DECISION
First Republic Bank v. Brock Jake
Claim Number: FA2110001971273
Complainant is First Republic Bank (“Complainant”), represented by Garner Weng of Hanson Bridgett LLP, California, USA. Respondent is Brock Jake (“Respondent”), Philippines.
The domain name at issue is <azxyrepublic.com>, which is registered with NameCheap, Inc..
The undersigned certify that they have acted independently and impartially, and, to the best of their knowledge, have no conflict of interests in serving as Panelists in this proceeding.
Charles A. Kuechenmeister, Esq., Sandra J. Franklin, Esq., and Terry F. Peppard, Esq., as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 29, 2021; the Forum received payment on October 29, 2021.
On November 1, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <azxyrepublic.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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 the attention of postmaster@azxyrepublic.com. Also, on November 5, 2021, 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 December 7, 2021, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Charles A. Kuechenmeister, Sandra J. Franklin and Terry F. Peppard as Panelists.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, founded in 1985, is a bank and wealth management company with offices in seven states of the United States.
Complainant holds a registration for the FIRST REPUBLIC service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registration No. 3,785,372, registered May 4, 2010, and renewed July 10, 2020.
Respondent registered the domain name <azxyrepublic.com> on January 24, 2021.
The domain name is confusingly similar to Complainant’s FIRST REPUBLIC service mark.
Respondent is not affiliated with Complainant.
Respondent has not been commonly known by the domain name.
Complainant has not licensed Respondent to use its FIRST REPUBLIC mark in a domain name.
Respondent does not use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent employs the domain name to acquire commercial gain by passing itself off as Complainant on its resolving website, which website displays an almost identical copy of Complainant’s official website and prominently exhibits Complainant’s marks in order to “phish” for the sensitive personal information of Internet users, apparently including their names, zip codes, email addresses, telephone numbers and secure sign-in identity.
Respondent lacks both rights to and legitimate interests in the domain name. Respondent’s use of the domain name disrupts Complainant’s business. Respondent registered the domain name while knowing of Complainant’s rights in the FIRST REPUBLIC mark.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the <azxyrepublic.com> domain name is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in the FIRST REPUBLIC service mark sufficient for purposes of establishing its standing to pursue a complaint under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018):
Complainant’s ownership of a USPTO trademark registration for the… mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Philippines). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s domain name, <azxyrepublic.com>, is confusingly similar to Complainant’s FIRST REPUBLIC service mark. The domain name incorporates the dominant portion of the mark, with only the addition of the random cluster of letters “azxy” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the domain name <sainatos.com> to be confusingly similar to the mark SAINATO’S RESTAURANT because it: “appends the gTLD “.com” to an abbreviated version of the mark.”). See also Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that a UDRP respondent’s <huroninc.net> domain name was confusingly similar to each of the marks HURON CONSULTING GROUP and HURON HEALTHCARE under Policy ¶ 4(a)(i) because, in creating the domain name, that respondent incorporated the dominant portion of the marks and merely appended the abbreviation “inc,” thus delineating a UDRP complainant’s form of business organization, plus a gTLD). Further see Hewlett- Packard Company v. ABC Laserjet, Inc., FA 0150785 (Forum Apr. 3, 2003) (finding that the prefix “abc” included in a respondent’s domain name, <abclaserjet.com>, was of no consequence to an analysis conducted under Policy ¶ 4(a)(i) because those letters held “no descriptive value” and failed to detract from the dominant presence of a UDRP complainant’s LASERJET mark, so that the domain name was substantively indistinguishable from that mark, and was, therefore, confusingly similar to it).
Finally, see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the domain name <azxyrepublic.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden,
… the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this section of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <azxyrepublic.com>, and that Complainant has not licensed Respondent to use the FIRST REPUBLIC mark for any purpose. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Brock Jake,” 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). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <azxyrepublic.com> domain name to acquire commercial gain by passing itself off as Complainant on its resolving website, which website displays an almost identical copy of Complainant’s official website and prominently exhibits Complainant’s marks in order to “phish” for the sensitive personal information of Internet users. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Microsoft Corporation v. Edward Schmidt, FA 1757901 (Forum Dec. 18, 2017):
Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or [a] legitimate noncommercial or fair use.
See also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA1785242 (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).
Further see Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for 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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the undisputed evidence that Respondent both registered and now uses the <azxyrepublic.com> domain name in furtherance of a “phishing” scheme to solicit from customers their names, zip codes, email addresses, telephone numbers and secure sign-in identities. Such a use can only be described as exhibiting bad faith in the registration and use of the domain name. See, for example, Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (finding that a UDRP respondent’s use of a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s … website, and is used to fraudulently acquire personal information from Complainant’s clients” was evidence of bad faith registration and use).
See also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith registration and use of a challenged domain name under Policy ¶ 4(b)(iv) where “Respondent registered and uses the … domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant”).
Further see Pfizer, Inc. v. Suger, D2002-0187 (WIPO April 24, 2002) (finding that, because the link between a UDRP complainant’s mark and the content advertised on a respondent’s website was obvious, that respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <azxyrepublic.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Sandra J. Franklin, Panelist
Dated: December 17, 2021
Terry F. Peppard, Panel Chair
Dated: December 17, 2021
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