Regions Asset Company v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1109001407742
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionsbamk.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2011; the National Arbitration Forum received payment on September 16, 2011.
On September 18, 2011, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <regionsbamk.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. 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 September 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2011 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@regionsbamk.com. Also on September 19, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <regionsbamk.com> domain name is confusingly similar to Complainant’s REGIONSBANK mark.
2. Respondent does not have any rights or legitimate interests in the <regionsbamk.com> domain name.
3. Respondent registered and used the <regionsbamk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Regions Asset Company, provides financial and banking products and services in the United States. Complainant operates 1,800 branches and 2,100 ATMs in the United States under its REGIONSBANK mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its REGIONSBANK mark (e.g., Reg. No. 1,918,496 registered September 12, 1995).
Respondent, Private Registrations Aktien Gesellschaft / Domain Admin, registered the <regionsbamk.com> domain name on July 3, 2008. The disputed domain name resolves to a website hosting hyperlinks to Complainant’s competitors in the banking and financial service industries.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The first element of Policy ¶ 4(a)(i) that this Panel must determine is whether or not Complainant owns rights in the REGIONSBANK mark. In Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006), and Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006), the panels found that a trademark registration with the USPTO was sufficient to establish rights under Policy ¶ 4(a)(i). Complainant provides its trademark certificates as evidence of its trademark registrations with the USPTO for its REGIONSBANK mark (e.g., Reg. No. 1,918,496 registered September 12, 1995). While Respondent operates or resides in St. Vincent and the Grenadines, in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panels found that a complainant was not required to register a mark within the respondent’s home country in order to establish rights in a mark. Consequently, the Panel holds that Complainant has established Policy ¶ 4(a)(i) rights in its REGIONSBANK mark.
Under Policy ¶ 4(a)(i), the Panel must also determine whether the <regionsbamk.com> domain name is identical or confusingly similar to Complainant’s REGIONSBANK mark. In Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001), and Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006), the panels found that a disputed domain name that contained a common misspelling of a complainant’s mark was confusingly similar to a complainant’s mark. Similarly, the panels in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), held that the addition of a generic top-level domain (“gTLD”) did not remove a disputed domain name from the realm of confusing similarity. Respondent’s <regionsbamk.com> domain name contains a common misspelling of Complainant’s mark by replacing the letter “n” with the letter “m.” The disputed domain name also contains the gTLD “.com.” Based on the decisions by previous panels under Policy ¶ 4(a)(i), the Panel concludes that Respondent’s <regionsbamk.com> domain name is confusingly similar to Complainant’s REGIONSBANK mark for the purposes of Policy ¶ 4(a)(i).
The Panel has determined that both elements of Policy ¶ 4(a)(i) have been satisfied.
Policy ¶ 4(a)(ii) requires a complainant to demonstrate that a respondent lacks rights and legitimate interests in respect of the disputed domain name. In order to demonstrate rights and legitimate interests, Policy ¶ 4(c) provides three elements that a respondent may satisfy: (i) a respondent is making a bona fide offering of goods or services; (ii) a respondent is commonly known by the disputed domain name; or (iii) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <regionsbamk.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” The Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The first prong the Panel analyzes is Policy ¶ 4(c)(ii) and whether or not Respondent is commonly known by the <regionsbamk.com> domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels found that a respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name, the respondent did not have a relationship with the complainant, and the respondent failed to provide any evidence that it was commonly known by the disputed domain name. The WHOIS information for the <regionsbamk.com> domain name identifies “Private Registrations Aktien Gesellschaft / Domain Admin” as the registrant, which the Panel determines is not similar to the disputed domain name. Complainant asserts that Respondent has no relationship with Complainant that would allow Respondent to use Complainant’s REGIONSBANK mark. Respondent has failed to present any evidence to contradict the WHOIS information or Complainant’s assertions. Thus, the Panel concludes that Respondent is not commonly known by the <regionsbamk.com> domain name pursuant to Policy ¶ 4(c)(ii).
The next step in the Panel’s Policy ¶ 4(a)(ii) analysis is to examine Respondent’s use of the disputed domain name to determine if Respondent is making either a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <regionsbamk.com> domain name. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), the panels found that a respondent was making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a disputed domain name when the respondent used the domain name to provide competing hyperlinks. Respondent’s <regionsbamk.com> domain name resolves to a website that contains hyperlinks, such as “Internet Banking,” “Loan Applications,” “Checking Accounts,” that, according to Complainant, resolve to Complainant’s competitors in the banking and financial services industries. Due to the findings of the panels in Skyhawke Techns., LLC and ALPITOUR S.p.A., the Panel holds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <regionsbamk.com> domain name.
As the Panel concludes that Respondent has failed to meet any of the Policy ¶ 4(c) elements, the Panel holds that Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith. Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as a part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
The Panel chooses not to analyze Respondent’s registration and use of the disputed domain name under Policy ¶¶ 4(b)(i) and (ii) because Complainant does not present any allegations under these paragraphs and the evidence in the record does not indicate that Policy ¶¶ 4(b)(i) and (ii) apply.
Policy ¶ 4(b)(iii) provides that a complainant may demonstrate bad faith registration and use by proving that the respondent’s registration and use disrupts the business of the complainant. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panels found that a respondent’s registration and use of a disputed domain name for the purpose of hosting competing hyperlinks disrupts a complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). Respondent’s <regionsbamk.com> domain name resolves to a website that contains hyperlinks to Complainant’s competitors in the banking and financial services industries. As the Panel concludes that such a use disrupts Complainant’s business, the Panel holds that Respondent registered and uses the <regionsbamk.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Policy ¶ 4(b)(iv) allows Complainant to prove bad faith registration and use on behalf of Respondent by showing that Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the <regionsbamk.com> domain name and resolving website. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), and Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panels held that a disputed domain name was registered and used in bad faith under Policy ¶ 4(b)(iv) when the disputed domain name resolved to a website hosting competing hyperlinks. Respondent’s confusingly similar <regionsbamk.com> domain name resolves to a website that hosts competing banking and financial services hyperlinks. Thus, the Panel determines that Respondent is guilty of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel determines that Complainant has sufficiently demonstrated Respondent’s bad faith registration and use 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 <regionsbamk.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 18, 2011
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