CrossFirst Bankshares, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2009001912678
Complainant is CrossFirst Bankshares, Inc. (“Complainant”), represented by Aisha Reynolds of CrossFirst Bankshares, Inc., Kansas, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crosssfirstbank.com>, registered with Godaddy.Com, Llc; GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2020; the Forum received payment on September 17, 2020.
On September 18, 2020, Godaddy.Com, Llc; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <crosssfirstbank.com> domain name is registered with Godaddy.Com, Llc; GoDaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.Com, Llc; GoDaddy.com, LLC has verified that Respondent is bound by the Godaddy.Com, Llc; GoDaddy.com, LLC 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 September 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@crosssfirstbank.com. Also on September 22, 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 October 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, CrossFirst Bankshares Inc., is a bank holding company. Complainant has rights in the CROSSFIRST BANK mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,986,246, registered Feb. 11, 2020). Respondent’s <crosssfirstbank.com> domain name is confusingly similar to Complainant’s CROSSFIRST BANK mark because the only difference between the mark and the domain name is the addition of the letter “s” to the word “cross.”
Respondent does not have rights or legitimate interests in the <crosssfirstbank.com> domain name because Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host third-party advertising links.
Respondent registered and uses the <crosssfirstbank.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract users to its website for commercial gain by hosting pay-per-click links.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is CrossFirst Bankshares, Inc. (Complainant), of Leawood, KS, USA. Complaint is the owner of the domestic registration for the mark CROSSFIRST and variations thereof which it has continuously used since at least as early as 2008 in connection with its provision of banking, financing, and investment services. Complainant is also the owner of the domestic registration for the mark CROSSFIRST BANK which it has used for similar products and services since at least as early as 2019.
Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (Respondent), of Panama City, Panama. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the disputed domain name was registered on or about August 26, 2020.
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”).
Complainant asserts rights in the CROSSFIRST BANK mark based upon the registration with the USPTO (e.g., Reg. No. 5,986,246, registered Feb. 11, 2020). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Based upon Complainant’s registration of the CROSSFIRST BANK mark with the USPTO, the Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <crosssfirstbank.com> domain name is confusingly similar to Complainant’s CROSSFIRST BANK mark because the only difference between the mark and the domain name is the addition of the letter “s” to the word “cross.” The Panel further notes that the domain name appends the “.com” generic top-level domain (“gTLD”) to the mark. Addition of a single letter and a gTLD to a mark is insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See ShipCarsNow, Inc. v Wet Web Design LLC, FA 1601260 (Forum Feb. 26, 2015) (establishing a confusing similarity between the <shipcarnow.com> domain name and the SHIPCARSNOW mark because the domain name simply removes the letter “s”). The Panel here finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions regarding Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <crosssfirstbank.com> domain name because Respondent is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The WHOIS information of record lists “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant and no other information supports a finding that Complainant is commonly known by the disputed domain name. The Panel here finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host third-party advertising links. Use of a disputed domain name to host hyperlinks is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the resolving pay-per-click landing page and claims that Respondent uses the confusingly similar nature of the domain name to divert Internet users searching for Complainant. The Panel here finds that Respondent is not using the disputed domain name for 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).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <crosssfirstbank.com> domain name in bad faith by hosting pay-per-click links to websites that compete with Complainant. Use of a disputed domain name to display pay-per-click hyperlinks relating to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel again notes that Complainant provides screenshots of the links on the resolving webpage and claims that those links redirect users to sites that offer banking services in competition with Complainant. The Panel here finds that Respondent engaged in bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <crosssfirstbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 28, 2020
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