Complainant is Community Trust Bancorp, Inc., United States of America (“United States”), represented by KING & SCHICKLI, PLLC, United States.
Respondent is Fred Fazili, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2020. On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2020, 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 April 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 1, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 13, 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 Complainant is a publicly traded company that has been providing banking and financial services since 1903. Complainant has continuously used the mark COMMUNITY TRUST (“Complainant’s Mark”) in interstate commerce to promote its banking and financial services since at least as early as 1995, including in connection with automobile loan payment services. Complainant owns various United States registrations for the COMMUNITY TRUST trademark, including registration numbers 1,946,537 (registered on January 9, 1996) and 4,751,608 (registered on March 24, 2015). Respondent is located in the United States and registered the disputed domain name Complainant alleges that the disputed domain name is confusingly similar to Complainant’s Mark because it reproduces identically and entirely Complainant’s Mark. Complainant argues that the addition of the generic or descriptive term “financial” is insufficient to distinguish the disputed domain name from Complainant’s COMMUNITY TRUST trademark. On the contrary, Complainant argues that the term “financial” only serves to strengthen the association between the disputed domain name and Complainant’s Mark. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent is not affiliated or associated with Complainant and has never been authorized or licensed to make use of its COMMUNITY TRUST mark. Moreover, Complainant argues that there is no evidence that Respondent might be commonly known by the disputed domain name or that Respondent has formed an entity with the name “Community Trust” or “Community Trust Financial”. Furthermore, Complainant argues that Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services. Even though Respondent had been offering financial services through the disputed domain name before any notice of the instant dispute, Complainant argues that this alone does not support a determination that such offering was bona fide. Such a determination, according to Complainant, would permit Respondent to rely on his intentional infringement of Complainant’s Mark as a legitimate interest, an interpretation contrary to the intent of paragraph 4(c)(i) of the Policy. Complainant further submits that Respondent is not making a legitimate noncommercial or fair use of the domain name, but rather is attempting to misleadingly divert consumers who are seeking Complainant’s company for Respondent’s own commercial gain. Complainant also alleges that Respondent has registered and used the disputed domain name in bad faith. Complainant argues that Respondent must have had knowledge of Complainant’s Mark at the time the disputed domain name was registered due to the notoriety of Complainant’s Mark throughout the United States, the existence of valid United States registrations, the complete incorporation of Complainant’s Mark in the disputed domain name, and Respondent’s offering of services identical or highly similar to those offered by Complainant under Complainant’s Mark. Complainant argues that these factors are evidence of Respondent’s bad faith attempt to divert Internet users for commercial gain by attracting users to Respondent’s website through a likelihood of confusion with Complainant’s Mark. 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. With Complainant’s rights in the COMMUNITY TRUST mark 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 Mark. 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. It is also well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Here, Complainant’s COMMUNITY TRUST mark is fully incorporated in the disputed domain name and the addition of the descriptive term “financial” does not prevent a finding of confusing similarity. See Merck KgaA v. Registrant [3644982]: Chen Yan Hua,WIPO Case No. D2011-1010. 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 Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (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 acquired no 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 this case, the Panel finds that the Complainant has made out a prima facie case. In particular, Respondent has not submitted any arguments or evidence to rebut the Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the COMMUNITY TRUST mark in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s offering of goods and services identical to those offered under a trademark he was not authorized, licensed nor permitted to use cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy. A finding to the contrary would run against the intent of paragraph 4(c)(i) of the Policy. See American Eyewear, Inc. v. Thralow, Inc.,WIPO Case No. D2001-0991 (stating “[a]lthough use in connection with the sale of goods and services, is apparent, our inquiry must go further since not all such use qualifies as bona fide use. ‘To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.’” (quoting Ciccone v. Parisi,WIPO Case No. D2000-0847)). Lastly, there is no evidence suggesting that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). 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 the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous United States registrations of the COMMUNITY TRUST mark that long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the COMMUNITY TRUST trademark when he registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Here, the disputed domain name completely incorporates the COMMUNITY TRUST mark and adds the descriptive term “financial”. That the descriptive term directly relates to services offered under Complainant’s Mark only provides further evidence that the registration of the disputed domain was made in bad faith. Respondent also used the disputed domain name in bad faith. The disputed domain name fully incorporates the COMMUNITY TRUST mark and resolved to a website offering services identical to those offered under Complainant’s Mark. There is no evidence that Respondent is associated with any legitimate entity named “Community Trust” or “Community Trust Financial” nor is there any indication that such an entity exists. Thus, Respondent’s use of the disputed domain name constitutes a clear bad faith to attempt to divert Internet users for commercial gain by attracting users to Respondent’s website through a likelihood of confusion with Complainant’s COMMUNITY TRUST mark. 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 Brian J. Winterfeldt
Complainant has provided evidence that it has rights in the COMMUNITY TRUST mark through its United States registrations.
Sole Panelist
Date: May 27, 2020
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