The Complainant is FineMark Holdings, Inc., United States of America (“United States”), represented by Hahn Loeser & Parks LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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 November 15, 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 amendment to the Complaint on November 29, 2021.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on December 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.
The Center appointed Elise Dufour as the sole panelist in this matter on January 18, 2022. 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 BackgroundThe Complainant, FineMark Holdings, Inc., is a financial service provider engaged in banking, trust, and investment offerings, operating in the states of Florida, Arizona, and South Carolina, United States.
It has been in business continually under the FineMark National Bank & Trust brand since 2007.
The Complainant owns several trademark registrations in many countries including inter alia the following trademarks:
Country/Territory
Registration No.
Mark
Classes
Date of Registration
United States
5279470
FINEMARK
35, 36
September 5, 2017
United States
3871372
FINEMARK FINANCIAL SERVICES
36
November 2, 2010
United States
3570323
FINEMARK NATIONAL BANK & TRUST
36
February 3, 2009
Further, the Complainant is the owner of the domain name
The disputed domain name,
At the time of the Complaint, the disputed domain name directed to a website stating that “ this site is not secured, this might mean that someone is trying to fool you or steal any info you send to the server”.
5. Parties’ Contentions A. ComplainantThe Complainant contends that (i) the disputed domain name is confusingly similar to the Complainant’s trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith.
(i) The Complainant claims that the disputed domain name is confusingly similar to its trademarks and is nearly identical to its domain name, the Complainant’s trademark FINEMARK being reproduced in association with the word “bank” which directly directs to the Complainant’s services. For the Complainant, the registration of the disputed domain name with the prefix “www” is a clear case of typosquatting, noting its main website.
(ii) The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name: the Complainant has not sponsored or otherwise permitted the Respondent to use its trademark FINEMARK. The Respondent is not commonly known by the disputed domain name. Finally, the Complainant stresses that the case involves typosquatting, which is further evidence of the Respondent lacking any rights or legitimate interests.
(iii) The Complainant considers that the Respondent could not have ignored the existence of the Complainant’s trademarks at the time the disputed domain name was registered. The Complainant also claims that the Respondent’s use of the disputed domain name is made in bad faith, as the Respondent acquired and is using the disputed domain name to attract Internet users by creating a likelihood of confusion with the Complainant’s earlier marks. In addition, for the Complainant, typosquatting cases are per se evidence of Respondent’s bad faith.
(iv) The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
i) the disputed 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 in respect of the disputed domain name; and
iii) the disputed domain name was registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe Complainant submitted evidence, which establishes rights in the FINEMARK trademarks listed above.
The disputed domain name wholly incorporates the Complainant’s trademark FINEMARK and incorporates the element BANK from the Complainant’s trademark FINEMARK NATIONAL BANK & TRUST. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademarks.
Furthermore, the failure of the Respondent to include the required period between “www” and “finemarkbank.com” constitutes clear case of typosquatting when considering the Complainant’s use of its website at “www.finemarkbank.com”.
Finally, the Panel finds that the addition of the word “bank” to the trademark FINEMARK, referring directly to the Complainant’s activity, does not prevent a finding of confusing similarity under the first element.
Indeed, as long established, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), in this case the term “bank”, does not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, the burden of production then shifts to the Respondent, which has then to demonstrate rights or legitimate interests in the disputed domain name.
On the basis of the submitted evidence, the Panel considers that the Complainant has successfully established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name: The Respondent is not commonly known under the disputed domain name, nor owns any registered rights on the disputed domain name or has been authorized by the Complainant to use the prior trademarks in any way. The disputed domain name consists of the prefix “www”, the Complainant’s FINEMARK trademark, and the term “bank”, which is descriptive of the Complainant’s services. The Panel finds that such composition carries a risk of implied affiliation, reinforced given the Complainant’s use of the website “www.finemarkbank.com”, which cannot constitute fair use under the circumstances of this proceeding. See section 2.5.1 of the WIPO Overview 3.0.
The Panel does not find any indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or has rights or legitimate interests in any other way in the disputed domain name. On the contrary, the disputed domain name redirects to a website indicating that “this site is not secured, this might mean that someone is trying to fool you or steal any info you send to the server”.
Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise.
Given these circumstances, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad FaithWith regard to the registration of the disputed domain name, the Panel finds that at the time of the registration, the Respondent knew or should have been aware of the existence of the Complainant’s trademarks and activities. Indeed, given the fact that the Complainant’s trademark FINEMARK is incorporated in the disputed domain name together with the descriptive term “bank”, which refers to the Complainant’s activity, the Respondent cannot credibly claim to have been unaware of the existence of the Complainant’s trademarks.
Furthermore, the Respondent’s efforts to conceal its identity through the use of a WhoIs proxy service can be construed as further evidence that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.6).
Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.
As for use of the disputed domain name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant, and the brief verification carried out by the Panel of the website associated with the disputed domain name, the Panel is satisfied that the disputed domain name is used in bad faith.
Indeed, the Complainant provided evidence that the website to which the disputed domain name resolves contains potentially dangerous content.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
Therefore, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).
7. DecisionFor 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,
Elise Dufour
Sole Panelist
Date: February 1, 2022