First Republic Bank v. Host Master / Transure Enterprise Ltd
Claim Number: FA2003001887104
Complainant is First Republic Bank (“Complainant”), represented by Garner Weng of Hanson Bridgett LLP, California, USA. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firsrepublic.com>, registered with Above.com Pty 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2020; the Forum received payment on March 5, 2020.
On March 9, 2020, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <firsrepublic.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 2020 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@firsrepublic.com. Also on March 17, 2020, 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 April 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
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 Uniform Domain Name Dispute Resolution Policy (the "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 ICANN Policy, ICANN 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a bank and wealth management company that offers personal banking, business banking, as well as trust and wealth management services, catering to low-risk high net-worth clientele.
Complainant has rights in the FIRST REPUBLIC mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <firsrepublic.com> domain name is confusingly similar to Complainant’s FIRST REPUBLIC mark. Respondent incorporates the mark in its entirety with the misspelling of “FIRST” into “FIRS” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <firsrepublic.com> domain name as Respondent is not commonly known by the at-issue domain name nor did Complainant authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s resolving domain name resolves to a webpage that alerts users that malware is installed on the users’ device.
Respondent registered and used the <firsrepublic.com> domain name in bad faith as Respondent has engaged in a pattern of bad faith registration and use. Respondent attempts to create a likelihood of confusion with Complainant. Respondent’s disputed domain name resolves to a webpage that reports malware. Respondent engages in the practice of typosquatting by having the at-issue domain name consist of a minor misspelling of Complainant’s FIRST REPUBLIC mark. Respondent also had actual knowledge of Complainant’s rights in the mark due to the long-standing use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FIRST REPUBLIC mark through its registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its FIRST REPUBLIC trademark.
Respondent’s at-issue domain name addresses a variety of websites including at least one that alerts internet users that the users’ computer is infected with malware and others that offer security software for sale.
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.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its FIRST REPUBLIC mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.)
Respondent’s at-issue <firsrepublic.com> domain name consists of Complainant’s entire FIRST REPUBLIC trademark less its domain name impermissible space and its letter “t” with the resulting string followed by the top-level domain name “.com”. The slight differences between the domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that the at-issue domain name is confusingly similar to Complainant’s FIRST REPUBLIC mark. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also, F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent contrary evidence of Policy ¶ 4(c) circumstances, or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Host Master / Transure Enterprise Ltd.” and there is no evidence in the record which suggest that the Respondent is known by the at-issue domain name. Therefore, the Panel concludes for the purposes of Policy ¶ 4(c)(ii)that Respondent is not commonly known by the at-issue domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <firsrepublic.com> domain name has been used to address a webpage that alerts users that malware is installed on the computer accessing such webpage. Respondent’s use of the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain name.
Respondent’s <firsrepublic.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Complainant shows that Respondent has suffered multiple adverse UDRP decisions. See State Farm Mut. Auto. Ins. Co. v. Transure Enter. Ltd., FA 1176762 (Forum Apr. 14, 2008); see also, Baylor Univ. v. Transure Enter. Ltd., FA 1220900 (Forum Aug. 22, 2008); see also, Bank of America Corporation v. Transure Enterprise Ltd c/o Host Master, FA1002001305972 (Forum April 12, 2010). These decisions show that Respondent has a pattern of cybersquatting under Policy ¶ 4(b)(ii). Respondent’s pattern of bad faith domain name registration and use of confusingly similar domain names suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Travelocity.com LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”); see also, DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”).
Next, Respondent uses the at-issue domain name to fool internet users into believing the <firsrepublic.com> domain name and its addressed webpage are affiliated with Complainant when they are not thereby indicating Respondent’s bad faith registration and use of the <firsrepublic.com> domain name pursuant to Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain).
Additionally and as mentioned above, Respondent’s at-issue domain name addresses a webpage that alerts visitors that malware has been installed on their computers. Use of the domain name to install malware or even to falsely claim that malware has been installed on a user’s computer further evidences Respondent’s bad faith registration and use per Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Tulip Trading Company, FA 1745162 (Forum Sept. 25, 2017) (“The Panel finds such Virus threats, real or not, to the computer of an unsuspecting Internet user not only competitive but even more damaging to Complainant’s good will than the complained of conduct. The Panel finds that Complainant satisfied Policy ¶¶ 4(b)(iii) or (iv).”); see also, Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
Respondent is also engaging in typosquatting. Respondent formed the at-issue domain name, inter alia, by striking the letter “t” from Complainant’s mark. At a glance, the at-issue second-level domain name looks much like Complainant’s trademark. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain. The registrant hopes that internet users will: 1) inadvertently type the malformed string when searching for content related to the domain name’s target trademark; and/or 2) in viewing the domain name will confuse the domain name with its target trademark. The registrant then may use the confusion to inappropriately capitalize on the target mark’s goodwill. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent had actual knowledge of Complainant’s rights in the FIRST REPUBLIC mark when it registered <firsrepublic.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and its overt misspelling of the mark in the at-issue domain name. Respondent’s registration and use of a confusingly similar domain name with prior knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firsrepublic.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 12, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page