Regions Asset Company v. Domain Admin
Claim Number: FA1212001475871
Complainant is Regions Asset Company (“Complainant”), represented by Alison Taroli of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Domain Admin (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionsmortgag.com>, registered with REBEL.COM CORP.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2012; the National Arbitration Forum received payment on December 13, 2012.
On December 13, 2012, REBEL.COM CORP. confirmed by e-mail to the National Arbitration Forum that the <regionsmortgag.com> domain name is registered with REBEL.COM CORP. and that Respondent is the current registrant of the name. REBEL.COM CORP. has verified that Respondent is bound by the REBEL.COM CORP. 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 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2013 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@regionsmortgag.com. Also on December 17, 2012, 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 January 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the REGIONS mark (e.g., Reg. No. 1,881,600 registered February 28, 1995) and for the REGION MORTGAGE mark.
Respondent’s <regionsmortgag.com> domain name is confusingly similar to Complainant’s REGIONS mark.
Respondent is not commonly known by the <regionsmortgag.com> domain name.
The <regionsmortgag.com> domain name resolves to a site featuring links to Complainant’s competitors in the home financing services industry.
Respondent is a pattern cybersquatter, and many previous panels have found Respondent to have engaged in bad faith domain name registration.
Respondent generates pay-per-click revenues through the operation of its website housed at the <regionsmortgag.com> domain name.
Due to its trademark registrations with the USPTO, Respondent must have had at least constructive knowledge of Complainant's rights in the REGIONS mark when Respondent registered the <regionsmortgag.com> domain name.
The advertisements for home financing services displayed on Respondent’s site, which directly compete with services offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights in the REGIONS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its REGIONS and REGIONS MORTGAGE marks.
Complainant’s trademark rights in REGIONS and REGIONS MORTGAGE predate Respondent’s registration of at-issue domain name.
At the time the Complaint was filed WHOIS information identified “Domain Admin” as at-issue domain name’s registrant.
Respondent is not authorized to use Complainant’s trademarks.
Respondent’s at-issue domain name addresses a website offering advertisements for home financing services that compete with Complainant. The website is designed to earn Respondent ‘click-through’ advertising revenue.
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(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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the REGIONS and REGIONS MORTGAGE trademarks with the USPTO is sufficient to demonstrate rights in a mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). It is of no consequence that Respondent may operate in a different jurisdiction than the trademark registrar. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <regionsmortgag.com> domain name is confusingly similar to Complainant’s REGIONS and REGIONS MORTGAGE marks for the purposes of Policy ¶ 4(a)(i). The at-issue domain name consists of Complainant’s REGIONS mark, a misspelling of the term “mortgage,” and the generic top-level domain (“gTLD”) “.com.” The misspelled term “mortgage” is descriptive of the home financing services provided by Complainant. Its incorporation into the at-issue domain name does nothing to distinguish the domain name from Complainant’s marks under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Additionally, appending a top level domain name, here “.com,” to the second level domain name is irrelevant under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Domain Admin” as the registrant of the disputed domain name and there is no evidence before the Panel which suggests that Respondent is known by the at-issue domain name notwithstanding the contrary indication in the WHOIS record. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain name for a website that features links to third-party mortgage services which directly compete with the mortgage services offered by Complainant under its relevant trademarks. Respondent’s use of the <regionsmortgag.com> domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent is a pattern cybersquatter. See Regions Asset Co. v. Domain Admin / Taranga Srvs. Pty Ltd, FA 1429484 (Nat. Arb. Forum Mar. 26, 2012); see also The Gap, Inc. v. Taranga Srvs. Pty Ltd c/o Domain Admin, FA 1332400 (Nat. Arb. Forum Aug. 2, 2010); see also Priceline.com, Inc. v. Domain Admin c/o Taranga Srvs. Pty Ltd, FA 1310249 (Nat. Arb. Forum Apr. 12, 2010). Such behavior suggests that Respondent engages in bad faith domain name registration and use with regard to the instant proceeding under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Furthermore, by registering and using the confusingly similar <regionsmortgag.com> domain name to link to services which compete with Complainant, Respondent has disrupted Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). Respondent’s registration of the confusingly similar <regionsmortgag.com> domain name increases the likelihood that consumers will mistakenly visit Respondent’s website, when they had in fact intended to visit a website sponsored by Complainant. At least some portion of these consumers will visit the competing links featured on Respondent’s site. There they may view and/or use the featured competing banking and financial services. These circumstances indicate that Respondent’s registration and use of the <regionsmortgag.com> domain name disrupts Complainant’s business and constitutes bad faith under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Moreover, Respondent intends to attract users to its website by creating a likelihood of confusion with Complainant’s mark, for commercial gain. Respondent’s registration of a domain name which is confusingly similar to Complainant’s mark demonstrates Respondent’s intention to create confusion as to Complainant’s affiliation with Respondent’s website. Respondent’s scheme includes generating pay-per-click revenues through its <regionsmortgag.com> website. Therefore the Panel concludes that Respondent’s registration and use of the <regionsmortgag.com> domain name is to improperly attract Internet users for commercial gain pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, the appearance on Respondent’s <regionsmortgag.com> website of advertisements for home financing services which directly compete with services offered by Complainant indicates that Respondent had actual knowledge of Complainant and its rights in the REGIONS and REGIONS MORTGAGE marks prior to the time the at-issue domain name was registered. Registering a confusingly similar domain name with knowledge of another’s rights therein urges that Respondent registered the <regionsmortgag.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove 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 <regionsmortgag.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 23, 2013
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