The Complainant is Community Trust Bancorp, Inc., United States of America (“United States”), represented by King & Schickli, PLLC, United States.
The Respondent is Juwan Park, Community Trust, South Africa. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2020. On January 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2020, 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 February 14, 2020, 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 February 19, 2020. 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 March 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. The Center received three email communications from a third party on March 9, 10, and 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2020. The Center appointed Clive Duncan Thorne as the sole panelist in this matter on April 1, 2020. 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 As provided in the Complaint, the Complainant is a publicly traded company on the NASDAQ stock exchange and is a prominent name in the banking and financial fields. It and its predecessors have provided since 1903 and continue to provide high quality banking and financial services. It has continuously used the mark COMMUNITY TRUST in United States interstate commerce to promote its banking and financial services since at least as early as 1995 and owns the domain name The Complainant’s website, extracts from which are exhibited at Annex 4 to the Complaint, enables customers to conduct general banking and financial services transactions online including paying bills, loan payments, securing credit cards, and completing other financial transactions. The Complainant bases its Complaint upon its ownership of three United States registered trademarks for the mark COMMUNITY TRUST: No. 1,946,537 filed on September 30,1994 and registered on January 9, 1996 in class 36 for banking and financial services; No. 4,751,608 filed on October 10, 2014 and registered on June 9, 2015 in class 9 for mobile applications for banking; and, and No. 5,435,846 filed on April 8, 2016 and registered on April 3, 2018 in class 36 for account services. Copies of the certificates of registration are exhibited at Annexes 1, 2, and 3 to the Complaint respectively. It should be noted that the disputed domain name The Complainant adduces evidence that the Respondent used the disputed domain name in connection with the offering of goods and services on a website purportedly offering banking services in the form of credit card services. Currently, that website appears to be inactive. This can be seen from Annexes 5, 6, and 7 to the Complaint. In the absence of a Response the Panel finds the evidence adduced by the Complainant to be true and proceeds to determine the Complaint accordingly. 5. Parties’ Contentions A. Complainant The Complainant submits: i. that it has registered trade mark rights for COMMUNITY TRUST and that the disputed domain name is confusingly similar to those marks; ii. that the Respondent, on the evidence, has no rights or legitimate interests in the disputed domain name and is seeking to misleadingly divert consumers seeking the Complainant for its own commercial gain whether through the provision of actual services or for “nefarious purposes”; and iii. that the disputed domain name was registered and is being used in bad faith, noting in particular, on the evidence, the Respondent deliberately registered and used the disputed domain name in bad faith, being aware of the Complainant’s mark and business. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The evidence of the Complainant’s trade mark registrations for COMMUNITY TRUST set out in section 4 above establishes that the Complainant has registered trade mark rights for COMMUNITY TRUST. The Complainant submits that the differences between the mark COMMUNITY TRUST and the disputed domain name are minimal, causing the disputed domain name to be confusingly similar to the mark COMMUNITY TRUST. The disputed domain name incorporates “community trust” in its entirety together with the word “bank” and the generic Top-Level Domain (“gTLD”) “.fund”. It is well established that the incorporation of a trade mark in its entirety in the domain name is sufficient to establishing prima facie confusing similarity. The Complainant cites and relies upon a number of earlier UDRP panel authorities in support of this proposition. In this case the addition of the dictionary word “bank”, descriptive of the Complainant’s banking services, to the Complainant’s trade mark does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The other element of the disputed domain name is the gTLD “.fund”. It is long established that the use of a gTLD does not generally distinguish a domain name from a trade mark. See WIPO Overview 3.0, section 1.11. The Panel therefore finds that the Complainant has registered trade mark rights in COMMUNITY TRUST, predating registration of the disputed domain name, and that the disputed domain name is confusingly similar to the mark COMMUNITY TRUST. B. Rights or Legitimate Interests The Complainant points out that it has not licensed or otherwise authorized the Respondent to use the mark COMMUNITY TRUST in a domain name. There is no connection between the Parties as is shown by the Complainant’s commercial concern at the Respondent’s registration of the disputed domain name. The evidence suggests that the Respondent obtained several other domain names for similar banking activity which establishes a prima facie case that the Respondent has no rights or legitimate interests in the domain name in dispute. On the evidence the Respondent is using the disputed domain name to lure customers to its website which as can be seen at Annex 5 to the Complaint advertises identical and overlapping online credit card services to those offered by the Complainant. This is not a bona fide offering of goods or services by the Respondent. In addition, the website at the disputed domain name advertises banking services but does not appear to be an active website. As can be seen by Annexes 6 and 7 the contact information is incomplete and all “action” buttons on the site resolve to various other pages on the site which do not accommodate the “action” noted on the button. The Panel puts its submission in the alternative; that either the website is active and used to direct users to a website that competes with the Complainant which is not a bona fide use or, alternatively, it is inactive which equally demonstrates that the Respondent is not using the disputed domain name for a bona fide offering of goods or services. In support of the latter submission the Complainant points out that the Respondent’s name is “Juwan Park” with an alleged address in Johannesburg, South Africa. “Juwan Park” has no similarity with the disputed domain name. The Complainant adduces evidence suggesting that that Respondent WhoIs contact details are false. In addition, the web page to which the disputed domain name is directed lists contact information for “Community Trust Bank” at a New York address which differs from that in the WhoIs and which fails to provide a street address or working telephone number. In summary the Respondent is using the reference to “Community Trust Bank” to capitalize upon the Complainant’s trade marks for unknown and possibly nefarious purpose which establishes that the Respondent cannot claim a legitimate interest in the disputed domain name. The Panel agrees with this submission. The Panel also finds that on the evidence the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name but is attempting to misleadingly divert consumers who are looking for the Complainant for its own commercial gain. The Panel therefore finds and in the absence of a Response that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s registered trade marks predate the date of registration of the disputed domain name by which date, as a result of its trading activities, the Complainant had acquired considerable goodwill in connection with its banking and financial services activities throughout the United States. The disputed domain name reproduces the mark COMMUNITY TRUST plus the word “bank” and resolves to a website which prominently displays the Complainant’s mark and provides, arguably, identical banking services. It follows, according to the Complainant that the Respondent had the Complainant’s mark in mind at the date of registration of the disputed domain name and therefore “deliberately” registered it in bad faith to take advantage of the Complainant’s goodwill. The Complainant stresses that the Respondent is using the Complainant’s name rather than its own name as the dominant part of the disputed domain name. This is evidence of an intention or “purposeful attempt” to create confusion in the mind of the consumer. It also emphasizes the similar, or as it puts it “identical”, nature of the financial services offered by both Parties. In the Panel’s view this evidence is sufficient to show registration and use of the disputed domain name in bad faith by creating a disruption to the Complainant’s business within paragraph 4(b)(iii) of the Policy as well as an attempt to confuse the Internet user as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website which is evidence of bad faith within paragraph 4(b)(iv) of the Policy. Furthermore, in the view of the Panel, the addition of the word “bank” in the disputed domain name and use of the gTLD “fund”, both descriptive of the Complainant’s services, indicate an intention by the Respondent to target and take unfair advantage of the Complainant’s trademark in bad faith. The Panel therefore finds for the Complainant in respect of this element. 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 Clive Duncan Thorne
Sole Panelist
Date: April 15, 2020
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