The Complainant is People’s Intermountain Bank dba Lewiston State Bank of American Fork, Utah, United States of America (“United States”), represented by John Rees Law, PLLC, United States.
The Respondent is PrivacyDotLink Customer 2443224 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Cameron Jackson of Kingston, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2016. On December 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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 December 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2017.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on January 25, 2017. 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 a wholly owned subsidiary of People’s Utah Bancorp, which is the holder of the US trademark registration for LEWISTON STATE BANK (registration number 4,771,737, hereafter referred to as “the Complainant’s trademark”). The Complainant’s trademark was registered on July 14, 2015, for, inter alia, different sorts of financial services.
The disputed domain name was registered on September 13, 2016 and resolves to a Registrar parking page indicating the website is available for sale. 5. Parties’ Contentions A. Complainant
Apart from being the holder of the trademark registration for the Complainant’s trademark, the parent of the Complainant is also the holder of the domain name registration for , from which the Complainant advertises and offers its banking services.
The disputed domain name is confusingly similar to the Complainant’s trademark. A comparison of the disputed domain name and the Complainant’s trademark shows that the latter is included and recognizable in the disputed domain name. The only difference is the addition of the generic Top-Level Domain (“gTLD”) “xyz”. The top-level domain is usually disregarded under the confusing similarity test.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s trademark has been in use in commerce since at least as early as September 9, 1905, and the parent of the Complainant obtained a registration for the Complainant’s trademark on July 14, 2015. Before filing the Complaint, the Complainant has not been aware of any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. A parking page does not by itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name.
The Complainant is not aware that the Respondent, as an individual, business or other organization, has been commonly known by the domain name. The Respondent is not a licensee of the Complainant’s trademark, and has not otherwise obtained authorization to use the Complainant’s trademark.
The disputed domain name was registered and is being used in bad faith. The use of the Complainant’s trademark in the domain name indicates that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, and appears to be intended to take advantage of the goodwill associated with the Complainant’s trademark.
The Respondent has not made any efforts to sell the disputed domain name to the Complainant. The Respondent has, however, on other occasions sought to sell domain names to other clients of counsel for the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the 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
The Complainant is a subsidiary to the holder of the US trademark registration for LEWISTON STATE BANK. In accordance with the established consensus view among UDRP panels, a subsidiary to the holder of a trademark is considered to have rights in a trademark under the UDRP.
The disputed domain name incorporates the Complainant’s trademark in its entirety, with the addition of the gTLD “.com”. According to the well-established consensus among UDRP panels, the gTLD is generally not distinguishing. Thus, the Panel finds that the differences between the disputed domain name and the Complainant’s trademark are insufficient to avoid a finding of confusing similarity under the first element of the Policy.
In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark within the meaning of Policy paragraph 4(a)(i), and the first element of the Policy is thus fulfilled. B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make at least a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 2.1; The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that no permission to register the disputed domain name has been granted to the Respondent. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests in the disputed domain name.
Having considered the submissions of the Complainant, and in the absence of a Response from the Respondent, the Panel infers that the Respondent is not connected with the Complainant or authorized to use the Complainant’s trademark in the disputed domain name. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent is using the disputed domain name for a bona fide offering of goods or services.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this case with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
The disputed domain name was registered on September 13, 2016, while the Complainant’s trademark was registered on July 14, 2015. Furthermore, the Complainant has stated that the Complainant’s trademark has been in use since at least 1905. The submitted evidence also shows that the Complainant’s parent has been the holder the domain name registration for since February 5, 2003. In the light thereof, and considering that the disputed domain name is identical with the Complainant’s trademark, it is in the Panel’s view apparent that the disputed domain name was registered and is being used with knowledge of the Complainant’s trademark rights and business, and most likely with the intention of attracting Internet users for commercial gain by creating a likelihood of confusion with that same mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
According to the Complainant’s uncontradicted information, the disputed domain name resolves to a landing page, without any indication of active use other than its offer for sale. This is in the Panel’s view a further indication of bad faith under the circumstances.
All in all, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled. 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.
Jonas Gulliksson
Sole Panelist
Date: February 7, 2017
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