The Complainant is Cadence Bancorp LLC of Houston, Texas, United States of America (“US”), represented by Locke Lord LLP., US.
The Respondent is Yee Chenxiao of Hangzhou, Zhejiang, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2017. On July 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 12, 2017, 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 Complainant filed an amended Complaint on July 17, 2017, to correct an administrative formality.
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 July 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2017.
The Center appointed Zoltán Takács as the sole panelist in this matter on August 16, 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement. 4. Factual Background
Cadence Bank, is a US bank with more than 100 locations in Alabama, Florida, Georgia, Mississippi, Tennessee and Texas. It manages over 9.5 billion in assets.
Cadence Bank, N.A. is wholly owned by the Complainant.
The Complainant (formerly “NBC Capital Corporation”) is owner of the US Trademark Registration No. 3190118 for the mark CADENCE, registered on December 26, 2006, as well as of the US Trademark Registration No. 3197547 for the mark CADENCE BANK registered on January 9, 2007. Both trademarks are registered for banking services of Class 36 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
The Complainant owns the domain name at which it operates a website in connection to its business and services.
The disputed domain names were registered on January 15, 2017, for which the Respondent created and has been using parking pages with “Related Links” or “Sponsored Listings” mostly in relation to the Complainant’s banking and financial services. 5. Parties’ Contentions A. Complainant
The Complainant contends that apart from the word element “ban”, which is misspelling of the word “bank” and the generic Top-Level Domain (“gTLD”) “.com” the disputed domain names are confusingly similar to its CADENCE and CADENCE BANK trademarks.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and is unable to rely of any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered the disputed domain names in bad faith and is improperly using them in an attempt to profit from pay-per-click advertising at the expense of the Complainant and its valuable trademark rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced adequate evidence that it holds registered rights in the trademarks CADENCE and CADENCE BANK, and for the purpose of this proceeding, the Panel establishes that the Complainant’s US Trademark registrations No. 3190118 and 3197547 satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the CADENCE and CADENCE BANK marks, the Panel next assessed whether the disputed domain names and are identical or confusingly similar to the CADENCE and CADENCE BANK trademarks of the Complainant.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The disputed domain name contains the Complainant’s CADENCE trademark in its entirety.
The only element in the disputed domain name other than the CADENCE trademark of the Complainant and the applicable gTLD is addition of the word element “ban”, which omits letter “k” in the word “bank”. Given that the Complainant is a premier bank, the word element “ban” added to the Complainant’s CADENCE mark in fact – in addition to being confusingly similar to the CADENCE mark of the Complainant – creates an almost identical sign to the Complainant’s CADENCE BANK mark.
The disputed domain name contains the Complainant’s CADENCE BANK trademark in its entirety.
The only element in the disputed domain name other than the CADENCE BANK trademark of the Complainant and the applicable gTLD is the element “www”, the acronym which stands for the World Wide Web. Addition of “www” is irrelevant for purposes of paragraph 4(a)(i) of the Policy.
According to section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain names and are confusingly similar to the CADENCE and CADENCE BANK trademarks of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds
well-established rights in the trademarks CADENCE and CADENCE BANK.
The Complainant has never authorized the Respondent to use its CADENCE and CADENCE BANK trademarks in any way, and the Complainant’s prior rights in the CADENCE and CADENCE BANK trademarks long preceded the date of registration of the disputed domain names.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the 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 domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convinced the Panel that the Respondent has registered and is using the disputed domain names in bad faith.
The disputed domain names reproduce in their entirety the Complainant’s highly distinctive CADENCE and CADENCE BANK trademarks. This leads the Panel to conclude that the Respondent must have been aware of the trademarks of the Complainant and decided to incorporate them in the disputed domain names with obvious intent to exploit the reputation behind the CADENCE and CADENCE BANK trademarks without any authorization or rights to do so.
Since registering the disputed domain names, the Respondent has been using them for parking pages with “Related Links” or “Sponsored Listings” mostly in relation to the Complainant’s banking and financial services.
The Panel accepted the Complainant’s contention that these facts and circumstances unquestionably evidence that, by registering and using the disputed domain names, the Respondent intentionally attempted (and continues) to attract Internet users to the Respondent’s pay-per-click advertising websites for commercial gain by creating likelihood of confusion with the Complainant’s CADENCE and CADENCE BANK trademarks.
Using domain names incorporating third-party trademarks to divert Internet users to pay-per-click websites generating revenue for either the Respondent or anyone else is activity that is well within paragraph 4(b)(iv) of the Policy and the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 names, and , be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Date: August 28, 2017
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