The Complainant is Dollar Bank, Federal Savings Bank of Pittsburgh, Pennsylvania, United States of America (“United States” or “US”), represented by Metz Lewis Brodman Must O'Keefe LLC, United States.
The Respondent is Cameron David Jackson of Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , and are 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 June 23, 2016. On June 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 June 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2016.
On July 7, 2016, the Complainant requested the addition of the domain names and to the administrative proceedings, noting that they had been registered subsequent to the filing of the Complaint. The Center received an email communication from the Respondent on July 8, 2016, in which the Respondent stated “Without prejudice, It is totally unfair they should file a new wipo case”. On July 12, 2016, the Center received a second, unsubstantive email communication from the Respondent.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on August 2, 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.
In light of the Complainant’s request to add the domain names and to the administrative proceedings, the Panel issued Procedural Order No. 1 on August 22, 2016, ordering the Center to submit a verification request to the Registrar in accordance with paragraph 4(a) of the Rules. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names and . On August 24, 2016, the Registrar transmitted by email to the Center its verification response indicating that the Respondent is not listed as the registrant of the additional domain names, but rather that the Complainant is the apparent registrant.
On August 22, 2016, the Center received from the Complainant a request to suspend the administrative proceedings. On the same date, the Center received from the Complainant a request to terminate the administrative proceedings. On August 23, 2016, the Center received an email communication from the Respondent, in which the Respondent appears to object to the Complainant’s request to terminate the administrative proceedings.
In light of the above, the Panel issued Procedural Order No. 2 on August 24, 2016, requesting the Respondent to either confirm that it agrees to the Complainant’s request to terminate the administrative proceedings without prejudice, or submit a request that the Panel render a Decision in this proceeding. The Respondent did not submit any comments in response to this Order within the allotted time or otherwise.
The Panel will proceed to render a decision for the reasons explained in Section 6.B. of this Decision. 4. Factual Background
The Complainant is a United States bank corporation and the owner inter alia of the US trademark DOLLAR BANK (No. 3,539,973; registered on December 2, 2008).
The Respondent registered the disputed domain name on March 31, 2016. The Respondent registered the disputed domain names , , and on June 8, 2016. The Respondent registered the disputed domain names , , , , , , , , , , and on June 9, 2016. All of the disputed domain names are currently inactive. 5. Parties’ Contentions A. Complainant
In summary, the Complainant contends the following:
Each of the disputed domain names incorporates the Complainant’s DOLLAR BANK trademark in its entirety, simply added by additional wording that concerns either banking services (i.e., “account”, “accounts”, “atm”, “homeloans” and “banking”), methods of accessing the Complainant’s services (i.e., “app”, “mobile”, “office”, “online” and “website”) or geographic information specific to the location of the Complainant’s business office and/or customer base (i.e., “ohio”, “pennsylvania”, “pittsburg” and “usa”).
When a disputed domain name incorporates an entire trademark with only the addition of a dictionary term, it is still confusingly similar to the trademark, since the addition of generic wording does not eliminate the likelihood of confusion.
The Respondent has no rights or legitimate interests in the disputed domain names because the Complainant has not granted any permission of the Respondent’s use of the disputed domain names and the disputed domain names have no connection with a bona fide offering of goods or services. To the best of the Complainant’s knowledge, the Respondent has not been commonly known by a name consisting in whole or in part of the wording “Dollar Bank” or its substantial equivalents, and the Respondent is not an agent or licensee of the Complainant.
The Respondent registered the disputed domain names with malicious intent as part of a pattern of cybersquatting and attempted extortion of money from the Complainant. On March 24, 2016, the Complainant offered the Respondent a one-time payment for the transfer of the domain name (not at issue in these proceedings). The Respondent accepted the offer on March 24, 2016, and transferred the domain name to the Complainant on March 29, 2016. Two days later, on March 31, 2016, the Respondent registered another domain name containing the DOLLAR BANK trademark, the disputed domain name , in full knowledge of the Complainant’s rights thereto. Indeed, the Respondent attempted to use the Complainant’s rights in the DOLLAR BANK trademark to extort payment for the newly registered domain name, contacting the Complainant on several occasions and offering to sell the disputed domain name to the Complainant.
On April 11, 2016, the Complainant firmly refused in writing to purchase the disputed domain name , and notified the Respondent that his activity constituted cybersquatting. Despite this notice, the Respondent proceeded to register an additional fourteen domain names on June 8, 2016, all of which include the DOLLAR BANK trademark, and had the audacity to offer to sell these additional domain names to the Complainant.
The Respondent’s actions clearly demonstrate that he registered the disputed domain names for the sole purpose of selling the disputed domain name registrations to the Complainant for valuable consideration in excess of the costs to obtain the disputed domain names. This is one of the circumstances expressly identified in paragraph 4(b)(i) of the Policy to constitute bad faith. B. Respondent
The Respondent sent an email to the Center on July 8, 2016, objecting to a request by the Complainant on July 7, 2016 to add two additional domain names to the Complainant. On July 12, 2016, the Respondent complained by email to the Center that he had received an unsigned notification of the Complaint. On August 23, 2016, the Center received an email communication from the Respondent, in which the Respondent appears to object to the Complainant’s request to terminate the administrative proceedings.
To the extent relevant, the Panel will address the Respondent’s communications below. 6. Preliminary Issues A. Addition of Domain Names to the Administrative Proceedings
On July 7, 2016, after the commencement of the administrative proceedings, the Complainant filed a request to add the domain names and to the Complaint. The Center acknowledged receipt of this request and indicated that it will be for the Panel to determine, when appointed, whether or not to accept the addition of new domain names to the Complaint and order further procedural steps, if any.
The Respondent objected to the addition of these two domain names to these proceedings by email to the Center of July 8, 2016 and demanded that a new complaint should be filed.
The Panel issued Procedural Order No. 1 on August 22, 2016, ordering the Center to submit a verification request to the Registrar in accordance with paragraph 4(a) of the Rules. The Registrar thereafter transmitted its responses, indicating that the Respondent is not listed as the registrant.
The Registrar further indicated that the registrant of the domain names and is “Dollar Bank, Federal Savings Bank”. This, together with the Complainant’s email of August 22, 2016 confirming its control over said domain names, renders it unnecessary or impossible to continue the administrative proceeding with regards to the additional two domain names (paragraph 17(b) of the Rules).
The Panel therefore declines to include the domain names and in the administrative proceedings. B. Request to Terminate the Administrative Proceedings
On August 22, 2016, the Center received from the Complainant a request to suspend the administrative proceedings and a request to terminate the administrative proceedings.
On August 23, 2016, the Center received an email communication from the Respondent, in which the Respondent stated, “this is not right” and “they require my signature for the process to be completed”.
On August 24, 2016, the Panel issued Procedural Order No. 2, requesting the Respondent to either confirm that it agrees to the Complainant’s request to terminate the administrative proceedings without prejudice, or submit a request that the Panel render a Decision in this proceeding. The Respondent did not submit any comments in response to this Order within the allotted time or otherwise.
Accordingly, the Panel shall proceed to issue its Decision in the matter. 7. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain names consist of the Complainant’s trademark DOLLAR BANK combined with various different generic, descriptive, or geographical terms. According to the consensus view of UDRP panels, the addition of merely generic, descriptive, or geographical terms such as “account”, “mobile”, “online”, or “ohio”. to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9). This is all the more true here since the words added by the Respondent could be related to the Complainant’s business or its business locations.
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain names.
Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Considering the Complainant’s unrebutted and credited contentions as set forth in Section 5.A. above, it is evident that the disputed domain names have been registered by the Respondent primarily for the purpose of selling them to the Complainant, which is the owner of the DOLLAR BANK trademark, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain names. Such conduct constitutes evidence of registration and use in bad faith, pursuant to paragraph 4(b)(i) of the Policy.
The Panel is mindful to record that the Respondent’s conduct here and in other UDRP proceedings is axiomatic bad faith, and the Panel regrets its inability to issue a decision which goes beyond the transfer of the disputed domain names.
Accordingly, the Complainant has also satisfied paragraph 4(a)(iii) of the Policy. 8. 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 names , , , , , , , , , , , , , , and be transferred to the Complainant.
Tobias Zuberbühler
Sole Panelist
Date: August 30, 2016
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