Live Oak Bank, Inc. and Live Oak Bancshares, Inc. v. Gba Ethe / LamRe
Claim Number: FA2204001994346
Complainant is Live Oak Bank, Inc. and Live Oak Bancshares, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Gba Ethe / LamRe (“Respondent”), Oklahoma. USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <liveoakbanc.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2022; the Forum received payment on April 28, 2022.
On April 29, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <liveoakbanc.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 May 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2022 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@liveoakbanc.com. Also on May 2, 2022, 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 May 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 Live Oak Bank, Inc.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Live Oak Bancshares, Inc. and Live Oak Bank, Inc. Complainant Live Oak Bancshares, Inc. is the parent company of Live Oak Bank, Inc..
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.
A. Complainant
Complainant states that it operates an online-only bank. As an online-only bank, Complainant is able to offer its services at rates that are competitive with those of more traditional brick-and-mortar branch-based banks. Founded in 2008 by James S. (Chip) Mahan and headquartered in Wilmington, North Carolina, in the United States, Complainant has grown to a company with over USD $521 Million in 2021 annual revenue (up from $374 Million in 2020), and a market valuation of nearly USD $2 Billion. Complainant has rights in the LIVE OAK BANK and LIVE OAK BANCSHARES marks through their registration in the United States in 2016.
Complainant alleges that the disputed domain name is identical or confusingly similar to its LIVE OAK BANK mark as it incorporates the mark in its entirety, merely replacing the “k” in the word “bank” with a “c” and adding the “.com” generic top-level domain (“gTLD”). Furthermore, the disputed domain name is identical or confusingly similar to Complainant’s LIVE OAK BANCSHARES mark as it incorporates the dominant part of the mark, merely omitting the word “shares” and adding the “.com” gTLD.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its marks in any way. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead uses the disputed domain name in furtherance of a fraudulent email phishing scheme. Specifically, Respondent used the disputed domain name in a fraudulent phishing email sent to Complainant’s business partner; the signature block of the fraudulent email impersonated Complainant’s actual Chairman and CEO. Moreover, Respondent allows the disputed domain name to remain inactive.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name in furtherance of a fraudulent email phishing scheme. Respondent fails to make active use of the disputed domain name. Respondent is using the disputed domain name, at a minimum, to generate initial interest confusion. Respondent failed to respond to Complainant’s cease and desist letter. Respondent registered the disputed domain with actual knowledge of Complainant’s rights in its marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks LIVE OAK BANK and LIVE OAK BANCSHARES and uses them to provide banking services.
Complainant’s rights in its marks date back to 2016.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent uses the disputed domain name in furtherance of a fraudulent email phishing scheme. Specifically, Respondent used the disputed domain name in a fraudulent phishing email sent to Complainant’s business partner; the signature block of the fraudulent email displayed Complainants mark and impersonated Complainant’s actual Chairman and CEO.
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 disputed domain name incorporates Complainant’s LIVE OAK BANK mark in its entirety, merely replacing the “k” in the word “bank” with a “c” and adding the “.com” generic top-level domain (“gTLD”). Furthermore, the disputed domain name incorporates the dominant part of Complainant’s LIVE OAK BANCSHARES mark, merely omitting the word “shares” and adding the “.com” gTLD. Under Policy ¶ 4(a)(i), misspelling or deleting words from the mark, along with adding a gTLD, is insufficient in differentiating a disputed domain name from the marks. See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks in any way. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies the registrant as “Gba Ethe / LamRe”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name in furtherance of a fraudulent email phishing scheme. Specifically, Complainant presented evidence showing that Respondent used the disputed domain name in a fraudulent phishing email sent to Complainant’s business partner; the signature block of the fraudulent email impersonated Complainant’s actual Chairman and CEO. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to attempt to engage in a phishing scheme does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (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).”). The Panel therefore finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The disputed domain name is not being used. Under Policy ¶¶ 4(c)(i) and (iii), failing to make active use of a disputed domain name is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, on this ground also, the Panel finds that Respondent is not using the disputed 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).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name in furtherance of a fraudulent email phishing scheme. Under the Policy, using a disputed domain name to engage in an email phishing scheme is evidence of bad faith. See National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant’s President and CEO); see also Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv).”). Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith in the sense of the Policy.
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s marks: the signature block of the fraudulent email displays Complainant’s mark and impersonates Complainant’s actual Chairman and CEO. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in its marks prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <liveoakbanc.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 1, 2022
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