Regions Bank v. lliao kaifeng / liaokaifeng
Claim Number: FA1311001528905
Complainant is Regions Bank (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is lliao kaifeng / liaokaifeng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regionsmotgage.com>, registered with eName Technology Co., Ltd.
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 National Arbitration Forum electronically on November 7, 2013; the National Arbitration Forum received payment on November 7, 2013. The Complaint was submitted in both Chinese and English.
On November 7, 2013, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <regionsmotgage.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 15, 2013, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 5, 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@regionsmotgage.com. Also on November 15, 2013, the Chinese language 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 December 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the REGIONS and REGIONS MORTGAGE marks. Respondent’s domain name is confusingly similar to Complainant’s REGIONS and REGIONS MORTGAGE marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <regionsmotgage.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(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 evidence shows the following. Complainant is one of the top 25 financial institutions in the United States with more than $119 billion in assets. It operates some 1,700 branches and 2,100 ATMs across a 16-state network. It is the registrant of trademark registrations with the USPTO for the REGIONS mark (e.g., Reg. No. 1,881,600, registered February 28, 1995) and for the REGIONS MORTGAGE mark (e.g., Reg. No. 3,224,650, registered April 3, 2007). Although Respondent appears to reside and operate in China, Policy ¶ 4(a)(i) does not require that Complainant register its trademark in the country in which Respondent resides, so long as it can establish rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Thus, the Panel determines that Complainant’s registration of the REGIONS and REGIONS MORTGAGE mark with the USPTO sufficiently demonstrates its rights pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <regionsmotgage.com> domain name is confusingly similar to Complainant’s famous and registered REGIONS and REGIONS MORTGAGE marks. The disputed domain name consists of a misspelling of Complainant’s REGIONS MORTGAGE mark, merely deleting the letter “r,” with the addition of the gTLD “.com.” Respondent’s removal of the letter “r” is inconsequential to a Policy ¶ 4(a)(i) determination. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Respondent also removes the space in Complainant’s REGIONS MORTGAGE mark for its <regionsmotgage.com> domain name. Respondent’s removal of a space as well as its inclusion of a gTLD is irrelevant to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Consequently, the Panel concludes that Respondent’s <regionsmotgage.com> domain name is confusingly similar to Complainant’s REGIONS MORTGAGE mark pursuant to 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 disputed domain names. 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 (Nat. Arb. 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. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent never has been commonly known by the names or marks REGIONS or REGIONS MORTGAGE, or even legitimately used any trademark or service mark similar to the second-level domain name. Complainant alleges that Respondent is identified as “Lliao Kaifeng” in the WHOIS database, not REGIONS or REGIONS MORTGAGE. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Similarly, the Panel holds that Respondent is not commonly known by the <regionsmotgage.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent uses the <regionsmotgage.com> domain name to resolve tor a website that advertises links to services that relate directly to and compete directly with Complainant’s mortgage services. Complainant claims that Respondent links to sites that offer for sale mortgages and other financial services on its <regionsmotgage.com> website. Respondent’s disputed domain name resolves to a website containing the links “VA HOME LOANS - $0 DOWN,” “2.7% HARP REFINANCE LOAN,” “FORECLOSURE BAILOUT LOANS,” and more. Complainant argues that Respondent uses the confusingly similar domain name to profit from advertising services competing in the same market as Complainant and to cause consumers to falsely believe that they can obtain REGIONS MORTGAGE or other Complainant-backed financial services from the <regionsmotgage.com> domain name’s website. Thus Respondent’s use of the disputed domain name to host competing hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither 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).”).
Complainant argues that the intentional misspelling of the REGIONS MORTGAGE mark and Complainant’s <regionsmortgage.com> domain name in the <regionsmotgage.com> domain name demonstrates that Respondent has capitalized on the misspelling to misdirect Internet users to its domain name when they are seeking Complainant’s domain name. In LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), the panel found that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.” Accordingly, the Panel finds that Respondent has engaged in typosquatting, evidencing a lack of rights and legitimate interests under Policy ¶4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent purposefully disrupts Complainant’s business. Complainant asserts that Respondent is using the <regionsmotgage.com> domain name to provide competing financial services links, such as “VA HOME LOANS - $0 DOWN,” “2.7% HARP REFINANCE LOAN,” “FORECLOSURE BAILOUT LOANS,” and more. Complainant argues that Respondent’s domain name directs consumers to websites that compete with Complainant. Because the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s legitimate business, the Panel finds that Respondent has registered and is using the <regionsmotgage.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent profits from the unauthorized use of Complainant’s marks in the domain name <regionsmotgage.com> by providing links to websites that sell mortgage and other financial services, such as such as “VA HOME LOANS - $0 DOWN,” “2.7% HARP REFINANCE LOAN,” “FORECLOSURE BAILOUT LOANS,” and more. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found that “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.’” Thus, the Panel finds that Respondent’s use of the <regionsmotgage.com> domain name demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Complainant claims that Respondent has engaged in typosquatting by registering <regionsmotgage.com>, a domain name that merely deletes the letter “r” in Complainant’s REGIONS MORTGAGE mark and <regionsmortgage.com> URL. Typosquatting may be found where there is a domain name containing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant alleges that Respondent’s registration and use of the <regionsmotgage.com> domain name was with full knowledge of Complainant’s prior use of rights in and goodwill associated with the REGIONS and REGIONS MORTGAGE names and marks. Complainant argues that Respondent’s knowledge of Complainant’s rights in the mark is evidenced because (1) Respondent has engaged in typosquatting of Complainant’s REGIONS MORTGAGE mark, (2) Complainant began using the REGIONS MORTGAGE mark prior to the registration of the <regionsmotgage.com> domain name, (3) Respondent provides links to chief competitors of Complainant on the reslving website, and (4) Respondent uses the domain name to advertise services that compete directly with those of Complainant. For all of the above reasons the Panel finds that Respondent had actual knowledge of Complainant's mark and rights when it registered the domain name and therefore determines that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <regionsmotgage.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 23, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page