Complainant is Helm Bank USA, United States of America (“United States”), internally represented.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Abubakar Mustapha, Defuller Inc., Nigeria. 2. The Domain Name and Registrar
The disputed domain name < helmbankusaonline.com> is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2019. On August 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 9, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 30, 2019.
The Center appointed Wilson Pinheiro Jabur, Brian J. Winterfeldt, and Ike Ehiribe as panelists in this matter on October 30, 2019. The Panel finds that it was properly constituted. Each member of 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
Complainant is a banking institution from the United States insured by the Federal Deposit Insurance Corporation (“FDIC”). It is the owner of the United States registrations for the HELM BANK USA and HELM BANK USA and Design trademarks (Reg. Nos. 4224429 and 4224430) (“Complainant’s Marks”), which were both registered on October 16, 2012. Complainant started using its Marks in May 2009.
The disputed domain name According to Complainant, the disputed domain name is identical or confusingly similar to Complainant’s Marks. As to the absence of rights or legitimate interests, Complainant argues that: i. Complainant has not licensed nor allowed Respondent to use its trademark for any purpose; ii. Respondent has used the disputed domain name to mimic Complainant’s website so as to gain access to Complainant’s customers personal information and conduct fraudulent activities (spoofing); iii. Respondent has not registered trademarks relating to the term “HELM BANK USA” and there is no evidence of Respondent’s bona fide use or intent to use the disputed domain name other than for spoofing Complainant’s website with the intent to mislead Complainant’s customers, which cannot be considered a legitimate interest. Complainant asserts that Respondent’s knowledge of Complainant’s Marks is evident, in view of the reproduction of Complainant’s website and that such spoofing is in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, 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.” Thus, even though Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the HELM BANK USA and HELM BANK USA and Design marks through its United States registrations. With Complainant’s rights in the HELM BANK USA and HELM BANK USA and Design marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”)) is identical or confusingly similar to Complainant’s marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. Here, Complainant’s mark HELM BANK USA is fully incorporated in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are: (i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or (iii) the respondent is 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. In that sense, Complainant indeed states that it has not licensed nor allowed Respondent to use its trademark for any purpose. Also, the absence of any trademarks or trade names registered by Respondent corresponding to the disputed domain name, or any possible link between Respondent and the disputed domain name, which can be inferred from the record, corroborate the absence of rights or legitimate interests. Respondent has used the disputed domain name to reproduce Complainant’s official website in connection with a fraudulent scheme seeking to obtain Complainant’s customers’ personal information. This activity cannot be considered a bona fide offering of goods or services nor legitimate noncommercial or fair use under the Policy. Accordingly, the Panel finds that Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, bad faith can be found in both the registration and use of the disputed domain name, in view of the reproduction of Complainant’s official website in connection with what appears to be fraudulent purposes to collect Internet users’ personal data. Respondent’s use of the disputed domain name not only clearly indicates full knowledge of Complainant’s trademark but also an attempt of misleadingly diverting consumers for its own commercial gain, possibly in connection with fraudulent financial activities. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraph 4(b)(iv) 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 Wilson Pinheiro Jabur Brian J. Winterfeldt Ike Ehiribe
Presiding Panelist
Panelist
Panelist
Date: November 14, 2019
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