Regions Bank v. smartech1811 smartech1811
Claim Number: FA2006001901030
Complainant is Regions Bank (“Complainant”), represented by Rachel M. Hofstatter of Steptoe & Johnson LLP, District of Columbia, USA. Respondent is smartech1811 smartech1811 (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <regions-banks.us> and <regionsbanks.us>, registered with NameCheap, Inc..
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 19, 2020; the Forum received payment on June 19, 2020.
On June 22, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <regions-banks.us> and <regionsbanks.us> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@regions-banks.us, postmaster@regionsbanks.us. Also on June 24, 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 July 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 usTLD 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 usTLD Policy, usTLDRules, 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 is a national leader in consumer and commercial banking. Complainant has rights in the REGIONSBANK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,918,496, registered Sep. 12, 1995). Respondent’s <regions-banks.us> and <regionsbanks.us> domain names are identical or confusingly similar to Complainant’s mark as the second-level domains consist of Complainant's REGIONSBANK mark with the addition of the letter "s" and the ".us" country-code top-level domain ("ccTLD").
Respondent has no rights or legitimate interests in the <regions-banks.us> and <regionsbanks.us> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the <regions-banks.us> domain name and Complainant's mark to purport to advertise competitive services or for phishing. The <regionsbanks.us> domain name does not resolve to an active webpage. Respondent offers to sell the disputed domain names.
Respondent registered and uses the <regions-banks.us> and <regionsbanks.us> domain names in bad faith. In response to Complainant's cease-and-desist letter, Respondent offered to sell the disputed domain names. Respondent uses the disputed domain names to create a likelihood of confusion with Complainant's mark by passing off as Complainant. Respondent passively holds the <regionsbanks.us> domain name. Respondent registered the disputed domain names with full knowledge of Complainant's rights in the mark based on Respondent's attempts to trade off the goodwill of Complainant's mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <regions-banks.us> domain name was registered on January 13, 2020 and the <regionsbanks.us> domain name was registered on November 20, 2019.
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 or 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”).
Complainant asserts rights in the REGIONSBANK mark based on registration of the mark with the USPTO (e.g. Reg. No. 1,918,496, registered Sep. 12, 1995). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel finds that Complainant has established rights in the REGIONSBANK mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <regions-banks.us> and <regionsbanks.us> domain names are identical or confusingly similar to Complainant’s mark as the second-level domains consist of Complainant's REGIONSBANK mark with the addition of the letter "s," a dash, and the ".us" country-code top-level domain ("ccTLD"). Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum March 20, 2017) (“Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). The Panel therefore finds that the <regions-banks.us> and <regionsbanks.us> domain names are confusingly similar to the REGIONSBANK mark under Policy ¶ 4(a)(i).
Complainant asserts Respondent has no rights or legitimate interests in the <regions-banks.us> and <regionsbanks.us> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as "smartech1811 smartech1811,” and there is no other evidence to suggest that Respondent was authorized to use the REGIONSBANK mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(iii).
Complainant argues Respondent fails to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the <regions-banks.us> domain name and Complainant's mark to purport to advertise competitive services or for phishing. Use of a disputed domain name to pass off as a complainant via email may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Emerson Electric Co. v. Adilcon Rocha, FA 1735639 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant provides screenshots of the <regions-banks.us> domain name which display Complainant's mark and branding and is used to offer banking services and prompts users to log in, potentially in furtherance of phishing. Therefore, the Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of this disputed domain name per Policy ¶¶ 4(c)(ii) or (iv).
Complainant argues that Respondent fails to use the <regionsbanks.us> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name does not resolve to an active webpage. The failure to make active use of a disputed domain name may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides a screenshot of the resolving webpage of this domain name which displays the error message "Gateway Timeout." The Panel therefore finds that Respondent does not use this domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Complainant also argues Respondent lacks rights or legitimate interest in the <regions-banks.us> and <regionsbanks.us> domain names as Respondent offers to sell the disputed domain names. Generally, an offer to sell a domain name can indicate a lack of rights or legitimate interest in Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides email correspondence with Respondent in which Respondent invites offers to purchase the domain names. The Panel therefore finds that Respondent lacks rights or legitimate interest in the disputed domain names per Policy ¶ 4(a)(ii).
The Panel further finds that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered or uses the <regions-banks.us> and <regionsbanks.us> domain names in bad faith because, in response to Complainant's cease-and-desist letter, Respondent offered to sell the disputed domain names. Generally, an offer to sell a disputed domain name can be evidence of bad faith registration and use per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent’s only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)); see also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As previously noted, Complainant provides email correspondence with Respondent in which Respondent invites offers to purchase the domain names. The Panel therefore finds evidence that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(i).
Complainant argues Respondent registered and uses the <regions-banks.us> domain name in bad faith because Respondent uses the disputed domain names to create a likelihood of confusion with Complainant's mark by passing off as Complainant. Passing off as a complainant in furtherance of phishing can show bad faith use per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). Complainant provides screenshots of the <regions-banks.us> domain name which display Complainant's mark and branding and are used to offer banking services and prompt users to log in, potentially in furtherance of phishing. Complainant further argues that Respondent uses the disputed domain name to collect personal information of users. The Panel therefore finds that Respondent registered and uses this disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant asserts Respondent registered and uses the <regionsbanks.us> domain name in bad faith because Respondent passively holds that domain name. Inactive holding of a disputed domain name can show bad faith registration and use per Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (FORUM June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays the error message "Gateway Timeout." Therefore, the Panel finds that Respondent uses this disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant asserts Respondent registered and uses the <regions-banks.us> and <regionsbanks.us> domain names in bad faith because Respondent registered the disputed domain names with full knowledge of Complainant's rights in the mark based on Respondent's attempts to trade off the goodwill of Complainant's mark. An attempt to trade off the goodwill of a mark by referencing a Complainant and use of its mark on the resolving webpage can show that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration of a disputed domain name. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Complainant provides screenshots of the <regions-banks.us> domain name which display Complainant's mark and branding and are used to offer banking services and prompt users to log in, potentially in furtherance of phishing. The Panel therefore finds that Respondent registered the disputed domain names with actual knowledge in Complainant's mark per Policy ¶ 4(a)(iii).
Therefore, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <regions-banks.us> and <regionsbanks.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 3, 2020
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