1st Source Bank v. Liu Xiao Dan
Claim Number: FA2109001962865
Complainant is 1st Source Bank (“Complainant”), represented by Thomas P. Arden of Young, Basile, Hanlon & MacFarlane, Illinois, USA. Respondent is Liu Xiao Dan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1stsorce.com>, registered with DNSPod, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2021; the Forum received payment on September 9, 2021. The Complaint was received in English.
On September 9, 2021, DNSPod, Inc. confirmed by e-mail to the Forum that the <1stsorce.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. 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 13, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of October 4, 2021 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@1stsorce.com. Also on September 13, 2021, the Chinese and English language 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 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in the Chinese language, thereby making the language of the proceedings to be Chinese. However, under Rule 11, the Panel may order that another language is more appropriate. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent is proficient in English because the <1stsorce.com> website is in English, the pay-per-click hyperlinks on the resolving website lead to English language websites, and Respondent’s telephone number has a Maryland, US, area-code. See Amend. Compl. Ex. 11 & Registrar Verification Email. Therefore, Complainant argues the proceedings should be in English.
Having regard to all the circumstances and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering all the circumstance of the present case, the Panel decides that the proceeding should be conducted in the English language and the matter many go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, 1st Source Bank, provides banking and financial services. Complainant has rights in the 1ST SOURCE mark based on registration with the with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,484,574, registered April 12, 1988). See Amend. Compl. Ex. 4. Respondent’s <1stsorce.com> domain name is confusingly similar to Complainant’s 1ST SOURCE mark since it merely misspells the mark.
Respondent does not have rights or legitimate interests in the <1stsorce.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use the 1ST SOURCE mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to host competing pay-per-click hyperlinks and divert users seeking Complainant’s website. Furthermore, Respondent engages in typosquatting.
Respondent registered and uses the <1stsorce.com> domain name in bad faith. Respondent uses the domain name to host competing pay-per-click hyperlinks. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the 1ST SOURCE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides banking and financial services.
2. Complainant has rights in the 1ST SOURCE mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,484,574, registered April 12, 1988).
3. Respondent registered the disputed domain name on September 30, 2020.
4. Respondent has caused the
domain name to be used in typosquatting and to divert traffic to Respondent’s
website to attract pay per click fees which is illegitimate.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the 1ST SOURCE mark based on registration with the with the USPTO (e.g., Reg. No. 1,484,574, registered April 12, 1988). See Amend. Compl. Ex. 4. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO). Since Complainant provides evidence of registration of the1ST SOURCE mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s 1ST SOURCE mark. Respondent’s <1stsorce.com> domain name is confusingly similar to Complainant’s 1ST SOURCE mark since it merely misspells the mark. Misspelling a mark in a disputed domain name by excluding a letter is not enough to differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark). Here, the disputed domain name merely omits the letter “U” from Complainant’s 1ST SOURCE mark. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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”).
(a) Respondent has chosen to take Complainant’s 1ST SOURCE trademark and to use it in its domain name with only one letter of the trademark being changed;
(b) Respondent registered the disputed domain name on September 30, 2020;
(c) Respondent has caused the domain name to be used in typosquatting and to divert traffic to Respondent’s website to attract pay per click fees which is illegitimate;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <1stsorce.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use the 1ST SOURCE mark. Under Policy ¶ 4(c)(ii), when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name and a lack of authorization to use a mark is a further showing that the respondent is not commonly known by the name. See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies “Liu Xiao Dan” and no information suggests Complainant authorized Respondent to use the 1ST SOURCE mark. See Registrar Verification Email. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to host competing pay-per-click hyperlinks and divert users seeking Complainant’s website. Using a disputed domain name to divert users seeking a complainant to a respondent’s website where it hosts competing hyperlinks does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, Complainant provides screenshots of the resolving website for the disputed domain name which features pay-per-click hyperlinks to competing banking and finance services. See Amend. Compl. Ex. 11. Thus, the Panel agrees with Complainant and finds that Respondent is not using the 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);
(g) Furthermore, Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent engages in typosquatting. Under Policy ¶ 4(a)(ii), typosquatting is the purposeful misspelling of a mark in a disputed domain name and indicates a respondent lacks rights or legitimate interests in the disputed domain name. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Complainant argues that Respondent engages in typosquatting by omitting the letter “U” from Complainant’s 1ST SOURCE mark in the <1stsorce.com> domain name. Thus, as the Panel agrees, it finds that Respondent lacks rights and legitimate interests in the <1stsorce.com> domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <1stsorce.com> domain name in bad faith because Respondent uses the domain to host competing pay-per-click hyperlinks. Using a disputed domain name to offer hyperlinks to competing goods or services is 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 American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel recalls that Complainant provides screenshots showing Respondent uses the disputed domain name to host hyperlinks to competing banking and financial services. See Amend. Compl. Ex. 11. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant contends that Respondent had constructive and/or actual knowledge of Complainant’s rights in the 1ST SOURCE mark. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use the Respondent makes of the domain name. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Expensify, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1942074 (Forum June 1, 2021) (finding Respondent had actual knowledge based on the inclusion of a typsoquatted version of Complainant’s mark in the disputed domain name); see additionally Availity, L.L.C. v. lin yanxiao, FA 1955211 (Forum Aug. 17, 2021) (Respondent uses the disputed domain name to advertise health insurance. Each of the links directs users to competitors of Complainant. . . .[t]he Panel infers, due to the manner of use of the disputed domain name and the way of making the disputed domain name combining Complainant’s AVAILITY mark with the term “insurance” for which Complainant’s mark is used that Respondent registered with actual knowledge of Complainant’s rights in the AVAILITY mark, thus constituting bad faith registration under Policy ¶ 4(a)(iii).”). The Panel recalls that Respondent uses the disputed domain name to host hyperlinks to businesses that compete with Complainant. See Amend. Compl. Ex. 11. Thus, as the Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s rights in the 1ST SOURCE mark, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the 1ST SOURCE mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1stsorce.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 12, 2021
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