The Complainant is Impact Bank, United States of America (“United States” or “U.S.”), represented by Hovey Williams LLP, United States.
The Respondent is Trace Hallowell, 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 April 13, 2021. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2021, 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 April 14, 2021, 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 April 20, 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 the Respondent of the Complaint, and the proceedings commenced on April 21, 2021. In accordance with the Rules, paragraph 5, the parties were notified that the due date for Response was May 11, 2021. On May 10, 2021, the Respondent sought a further extension of time up to and including June 3, 2021, in which to submit its Response. The Center pursuant to paragraph 5(e) of the Rules exceptionally granted an extension of time to the Respondent until May 21, 2021; however, the Respondent after obtaining the extension of time did not reply to the Complainant’s contentions. The Complainant on May 21, 2021, filed an unsolicited submission, denominated as “Complainant’s Second Amended UDRP Complainant.” The Respondent requested a further extension of time in which to reply to the Complainant’s Second Amended Complaint. The Parties thereafter participated in an exchange of emails (copied to the Center) addressing the issues referred to above. The Center appointed William R. Towns as the sole panelist in this matter on June 4, 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 The Complainant is Impact Bank, created in the April 2, 2012 merger of Caldwell State Bank and First National Bank in Wellington,1 and organized in the United States with its principal place of business in the State of Kansas. The Complainant trades under the name IMPACTBANK,2 and has registered IMPACT BANK for use as a trademark with the United States Patent and Trademark Office (“USPTO”), as follows: - IMPACT BANK (word), U.S. Reg. No. 4466955, applied for December 16, 2011, and registered January 14, 2014 (first use in commerce April 1, 2012); and The disputed domain name was registered by the Respondent on May 19, 2004.. The Complainant has submitted screen shots captured by the Internet Archive (the “Wayback Machine”) documenting the Respondent’s redirection of the disputed domain name to the Farmers and Merchants State Bank website (“www.onlinebanking.farmers”) and the Conway Bank website (“www.conwaybank.com”) over a period of several years. The Panel observes that Conway Bank recently acquired Farmers and Merchants State Bank. The Respondent at this time appears to have discontinued the redirection of the disputed domain name to the Conway Bank website. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s IMPACT BANK mark. The Complainant observes that the disputed domain name is comprised entirely of the Complainant’s registered IMPACT BANK mark, and explains that the absence of any space between the words “impact” and “bank” in the disputed domain name is irrelevant to the determination whether confusing similarity exists. The Complainant asserts that the Respondent has not demonstrated rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not been licensed or otherwise authorized to use the Complainant’s IMPACT BANK mark. The Complainant contends that the Respondent prior to any notice of the dispute has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant maintains instead that the Respondent has used the disputed domain name, which misappropriates the Complainant’s well-known and respected IMPACT BANK mark, to redirect Internet users to the Conway Bank website. The Complainant reiterates that the Respondent’s banking services compete directly with those of the Complainant, and emphasizes that the Respondent’s website does not provide a disclaimer of any affiliation with or endorsement of the Complainant. The Complainant asserts that the Respondent thus cannot legitimately claim to be making either a bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name within the meaning of the Policy. The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent was on constructive notice of the existence of the Complainant’s IMPACT BANK mark prior to the registration of the disputed domain name, but chose to register the disputed domain name in bad faith. The Complainant further contends that bad faith can be found as a search by the Respondent of the USPTO’s Principal Register would have revealed the Complainant’s registered mark. The Complainant also maintains that the geographic proximity of the Complainant’s principal place of business to the Respondent’s location can be used to mislead local consumers, observing that the Respondent has engaged in bad faith conduct to misdirect local consumers to its own competing business. Further, according to the Complainant, the Respondent registered the disputed domain name in bad faith fully knowledgeable of the Complainant’s IMPACT BANK marks, and has continuously used the disputed domain name in bad faith ever since. The Complainant further asserts that the Respondent is using the disputed domain name in an attempt for commercial gain to attract Internet users by creating a likelihood of confusion with the Complainant’s IMPACT MARK as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. B. Respondent The Respondent requested and obtained an extension of time from the Center in which to file its Response to the Complaint, but did not file with the Center a Response to the Complaint. 6. Preliminary Procedural Issue: Parties’ Supplemental Submissions As previously noted, the Complainant on May 21, 2021, submitted to the Center an unsolicited supplemental submission entitled “Complainant’s Second Amended UDRP Complaint”, with additional exhibits. The Respondent on June 8, 2021, filed an unsolicited supplemental submission entitled “ Motion to File Response to Second Amended Complaint”, including multiple exhibits and a sworn affidavit. No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent without leave from the panel. Paragraph 12 of the Rules provides that a panel may request, in its sole discretion, further statements or documents from either of the parties. The Rules and relevant UDRP panel decisions however demonstrate a decided preference for single submissions by the parties absent exceptional circumstances. See, e.g., Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield,WIPO Case No. D2008-0754. And unsolicited supplemental filings are generally discouraged unless specifically requested by the panel. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraphs 4.6 & 4.7 (and relevant decisions cited therein). UDRP panels on occasion have accepted unsolicited supplemental submissions in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission (see Top Driver, Inc., v. Benefits,WIPO Case No. D2002-0972); to bring new and highly relevant legal authority not previously available to the attention of the panel (see Pet Warehouse v. Pets.Com, Inc.,WIPO Case No. D2000‑0105); or to rebut arguments of the opposing party that could not reasonably have been anticipated (see Randan Corp. v. Rapazzini Winery,WIPO Case No. D2003-0353). The Panel after due consideration of the Complainant’s proffered Second Amended UDRP Complaint, and in light of the Panel’s findings set forth below, concludes that the Complainant has not brought forth any new and pertinent evidence that was not reasonably available to the Complainant either at the time the Complaint initially was filed on April 13, 2021, or subsequently when the Complainant submitted without leave its unsolicited “Second Amended UDRP Complaint” on May 21, 2021. Accordingly, the Complainant’s unsolicited supplemental submission filed on May 21, 2021 has not been accepted by the Panel and has not been considered by the Panel in reaching a decision in this case. The Respondent’s Motion to File Response to Second Amended Complaint filed on June 8, 2021 is moot, and also has not been considered by the Panel in reaching a decision in this case. 7. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber‑Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview 3.0, section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name In this case, the Complainant’s mark is clearly recognizable in the disputed domain name.4 Top-Level Domains (“TLDs”), in this case “.com”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.5 The Panel notes that the Respondent registered the disputed domain name some seven (7) years before the Complainant acquired trademark rights in its IMPACT BANK mark. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy.6 However, as discussed further in detail under section D, when a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant likely be able to prove a respondent’s bad faith.7 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The record reflects that the disputed domain name was registered by the Respondent on May 19, 2004, approximately seven (7) years prior to the Complainant’s adoption and first use of its IMPACT BANK mark in early 2011. At some later date, the Respondent began redirecting the disputed domain name to the websites of the Conway Bank and Farmers and Merchants State Bank (now Conway Bank). Insofar as the record reflects, the Complainant presently competes directly with Conway Bank and others for banking business, and the Respondent’s redirection of the disputed domain potentially could result in the disruption of the Complainant’s banking operations as well as causing confusion and inconvenience for the Complainant’s banking customers. The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Nor can the Respondent claim to be making a legitimate noncommercial or fair use of the disputed domain given the Respondent’s deliberate redirection of the the disputed domain name to the website of the Conway Bank. And there is no indication in the record that the Respondent at any time has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004‑0230. The Panel concludes that the Complainant has failed to carry its burden of demonstrating bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent registered the disputed domain name in 2004, before the Complainant – according to its own website – first used (and registered) the IMPACT BANK mark .8 While the registration of a domain name before a complainant has acquired trademark rights does not preclude the complainant’s standing to file a UDRP case, only in exceptional circumstances will a complainant likely be able to establish a respondent’s bad faith. Such exceptional circumstances simply are not present in this case.9 The Complainant has presented no evidence that suggests the Complainant possessed nascent rights in the IMPACT BANK mark prior to the Respondent’s registration of the disputed domain name in 2004, or that the Respondent would have been aware of the pending merger between two banks to form the Complainant. See Avenue 81, Inc. v. Karly Payne,WIPO Case No. D2014-1825. Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy. The Panel does note that the conduct of the Respondent of redirection clearly targets the Complainant (and its partners in its now-merged bank) in bad faith, and moreover that the Respondent has run afoul of the second UDRP element, and moreover that there may be other avenues for the Complainant such as a court; however, under the UDRP the Complainant has not met the requirements of the third element. 8. Decision For the foregoing reasons, the Complaint is denied. William R. Towns 1 See https://www.impact-bank.com/about_us/bank_profile. 2 According to the Complainant “the name 'Impact Bank' was chosen to communicate the historic and ongoing commitment to positively impact the financial lives of our customers.” See the Complainant’s website at “www.impact-bank.com”. 3 See WIPO Overview 3.0, section 1.7. 4 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy. 5 See WIPO Overview 3.0, section 1.11.2 and cases cited therein. 6 See WIPO Overview 3.0, section 1.1.3 and cases cited therein. 7 Id. See generally WIPO Overview 3.0, sections 3.1, 3.2.1, and 3.8. 8See https://www.impact-bank.com/about_us/bank_profile, stating: “Impact Bank was created by the April 2, 2012 merger of Caldwell State Bank and First National Bank in Wellington.” 9 See WIPO Overview 3.0, section 3.8.
- IMPACT BANK (design plus words), U.S. Reg. No. 4677156, applied for April 2, 2012, and registered January 27, 2015 (first use in commerce April 1, 2012).
Sole Panelist
Date: June 25, 2021
Full & Egal Universal Law Academy