Bankers Trust Company, BTC Financial Corporation, & BTC Capital Management v. Jerlene McElroy
Claim Number: FA1910001868981
Complainants are Bankers Trust Company, BTC Financial Corporation, & BTC Capital Management (“Complainants”), represented by Matthew A. Warner of Davis, Brown, Koehn, Shors & Roberts, P.C., Iowa, USA. Respondent is Jerlene McElroy (“Respondent”), New Hampshire, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <btccapital.us>, registered with Web Commerce Communications, Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainants submitted a Complaint to the Forum electronically on October 29, 2019; the Forum received payment on October 29, 2019.
On October 30, 2019, Web Commerce Communications, Ltd. confirmed by e-mail to the Forum that the <btccapital.us> domain name is registered with Web Commerce Communications, Ltd. and that Respondent is the current registrant of the name. Web Commerce Communications, Ltd. has verified that Respondent is bound by the Web Commerce Communications, Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@btccapital.us. Also on October 31, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2019, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
On November 22, 2019, the Panel issued an Order For Additional Submissions And Extending Time For Rendering A Decision. On November 27, 2019, Complainants submitted the requested additional evidence.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy ("Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainants request that the domain name be transferred from Respondent to Complainants.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are three named Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Here, the Complaint notes that BTC Capital Management and BTC Financial Corporation are affiliates of Bankers Trust Company used for purposes of providing banking and financial services and for holding intellectual property, respectively. As such, the Panel finds that there exists a sufficient nexus between these companies such that this case may proceed with all three named Complainants.
A. Complainant
Complainants are widely recognized as a source of high-quality banking and financial services. Complainants have rights in the BTC CAPITAL MANAGEMENT mark through its use in commerce dating back to 2004 and through registration of the mark with the United States Patent and Trademark Office (“USPTO”) on Oct. 5, 2010.[i] Respondent’s <btccapital.us> domain name, registered on July 15, 2019, is confusingly similar to Complainant’s BTC CAPITAL MANAGEMENT mark as it incorporates most of the mark, merely omitting the descriptive term “management”, and adding the “.us” country code top-level domain (“ccTLD”). Further, there have been instances of actual confusion in which Complainants have received emails inquiring about crypto currencies as well as one instance in which a man visited Complainants’ building to inquire about crypto currencies and was subsequently arrested for trespassing after he refused to leave.
Respondent has no rights or legitimate interests in the <btccapital.us> domain name. Respondent is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to attract users to a website where it purports to operate a crypto currency trading scheme that is related to the financial services provided by Complainants. The website also solicits users’ personal information.
Respondent registered and uses the <btccapital.us> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where it operates a crypto currency trading site – services that are related to Complainants’ financial activities – and which solicits personal information from users. Respondent’s website also displays the address of an unrelated third-party company named BTC Capital, LLC and the WHOIS record for the disputed domain name displays the address of a restaurant that is also unrelated to Complainants. Complainants contacted the owners of BTC Capital, LLC asserting trademark claims and BTC Capital, LLC subsequently dissolved itself as a business entity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
In response to a request from the Panel, Complainants submitted evidence of their relationship to the party named in the submitted trademark registration certificate, a missing annex to an affidavit previously submitted, and evidence to support Complainants’ claim that its asserted trademark has been widely recognized and developed goodwill.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainants claims rights in the BTC CAPITAL MANAGEMENT mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainants’ registration of the BTC CAPITAL MANAGEMENT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainants next argue that Respondent’s <btccapital.us> domain name is confusingly similar to the BTC CAPITAL MANAGEMENT mark as it differs only by the absence of the descriptive term “management” from the mark. It also adds the “.us” ccTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The Panel therefore determines that the <btccapital.us> domain name is confusingly similar to the BTC CAPITAL MANAGEMENT mark per Policy ¶ 4(a)(i).
Complainants must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainants argue that Respondent has no rights or legitimate interests in the <btccapital.us> domain name, as Respondent is not commonly known by the disputed domain name, nor have Complainants authorized Respondent to use the BTC CAPITAL MANAGEMENT mark in any way. In considering this issue, WHOIS information can help inform a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the disputed domain name as “Jerlene McElroy,” and no information in the record indicates that Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainants’ mark. The Panel therefore finds, under Policy ¶ 4(c)(iii), that Respondent has not been commonly known by the <btccapital.us> domain name.
Complainants further argue that Respondent’s lack of rights or legitimate interests in the <btccapital.us> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainants contend instead that the name resolves to a website that purports to be from Complainants and offers crypto currency-related services and that also solicits certain personal information from users who visit the site. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(ii) or (iv). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) Furthermore, use of a domain name in furtherance of phishing may also demonstrate a lack of rights or legitimate interests. See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”) Specifically, Complainants claim the at-issue domain name resolves to a website upon which Respondent claims to be “BTC CAPITAL,” which offers crypto currency trading and exchange services. Complainants also note, and submit evidence, that there are certain rather suspicious elements of Respondent’s website and disputed domain name. Specifically, the WHOIS record for the domain name lists a contact address in Manchester New Hampshire that is actually the location of a bar and grill restaurant. Next, there is a commercial office building that has no listing for any business with a name that resembles “BTC Capital” at the address listed on Respondent’s website under “Contact Info”. Finally, Complainants identified a Florida business entity named BTC Capital LLC but, upon contacting its owners and asserting its trademark rights, determined that this entity has no relationship at all to Respondent. This business entity was subsequently and voluntarily dissolved by its owners. Complainants argue that the website gives the false impression that it is affiliated with, and authorized by, Complainants and Respondent has not submitted any evidence nor participated in this case to challenge Complainants. As such, the Panel determines that Complainants have made an undisputed prima facie case that Respondent does not have rights or legitimate interests in the <btccapital.us> domain name.
Complainants assert the USPTO registration of the BTC CAPITAL MANAGEMENT mark and claim that the mark is “widely recognized” and has developed “consumer and industry recognition and goodwill”. They further claim that Respondent’s use of the disputed domain name is “infringing” and is “knowing, willful, and intentional” although no evidence is provided of Respondent’s actual knowledge of Complainants’ mark. While not asserted by the Complainants, the Panel notes that both the Complainants and Respondent are located in the United States and so Complainants’ USPTO registration raises the issue of constructive notice of trademark rights. UDRP case precedent typically declines to find bad faith as a result of constructive notice, however, where the parties are both located in the United States and the complainant has obtained a federal trademark registration predating the relevant domain name registration – panels have been prepared to apply the concept of constructive notice. See WIPO Overview 3.0, par. 3.2.2. Also Leite’s Culinaria, Inc. v. Gary Cieara, D2014-0041 (WIPO Feb. 25, 2014) (“under 15 USC §1072, registration of Complainant’s mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.”) As both parties to this dispute are US-based and the doctrine of constructive notice is recognized under US law, the Panel finds it reasonable to apply the principle in this case. Furthermore, Complainants have provided an affidavit of the Corporate Communications Officer for BTC Capital Management, Inc. (“BTCCM”) who states that this company is “one of the biggest investment advisory firms in the United States” and who attaches images of a recent Annual Report and marketing materials. This affidavit further notes that BTCCM has been “widely recognized in the market as a leader in its field” as evidenced by its receipt of certain awards and recognition. Upon consideration of all of the evidence in this case, and in the absence of any Response or other submission by Respondent, the Panel finds it more likely than not that Respondent had either constructive or actual notice of Complainants’ mark when it registered the disputed domain name.
Complainants further claim that Respondent’s use of the <btccapital.us> domain name to pass itself off as Complainants in order to compete with Complainants’ business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”) Furthermore, use a domain name to pass oneself off in furtherance of phishing may also indicated bad faith under Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Complainants claim the disputed domain name resolves to a website upon which Respondent claims to be “BTC CAPITAL” offering crypto currency exchange and trading services. One page of this website contains a “Contact Us” page in which users are invited to input their name, email address, phone number, and a message. While there is no direct evidence that this contact form is used for a phishing scheme, the other facts of this case suggest that it is likely not used for legitimate purposes either.
Complainant further argues that the WHOIS record for this domain name lists a false address which is, in fact, the location of a bar and grill restaurant. The provision of false WHOIS information has also been held to support a finding of bad faith. See, Google LLC v. Eunice Hsieh / INAYOSHI DIGITAL MARKETING CO.,LTD., FA 1869451 (Forum Nov. 25, 2019) (“The use of false Whois information obscures the registrant’s true identity and constitutes further evidence of Respondent’s bad faith.”)
In light of the totality of the circumstances in this case, the Panel finds that Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <btccapital.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 2, 2019
[i] The USPTO Trademark Registration certificate submitted into evidence indicates that the owner is an entity named MidAmerica Financial Corporation. Upon request by the Panel, Complainants have further submitted into evidence a copy of the USPTO Trademark Assignment Cover Sheet indicating that the stated Trademark Registration was assigned from MidAmerica Financial Corporation to BTC Financial Corporation as part of a company merger.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page