Complainant is BforBank SA of Paris, France, internally represented.
Respondent is Cameron David Jackson of Kingston, Australia. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Instra Corporation Pty Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2016. On April 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on May 3, 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 Respondent of the Complaint, and the proceedings commenced on May 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 25, 2016.
The Center appointed Richard W. Page as the sole panelist in this matter on June 3, 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
Complainant is the owner of an International trademark registration No. 1,028,094 for BFORBANK (the "BFORBANK Mark") for services in class 36 including, among other lines of commerce, insurance, financial affairs and monetary affairs.
The Disputed Domain Name was registered on March 24, 2016.
Complainant runs its business through the website "" and owns more than 96 other related domain names including the elements "b4" and "bfor" (among others) reflecting the BFORBANK Mark. All of these domain names were registered prior to the registration of the Disputed Domain Name.
Respondent is not a corporation and has 446 other domain names registered. The Disputed Domain Name does not resolve to an active website. 5. Parties' Contentions A. Complainant
Complainant alleges that the Disputed Domain Name is confusingly similar to the Complainant's BFORBANK Mark.
Complainant further alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because: (1) Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services, (2) Respondent has not been commonly known by the Disputed Domain Name or acquired any relevant trademark or service mark rights, and (3) Respondent is not making a noncommercial or fair use of the Disputed Domain Name.
Complainant further alleges that the Disputed Domain Name has been registered and is being used in bad faith by Respondent because: (1) Respondent has the intent of selling, renting or otherwise transferring the Disputed Domain Name to Complainant, (2) Respondent is engaged in a pattern of registering domain names to prevent the owner of registered trademarks from reflecting their marks in corresponding domain names, and (3) the Disputed Domain Name has been registered primarily for the purpose of disrupting the business of Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant (see Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.)
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. >
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has a valid and subsisting International registration of the BFORBANK Mark, which serves as prima facie evidence of its ownership and the validity of the BFORBANK Mark.
Past UDRP panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Respondent has failed to reply to these allegations. Therefore, the Panel finds that Complainant has protectable trademark rights for purposes of this proceeding.
The Panel notes that the entirety of the BFORBANK Mark is reproduced in the Disputed Domain Name. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See The Nasdaq Stock Market, Inc. v. Green Angel,WIPO Case No. D2001-1010; Kabushiki Kaisha Toshiba d/b/a/ Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464.
Therefore, the Panel finds that the Disputed Domain Name is identical with or confusingly similar to the BFORBANK Mark and Complainant has established the elements of the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has alleged that none of the three criteria set forth in paragraph 4(c) of the Policy relating to establishing rights or legitimate interests are present because: (1) Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services, (2) Respondent has not been commonly known by the Disputed Domain Name or acquired any trademark or service mark rights, and (3) Respondent is not making a noncommercial or fair use do the Disputed Domain Name. Complainant alleged that Respondent has never included any content related to the Disputed Domain Name.
Some type of activity related to the Disputed Domain Name is typically necessary to establish rights or legitimate interests under paragraph 4(c) of the Policy. Furthermore, Respondent has not contested Complainant's allegations that Respondent lacks rights or legitimate interests.
Therefore, the Panel finds that Complainant has established the elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed 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 Disputed Domain Name; or
(ii) you have registered the Disputed 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 Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed 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.
Complainant alleged that the Disputed Domain Name has been registered and used in bad faith by Respondent because: (1) Respondent has the intent of selling, renting or otherwise transferring the Disputed Domain Name to Complainant, (2) Respondent is engaged in a pattern of registering domain names to prevent the owners of registered trademarks from reflecting their marks in corresponding domain names, and (3) the Disputed Domain Name has been registered primarily for the purpose of disrupting the business of Complainant.
To support these allegations, Complainant alleged that Respondent is not a corporation, but has registered over 446 domain names (the Panel has confirmed that many of these contain third party marks and have been subject to previous UDRP disputes). In addition, Complainant has alleged that no content related to the Disputed Domain Name was ever posted. The Panel is willing to draw the inference from these facts that the circumstances at paragraph 4(b)(ii) are present.
In addition, the four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
One such factor is that Respondent has made no use of the Disputed Domain Name, which, considering the overall circumstances of the case can be considered as further evidence of bad faith use of the Disputed Domain Name. Telstra Corporation Limited v. Nuclear Marshmallows, supra
Therefore, the Panel finds that Complainant has established the elements 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 Complainant.
Richard W. Page
Sole Panelist
Date: June 14, 2016
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