this administrative proceeding under the Policy. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s KEYBANK marks. The Complainant avers that it has extensively promoted its KEYBANK marks, spending millions of dollars in the process, such that the public has come to associate the KEYBANK marks exclusively with the Complainant’s goods and services. The Complaint asserts that it has established substantial good will in KEYBANK, and that the KEYBANK marks have become well known.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been authorized to use the Complainant’s KEYBANK marks, and that the Respondent does not have trademark rights in KEYBANK. According to the Complainant, the Respondent is making an unauthorized and infringing use of the disputed domain name in order to misleadingly divert Internet users to the Respondent’s website, on which the Respondent purports to offer services identical to the Complainant’s services offered under the KEYBANK marks. As such the Complainant submits that the Respondent is not making a bona fide use of the disputed domain name and cannot be considered to be commonly known by the disputed domain name.
In view of the foregoing, the Complainant insists that the Respondent registered and is using the disputed domain name in bad faith. Given the Complainant’s long and extensive use of the KEYBANK marks together with numerous federal trademark registrations, the Complainant submits that the Respondent knew or reasonably should have known of the Complainant’s KEYBANK mark when registering the disputed domain name. This constitutes bad faith according to the Complainant. Further, the Complainant contends that the Respondent has used the disputed domain name in bad faith to create Internet user confusion, falsely suggesting the Complainant’s sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant also submits that the Respondent’s failure to acknowledge or reply to the Complainant’s cease and desist letters, emails and telephone calls is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s KEYBANK marks, in which the Complainant beyond question has demonstrated rights through registration and use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Applying this standard, the disputed domain name is confusingly similar the Complainant’s mark. The disputed domain name incorporates the Complainant’s mark in its entirety, and the addition of the term “net” does not serve to distinguish the disputed domain name from the Complainant’s mark.
Although the Top-Level Domain (“TLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, TLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar if not virtually identical to the Complainant’s mark, which the Respondent appears to be using with a website offering financial services that are substantially similar to if not the same as the financial services provided by the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the totality of circumstances reflected in the record, the Panel considers it highly likely that the Respondent had the Complainant’s KEYBANK marks in mind when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. Internet visitors arriving at the Respondent’s website could easily be confused whether they have arrived at one of the Complainant’s websites or at a website sponsored, endorsed or affiliated with the Complainant.
The Panel finds that the Respondent registered the disputed domain name in order to divert Internet users to its website, where the Respondent offers services that are identical or substantially similar to services provided by the Complainant. This strongly evinces the Respondent’s intent to pass off such services as those of the Complainant, and as such does not constitute use of or preparations to use the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380. Nor does such male fide use qualify as a legitimate noncommercial or fair use of the disputed domain name, or support any claim by the Respondent to have been commonly known by the disputed domain name. As noted earlier, it is undisputed that the Respondent has not been authorized to use the Complainant’s KEYBANK marks.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s KEYBANK marks in mind when registering the disputed domain name. The record convincingly demonstrates that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, by intentionally creating a likelihood of confusion with the Complainant’s mark as to sponsorship, endorsement or affiliation with the Respondent’s website and the services offered thereon. In view of all of the foregoing, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
William R. Towns
Sole Panelist
Date: March 29, 2016
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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