Regions Bank v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd
Claim Number: FA2111001974664
Complainant is Regions Bank (“Complainant”), represented by Rachel Hofstatter of Honigman LLP, District of Columbia, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onepassregions.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2021; the Forum received payment on November 24, 2021.
On November 26, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <onepassregions.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@onepassregions.com. Also on December 1, 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 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant provides banking services. Complainant has rights in the REGIONS and REGIONS ONEPASS marks through its registrations with the USPTO (e.g. REGIONS Reg. 1,881,600, registered Feb. 28, 1995; REGIONS ONEPASS Reg. 4,796,098, registered Aug. 18, 2015).
2. Respondent’s <onepassregions.com>[i] domain name is identical or confusingly similar to Complainant’s marks as it incorporates the marks in their entireties and inverts the REGIONS ONEPASS mark while adding the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <onepassregions.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its marks in the domain name.
4. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use as Respondent offers parked, competing, pay-per-click links on the disputed domain name’s resolving website.
5. Respondent registered and uses the <onepassregions.com> domain name in bad faith. Respondent offers the domain name for sale.
6. Respondent has demonstrated a pattern of bad faith registration and use. Respondent offers parked, competing pay-per-click links on the domain name’s resolving website.
7. Respondent registered the domain name with actual knowledge of Complainant’s rights in the REGIONS and the REGIONS ONEPASS marks.
8. Respondent hid its identity behind a WHOIS privacy service.
9. Respondent failed to respond to Complainant’s cease-and-desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the REGIONS and the REGIONS ONEPASS marks. Respondent’s domain name is confusingly similar to Complainant’s REGIONS and the REGIONS ONEPASS marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <onepassregions.com> domain name and that Respondent registered and uses the domain name 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:
(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 has rights in the REGIONS and REGIONS ONEPASS marks through its registrations with the USPTO (e.g. REGIONS Reg. 1,881,600, registered Feb. 28, 1995; REGIONS ONEPASS Reg. 4,796,098, registered Aug. 18, 2015). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, Respondent has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <onepassregions.com> domain name is identical or confusingly similar to Complainant’s rights in the REGIONS and REGIONS ONEPASS marks. Under Policy ¶ 4(a)(i), inverting words in a mark and adding the “.com” gTLD is generally insufficient in differentiating a domain name from the mark it incorporates. See Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL). The <onepassregions.com> domain name inverts the words “REGIONS” and “ONEPASS” in the domain name and adds the “.com” gTLD. Therefore, the Panel holds that Respondent’s <onepassregions.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <onepassregions.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <onepassregions.com> domain name, nor has Complainant authorized or licensed Respondent to use its REGIONS or REGIONS ONEPASS marks in the domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information, or use of a privacy service, may demonstrate that a Respondent is not commonly known by a domain name. See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). The WHOIS of record identifies Respondent as a privacy service, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its REGIONS and REGIONS ONEPASS marks.
Complainant argues that Respondent does not use the <onepassregions.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a domain name incorporating the mark of another to host parked, competing, pay-per-click links, is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See 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.”). Complainant provides a screenshot of the <onepassregions.com> domain name’s resolving website, which features no content but parked pay-per-click links for various banking services. The Panel agrees and holds that Respondent does not use the <onepassregions.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has exhibited a pattern of bad faith registration and use. Under Policy ¶ 4(b)(ii), where a respondent has a demonstrated history of adverse UDRP decisions against them, past panels have found a pattern of bad faith registration and use. See 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).”). Complainant provides search history results for cases Respondent has been a party to, showing a history of adverse UDRP decisions. Therefore, the Panel holds that Respondent has exhibited a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered the <onepassregions.com> domain name with actual knowledge of Complainant’s rights in the REGIONS ONEPASS mark. Under Policy ¶ 4(a)(iii), actual knowledge of a complainant’s rights in a mark may be established through incorporation of a mark into a domain name, as well as using the mark in the respondent’s resolving website. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The <onepassregions.com> domain name incorporates entirely Complainant’s REGIONS and REGIONS ONEPASS marks. Thus, the Panel holds that Respondent registered the <onepassregions.com> domain name with bad faith actual knowledge of Complainant’s rights in its marks under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onepassregions.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 3, 2022
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