Complainant is Signature Bank, United States of America (“United States” or “US”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Contact Privacy Inc. Customer 1246989552, Canada, / Win Aks, 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 December 30, 2020. On December 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 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 Complainant on January 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 12, 2021. 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 Respondent of the Complaint, and the proceedings commenced on January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 9, 2021. The Center appointed Scott R. Austin as the sole panelist in this matter on February 25, 2021. 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 states in its Complaint and provides evidence in the respective annexes sufficient to support that Complainant is a New York-based full-service commercial bank operating under the trademark SIGNATURE BANK (the “SIGNATURE BANK Mark”) with 31 private client offices throughout the New York metropolitan area. Founded in 2001, Signature Bank has grown to USD 50.62 billion in assets under management and become one of the top 40 largest banks in the US, based on deposits. It was also ranked second nationally in the National Law Journal’s 2019 “Best of” survey under the categories of Business Bank, Private Banking Services and Attorney Escrow Service. Complainant has secured ownership of a number of trademark registrations for the SIGNATURE BANK Mark across various jurisdictions, including but not limited to the following: United States Trademark Registration No 5216114, SIGNATURE BANK, registered on June 6, 2017 for a range of banking services, including financing services; financial asset management; investment consultation services and on-line banking services, and claiming a first use date of May 1, 2001. United States Trademark Registration No. 4132120, SIGNATURE BANK, registered on April 24, 2012 for a range of services, including investment banking and mortgage banking, and claiming a first use date of February 10, 2012. Since September 25, 2000, Complainant has continuously used its domain name The disputed domain name was registered on April 20, 2020. As of the date of filing of the Complaint, the disputed domain name was being used to redirect internet users to a website that resolves to a blank page and lacks content. The disputed domain name has been used, however, to conduct fraudulent email activity to impersonate Complainant attempting to obtain payments and information from Complainant’s customers through a phishing scheme, as shown in the record submitted by Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 has been registered and is being used in bad faith. The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a 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 demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the SIGNATURE BANK Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The disputed domain name incorporates both Complainant’s SIGNATURE BANK Mark and the geographically descriptive term, “NY”, appended to it as found in Complainant’s domain name Prior UDRP panels have found typographic differences, such as the inclusion or omission of hyphens and apostrophes are inadequate to avoid a finding of confusing similarity. See, e.g., L’Oreal v. Tracey Johnson,WIPO Case No. D2008-1721. Similarly, the addition of the Top-Level domain (“TLD”) “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v thamer Ahmed Alfarshooti,WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11. The Panel finds therefore, that the disputed domain name is confusingly similar because it incorporates Complainant’s registered SIGNATURE BANK Mark in its entirety and remains recognizable within the disputed domain name. Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally, deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Respondent is in default and thus has not attempted to come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c). Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts it has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names. Second, Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s trademark. Prior UDRP panels have held, that in the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. See Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875. Complainant also shows that Respondent is not commonly known by the disputed domain name because the pertinent WhoIs information identifies the Registrant as “Contact Privacy Inc. Customer 1246989552 / Contact Privacy Inc. Customer 1246989552”, which does not resemble the disputed domain name in any manner. A respondent not commonly known by the disputed domain name evinces a lack of rights or legitimate interests. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008- 0642. Since there is no evidence here, including the WhoIs record for the disputed domain name, suggesting that Respondent is commonly known by the disputed domain name, Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No.. D2004-1049. It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857. Respondent’s use of the Domain Name at the filing of the Complaint is to redirect internet users to a website that resolves to a blank page and lacks content. Prior UDRP panels have held such failure to make use of a disputed domain name’s website or to demonstrate any attempt to make legitimate use of the domain name and website to evince a lack of rights or legitimate interests in the disputed domain name. See Philip Morris USA Inc. v. Muhammad Faisal,WIPO Case No. D2016-0621. Complainant next contends and has provided evidence in the Annexes to its Complaint showing Respondent’s use of the disputed domain name in connection with fraudulent email activity to impersonate Complainant as part of a phishing scheme to extract payment and financial information from Complainant’s customers. This evidence submitted supports Complainant’s argument that by utilizing the entirety of Complainant’s SIGNATURE BANK Mark along with the geographical term “ny”, inserting only a hyphen in between them, Respondent is clearly attempting to mislead Complainant’s business associates into believing that the emails sent from the disputed domain name are associated with Complainant. Prior UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See, WIPO Overview 3.0, section 2.13. See also, Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature,WIPO Case No. D2020-0955. Furthermore, prior UDRP panels have held that domain names that are identical to a complainant’s trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See, WIPO Overview 3.0, section 2.5.1. In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that because Respondent has created a domain name that is confusingly similar to Complainant’s SIGNATURE BANK Mark, as well as its The Panel also notes here additional factors under section 3.1.4 and its cases from which the Panel may infer bad faith registration: (i) Respondent’s incorporation of the suffix “ny” in the disputed domain where “NY” is an abbreviation for New York used by Complainant to refer to its base of operations with 31 private client offices throughout the New York metropolitan area, (ii) Complainant’s official website for Complainant’s banking services is accessed at “www.signaturebankny.com”, a strikingly similar string, which suggests Respondent targeted Complainant’s mark when it picked the disputed domain name inserting only a hyphen’s difference in Bad faith use is also clear from Respondent’s illegal conduct as discussed in detail in section 6.B. above, sending fraudulent emails under the name of bank officials suggesting an affiliation with Complainant to solicit sensitive, financial information from unsuspecting bank customers for Respondent’s commercial gain. See, WIPO Overview 3.0, section 3.1.4; see also, Accenture Global Services Limited v. Yankee, Yankees,WIPO Case No. D2018-0217 and BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson,WIPO Case No. D2016-0364. For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden 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 Scott R. Austin
Sole Panelist
Date: March 11, 2021
Full & Egal Universal Law Academy