The Complainant is Texas Capital Bank, N.A. of Dallas, Texas, United States of America ("United States" or "US"), represented by Bracewell L.L.P., United States.
The Respondent is Victor Carrasco, Coratech, EIRL of Santo Domingo Oeste, Dominican Republic. 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 April 27, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2018, 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 May 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2018. On May 28, 2018, the Center received an email communication from the Respondent consenting to transfer of the disputed domain name to the Complainant. Accordingly, on May 30, 2018, the Center informed the Parties that if the Parties wished to explore settlement options, the Complainant should submit a request for suspension by June 6, 2018. On June 3, 2018, the Center received another email communication from the Respondent. On June 7, 2018, noting that the Complainant had not requested suspension of the proceeding, the Center informed the Parties that the Center would proceed to panel appointment.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on June 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.
Following such appointment, the parties requested the proceedings to be suspended on June 12, 2018, which resulted in Procedural Order No. 1 ordering the suspension of the proceedings until July 6, 2018, then extended through a Procedural Order No. 2 until July 12, 2018. The proceedings resumed on July 13, 2018. Notwithstanding the suspension of the proceedings, the parties did ultimately not reach a settlement. 4. Factual Background
The Complainant is a commercial bank headquartered in Dallas, which has operated under the name Texas Capital Bank since 1998 and has been ranked by Forbes as one of the best banks in the United States of America.
The Complainant owns numerous trademarks consisting in whole or in part of the terms "Texas Capital Bank", including the US word trademark TEXAS CAPITAL BANK (3770632) that was registered on April 6, 2010 with a priority date as of August 11, 2009 under class 36 of the Nice Classification for banking services.
On November 23, 2017, the Respondent registered the domain name , which currently resolves to a registrar parking page. The Respondent has registered more than 300 domain names under the Top-Level Domain ("TLD") ".online", the majority of which incorporate trademarks of businesses, notably of various banking institutions around the world. 5. Parties' Contentions A. Complainant
The Complainant first asserts that the domain name is confusingly similar to its trademarks as it entirely incorporates its trademarks "Texas Capital Bank" and that the TLD ".online" has to be disregarded.
It then argues that the Respondent has no rights nor legitimate interests in respect of the disputed domain name as there is no evidence that the Respondent was commonly known under that name nor that, prior to notice of the dispute, the Respondent was using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Complainant never granted any authorization or license to the Respondent to register and use the domain name.
The Complainant finally considers that the disputed domain name was registered and is being used in bad faith. The Respondent has engaged in a pattern of conduct by registering more than 300 domain names under the Top-Level Domain ".online", the majority of which incorporate trademarks of well-known businesses, notably of various banking institutions around the world. B. Respondent
On May 28, 2018, the Respondent sent an email to the Center, in which it wrote that: "I want to proceed and let without effect the domain name registered under mine name, which is . Please, give it to Texas Capital Bank. Even my right to having any domain name, I had decided to not be confronting anyone under any circumstance. Thank you and hope things move according to your this decision. Also, I hope this case may be close with not further prejudice for none of the involved parts."
The Respondent did not send any further communications nor a formal response to the Complaint. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "[…] decide a complaint 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".
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(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
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of several registered trademarks consisting in whole or in part of the terms "Texas Capital Bank", including a US word trademark for TEXAS CAPITAL BANK (3770632).
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
Such happens to be the case here where the disputed domain name fully captures the Complainant's trademark. The TLD ".online", which is a mere technical element, does not bear any influence upon the likelihood of confusion resulting from such capture.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name "would require complainant to prove a negative, a difficult, if not impossible, task." Thus, in that decision, the panel opined that "[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion." Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
In the present case, the Complainant is the owner of the trademark TEXAS CAPITAL BANK. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Absent any Response, there is no doubt in the Panel's opinion that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name that is passively held. This is all the more obvious in that the Respondent himself did consent to the transfer of the domain name in favor of the Complainant in its email of May 28, 2018, a circumstance that points out to the absence of any interest of the Respondent in holding the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
In the present case, the Complainant is the owner of several trademarks consisting in all or in part of the terms "Texas Capital Bank". The Respondent was obviously aware of the Complainant's trademarks at the time of registration of the disputed domain name. This is all the more obvious than the Respondent registered more than 300 domain names under the TLD ".online", the majority of which incorporate trademarks of well-known businesses, notably of various banking institutions around the world. As a result, the Panel holds that the disputed domain name was registered in bad faith.
The Panel finds it hard to find any plausible explanation as to how the disputed domain name could have been or be used by the Respondent in good faith. The Respondent rather clearly has engaged in a pattern of conduct in registering under the TLD ".online" more than 300 domain names consisting of third parties' trademarks, a conduct which, by itself, is considered as a use in bad faith, as it clearly demonstrates an attempt to disrupt and most likely sell the concerned domain names to the legitimate right holders.
The Respondent having defaulted did not in any case allege otherwise, and rather supported this view in consenting himself to the transfer of the disputed domain name in favor of the Complainant in his email of May 28, 2018.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of 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.
Philippe Gilliéron
Sole Panelist
Date: July 16, 2018
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