The Complainant is Dollar Bank, Federal Savings Center of Pittsburgh, Pennsylvania, United States of America (“United States”), represented by Metz Lewis Brodman Must O'Keefe LLC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / I S, Internet Consulting Services 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 December 21, 2017. On December 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 27, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 29, 2017.
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 January 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2018.
The Center appointed Marilena Comanescu as the sole panelist in this matter on February 8, 2018. 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 the proceeding is English. 4. Factual Background
The Complainant, Federal Savings Bank is a corporation located in Pennsylvania, United States and it is active in banking and providing financial information in the field of banking.
Complainant is the owner of the trademark rights for DOLLAR BANK, DOLLARBANK.COM and DOLLAR.BANK as follows:
(1) the United States trademark no. 3,539,973 for DOLLAR BANK registered on December 2, 2008, with first use November 10, 1987, covering services in class 36;
(2) the United States trademark no. 3,562,865 for DOLLARBANK.COM registered on January 20, 2009, with first use January 10, 1999, covering services in class 36;
(3) the United States trademark no. 5,046,785 for DOLLAR.BANK registered on September 20, 2016, with first use July 13, 2016, covering services in class 36.
The disputed domain name was registered by the Respondent on November 27, 2017. According to the evidence provided as Annex 7 to the Complaint, before commencing the present proceeding, the disputed domain name resolved to a website containing a list of sponsored links and it was offered to public sale. Currently, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademarks DOLLAR BANK and DOLLARBANK.COM, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar
The Complainant holds rights in the DOLLAR BANK and DOLLARBANK.COM trademarks.
The disputed domain name incorporates the Complainant’s trademark DOLLAR BANK in its entirety, with the addition of the word “bing” at the end. However, such addition does not eliminate the likelihood of confusion and the dominant and distinctive part of the disputed domain name remains the Complainant’s trademark.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.net”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark DOLLAR BANK, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “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 relevant evidence demonstrating rights or 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”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in record suggesting that the Respondent has ever been commonly known by the disputed domain name.
The Respondent is using the disputed domain name in connection with commercial activities for pay-per-click (“PPC”) pages. Section 2.9 of theWIPO Overview 3.0 clarifies that Panels have found that the use of a domain name to host a page comprising PPC links would be permissible where the domain name consists of an actual dictionary words comprising the disputed domain name and not to trade off the Complainant’s trademark.
Applying UDRP paragraph 4(c), panels have found that the use of a disputed domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links for example capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.
Here, the Respondent did not provide any explanation for its use of the disputed domain name and the Panel cannot find anything in its favor, therefore the Panel concludes that the Respondent has registered and used the disputed domain name trying to capitalize on the Complainant’s goodwill in the mark in order to mislead the Internet users.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant holds trademark rights for DOLLAR BANK since at least 1987. The disputed domain name was created in 2017 and incorporates Complainant’s mark followed by the non-distinctive term “bing”.
According to the records in the file, the Respondent has used the disputed domain name in relation to a website listing sponsored links and is offering the disputed domain name for public sale. The commercial activities for PPC pages and the business of buying and selling domain names can be legitimate activities particularly when they involve dictionary word domain names, but it does not necessarily confer rights to use for that purpose a domain name identical or confusingly similar to another party’s trademark.
In the present case, the above circumstances are cumulated with the fact that the Respondent has registered the disputed domain name incorporating Complainant’s mark registered and used for at least thirty years, provided false contact information in the WhoIs and refused to participate in the present procedure in order to put forward relevant arguments in its support, therefore the Panel concludes that the provisions of paragraph 4(b)(iv) of the Policy which provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” applies in the present case and is evidence of registration and use in bad faith.
The Internet users searching for the Complainant would acces the website corresponding to the disputed domain name considering it belongs or is somehow associated with or endorsed by the Complainant.
Further, the Respondent has registered the disputed domain name under a proxy service. Although the use of privacy and proxy services can be legitimate, the circumstances in which such services are used, including whether the Respondent is operating a commercial and trademark-abusive website, can impact a panel’s assessment of bad faith. In the present proceeding it appears that the second Respondent employed the privacy service, the first Respondent, merely to avoid being notified of the UDRP proceeding against it because it provided false contact details in the WhoIs and failed to provide any Response. Accordingly, the Panel finds that the use of a privacy service in the present case is indicator of bad faith. See section 3.6 of theWIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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.
Marilena Comanescu
Sole Panelist
Date: February 14, 2018
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