The Complainant is Dollar Bank, Federal Savings Bank of Pittsburgh, Pennsylvania, United States of America ("United States"), represented by Metz Lewis Brodman Must O'Keefe LLC, United States.
The Respondent is Host Master / Jason Duke of Seaford, East Sussex, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2016. On April 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 9, 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.
The Center verified that the 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 April 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2016. The Response was filed with the Center on April 27, 2016.
The Center appointed John Swinson as the sole panelist in this matter on May 12, 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 is Dollar Bank, Federal Savings Bank, a regional bank with more than 60 branches throughout Pittsburgh and Cleveland.
The Complainant owns a number of registered trade marks in the United States, including:
- trade mark number 3539973 for DOLLAR BANK, registered on December 2, 2008; and
- trade mark number 3562865 for DOLLARBANK.COM, registered on January 20, 2009, (the "Trade Mark").
The Complainant submits that it has been using the Trade Mark since December 13, 1994 in respect of banking and providing financial information in the field of banking.
The Complainant's primary website is at the domain name , which is identical to the Trade Mark. This domain name was registered on February 28, 1996.
The Respondent is Jason Duke, an individual from the United Kingdom who owns and operates a digital marketing company.
The Respondent registered the Disputed Domain Name on February 19, 2004. The Disputed Domain Name currently redirects a website at , through which the Respondent offers his marketing and other services.
Previously, the Respondent operated a business in which he assisted clients to set up multi-currency bank accounts. The website previously at the Disputed Domain Name advertised these services. 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Respondent owns the Trade Marks and associated intellectual property rights. The Complainant has used the Trade Mark since December 13, 1994 in respect of banking and providing financial information in the field of banking.
The Disputed Domain Name incorporates the Trade Mark in its entirety with the addition of the word "account". This addition does not eliminate the likelihood of confusion.
The Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has not granted the Respondent permission to use the Disputed Domain Name and the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent has not been commonly known by the Disputed Domain Name.
Further, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name as the Disputed Domain Name is being used to mislead consumers into believing they are dealing with a reputable bank.
Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Trade Mark as to the source, affiliation or endorsement of the website at the Disputed Domain Name.
The Disputed Domain Name is commercial in nature. It is not immediately apparent that the website at the Disputed Domain Name is not operated by the Complainant as the owner of the website is not identified.
The Disputed Domain Name redirects to a website offering online marketing services. The Respondent is attempting to deceive Internet users into believing that they are visiting a website connected with the Complainant, and then redirecting those users to an advertisement. B. Respondent
The Respondent makes the following submissions.
Identical or Confusingly Similar
The Trade Mark was filed and granted by the United States Trade Mark and Patent Office in 2008, which is later than the date the Disputed Domain Name was first registered. Also, the Trade Mark was registered in the United States, but the Disputed Domain Name has only ever been used to advertise services outside of the United States, so it cannot be said to infringe the Trade Mark.
Rights or Legitimate Interests and Registered and Used in Bad Faith
The Disputed Domain Name was previously used to advertise a service which assisted people outside the United States, who undertook affiliate marketing on their websites, to set up multi-currency bank accounts into which they could receive US dollars for little or no fees. The Respondent provided this service as the commissions received from affiliate marketing were generally small amounts received in US dollars, and the cost of paying these amounts into a non-US dollar bank account was often more than the amount of the commission.
Further, the Disputed Domain Name is comprised of three dictionary words, being "dollar", "bank" and "account". These terms describe the service which the Respondent previously offered, and plans to offer in the future, being bank accounts for those who wish to make deposits in US dollars.
The Respondent has never offered accounts through the Complainant, and, as the Respondent resides in the United Kingdom, has never heard of the Complainant.
The fact that the Disputed Domain Name redirects to the Respondent's online marketing website does not show bad faith. The Respondent's default settings with the Registrar are to have his domain names redirect to that website.
Reverse Domain Name Hijacking
The Complaint was filed in bad faith in an attempt at reverse domain name hijacking ("RDNH"). The Complainant first contacted the Respondent in October 2014 stating that the Disputed Domain Name infringed the Trade Mark. The Respondent disputed this. The Complainant did not contact the Respondent again until February 16, 2016. Again, the Complainant claimed that the Disputed Domain Name infringed the Trade Mark, but also offered to purchase the Disputed Domain Name from the Respondent. The Respondent declined.
A finding of RDNH should be made against the Complainant, because the Disputed Domain Name was registered before the date the Trade Mark was registered, the Complainant has not shown any evidence of bad faith, and the Complainant failed in its attempt to secure the Dispute Domain Name by other means, and is using the UDRP process as a "Plan B". 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with a descriptive term (i.e. "account"). As "account" is a term which can be readily associated with banking services, this addition is likely to increase the confusing similarity.
A complainant is not required to prove trade mark infringement to succeed on the first element of the Policy.
The Respondent's submission that the Disputed Domain Name was registered earlier than the Trade Mark is not relevant to paragraph 4(a)(i) of the Policy, but will be discussed in relation to whether or not the Respondent registered and is using the Disputed Domain Name in bad faith.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers that the Respondent has rights to or legitimate interests in the Disputed Domain Name.
Under paragraph 4(c)(i) of the Policy, the Respondent will have rights to or legitimate interests in the Disputed Domain Name if, before any notice of the dispute, he had used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent registered a combination of dictionary terms as a domain name, and used the Disputed Domain Name for a purpose related to those terms, i.e., to provide "dollar bank accounts". The Respondent has provided evidence that, for a number of years following registration and before contact from the Complainant, he operated a business via a website at the Disputed Domain Name which assisted Internet users to set up bank accounts which would receive US dollars for little or no fee. The Panel considers this was a bona fide use of the Disputed Domain Name which the Respondent made before any notice to him of the dispute.
The Disputed Domain Name is no longer being used in relation to that business. However, the fact that the Disputed Domain Name now redirects to a website advertising another business operated by the Respondent does not necessarily prevent a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name. The current website does not feature any pay-per-click links or other advertising that would suggest the Respondent is trading off the Complainant's reputation in the Trade Mark, or has incorporated the Trade Mark in the Disputed Domain Name for the purpose of diverting Internet users to himself or a competitor of the Complainant.
The Complainant does not succeed in establishing the second element of the Policy. C. Registered and Used in Bad Faith
In light of the above finding, the Panel is not required to consider the third element of the Policy. However, the Panel will briefly address the key aspects of this element for completeness.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Respondent registered the Disputed Domain Name on February 19, 2004. The Trade Mark was first registered on December 2, 2008, which is four years after the Respondent registered the Disputed Domain Name. While the Complainant claims to have used the Trade Mark since 1994, for some reason which is not clear to the Panel, it has provided no evidence in the Complaint of this.
Further, even if this is the case, the Complainant is a regional bank in the United States whose services focus on the Pittsburgh and Cleveland areas. The Complainant has provided no evidence as to why the Respondent should have had knowledge of the Complainant at the time he registered the Disputed Domain Name. The Respondent credibly states that he was not aware of the Complainant or the Complainant's claimed unregistered rights in the Trade Mark when he registered the Disputed Domain Name.
In these circumstances, the Panel considers that evidence of either the Complainant's reputation or the Respondent's knowledge of the Complainant would be necessary for a finding of bad faith.
The Complainant submits that the Respondent is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to the Respondent's website be creating a likelihood of confusion with the Trade Mark as to the source, affiliation or endorsement of the website at the Disputed Domain Name. The Panel does not agree.
There is no evidence that the Respondent is trading off the Complainant's reputation in the Trade Mark in an attempt to redirect consumers to the Respondent's own business. The fact that the Disputed Domain Name currently redirects to a website for the Respondent's online marketing services does not, without more, constitute bad faith in the circumstances of this case.
The Respondent has provided sufficient submissions and evidence to show that he did not register, and is not using, the Disputed Domain Name in bad faith.
The Complainant does not succeed on the third element of the Policy. D. Reverse Domain Name Hijacking
The Respondent has asked that a finding of RDNH be made against the Complainant. While the Complainant has not succeeded in this case, the Panel is not prepared to find that its Complaint was unjustified.
The Respondent has pointed to a number of factors which could lead a panel to a finding of RDNH. However, while some of the Complainant's arguments may have been weak, the Complainant still produced arguments for each element of the Complaint and succeeded on the first element. The Panel finds that the Complaint was not brought in bad faith, and consequently there is no basis for finding the Complainant has engaged in RDNH. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: May 16, 2016
Full & Egal Universal Law Academy