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 I S, ICS, Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2017. On October 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 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 Center sent email communications to the Complainant on October 6, 2017 and October 10, 2016 requesting clarification regarding the Complaint remedies. The Complainant filed a first amended Complaint on October 10, 2017. The Center sent an email communication to the Complainant on October 11, 2017 requesting further clarification regarding the Complaint remedies. The Complainant filed a second amended Complaint on October 17, 2017.
The Center verified that the Complaint together with the first and second amended Complaints 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 together with the amended Complaints, and the proceedings commenced on October 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2017.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on November 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. 4. Factual Background
The Complainant, Dollar Bank, Federal Savings Bank is a corporation located in Pittsburgh, Pennsylvania, United States. It is active in banking and providing financial information in the field of banking.
The Complainant submitted evidence that it holds trademark rights for DOLLAR BANK, registered under number 3,539,973 in the United States for banking services in class 26 since December 2, 2008. The Complainant also submitted evidence that it holds trademark rights for DOLLARBANK.COM, registered under number 3,562,865 in the United States for banking services via global computer network in class 36 since January 20, 2009. The Complainant further submitted evidence that it is the owner of the trademark DOLLAR.BANK, registered under number 5,046,785 in the United States for banking services in class 36 since September 20, 2016. All three trademarks will be referred to as “the Trademarks”.
The disputed domain name was registered on September 20, 2017, well after the Complainant secured rights to the Trademarks. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain name is identical or confusingly similar to the registered rights in which the Complainant has rights.
The Complainant asserts that the disputed domain name incorporates the entire trademark with only the addition of the term “online banking”.
Furthermore, relying on F. Hoffmann-La Roche AG v. P. Martin,WIPO Case No. D2009-0323; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Spirit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792), the Complainant contends that the addition of the term “online banking” does not eliminate the likelihood of confusion.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that it has rights in DOLLAR BANK, DOLLARBANK.COM and DOLLAR.BANK and that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent has not been commonly known by a name consisting in whole or in part of the wording “Dollar Bank” or its substantial equivalent.
The Complainant affirms that it has not granted any permission to the Respondent’s use of the disputed domain name.
The Complainant further submits that the disputed domain name has no “connection with a bona fide offering of goods or services”.
The Complainant also contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as the Respondent is using the disputed domain name to create a website which misleads consumers into believing that they are dealing with a reputable bank, the Complainant.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.
The Complainant asserts that the Respondent registered the disputed domain name to intentionally attempt to attract for commercial gain, Internet visitors to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location. The Complainant further submits that the Respondent’s bad faith is demonstrated by his attempt to sell the disputed domain name, as the words “DOMAIN SALE CLICK HERE TO BUY NOW!” are shown on the website. The Complainant moreover asserts that a review of “Go Daddy auctions” indicated that the disputed domain name is for sale for USD 799. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to DOLLAR BANK, DOLLARBANK.COM and DOLLAR.BANK.
Secondly, the disputed domain name fully incorporates the Complainant’s Trademarks in which the Complainant has exclusive rights.
Thirdly, this Panel finds, similarly to other UDRP panels (see F. Hoffmann-La Roche AG v. P. Martin,WIPO Case No. D2009-0323; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307; Hoffman-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923), that the addition of the term “online banking” to the disputed domain name does not constitute an element so as to avoid confusing similarity for purposes of the Policy.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s Trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
It is the consensus view of the UDRP panels, with which this Panel agrees, that a prima facie advanced by the Complainant is generally sufficient for the Complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the Respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338).
In the present case, taking into consideration the default of the Respondent, this Panel finds that the Complainant has submitted a sufficient prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the combined following factors:
- there is no evidence that the Respondent has been authorized or licensed to use the Trademarks or the disputed domain name by the Complainant;
- there is no evidence that the Respondent has commonly been known by the disputed domain name;
- there is no evidence that the Respondent would have made a legitimate noncommercial or fair use of the disputed domain name. In fact, as set out in more detail below, this Panel believes, after having examined the evidence submitted by the Complainant, that the Respondent registered the disputed domain name with the intention of attracting visitors to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s Trademarks, or selling it for an amount in considerable excess of its out-of-pocket expenses.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 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 or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (see Riches, McKenzie & Herbert LLP v. Musa, Hector, WIPO Case No. D2017-0318; Mills Brothers B.V., The Sting B.V. v. Private Proxy Registration, WIPO Case No. D2012-1142; Control Techniques Limited v. Lektronix Ltd.,WIPO Case No. D2006-1052).
In appropriate circumstances, the finding that a respondent has no rights or legitimate interests in a disputed domain name may lead to a finding of registration in bad faith (AGUAS DE CABREIROA, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087). This Panel regards the circumstances of the present case as sufficient for a finding of registration in bad faith, in particular in light of the following elements:
- the disputed domain name is confusingly similar to the Complainant’s Trademarks;
- the disputed domain name was registered well after the Complainant obtained its first rights to the Trademarks;
Moreover, after examination of the evidence presented by the Complainant, this Panel finds that the Respondent intended to attract visitors to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s Trademarks, or to sell the disputed domain name for valuable consideration in excess of its out-of-pocket expenses related to the disputed domain name. Pursuant to the Policy, this constitutes compelling evidence of registration and use in bad faith (see also Federated Western Properties, Inc. v. Top Bell,WIPO Case No. D2002-0469; Irotama S.A. v. Richard Bonn,WIPO Case No. D2010-1784; Adamovske Strojirny v. Tatu Rautiainen, WIPO Case No. D2000-1394).
In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 the Complainant.
Benoit Van Asbroeck
Sole Panelist
Date: November 30, 2017
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