Capital Bank, National Association v. Rohani Ahmed / Insurance Company
Claim Number: FA1407001570953
Complainant is Capital Bank, National Association (“Complainant”), represented by William S. Fultz of Parker, Poe, Adams & Bernstein LLP, North Carolina, USA. Respondent is Rohani Ahmed / Insurance Company (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <capitallbank.com>, registered with ENOM, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2014; the National Arbitration Forum received payment on July 22, 2014.
On July 22, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <capitallbank.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 July 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2014 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@capitallbank.com. Also on July 24, 2014, 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 August 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Complainant uses the CAPITAL BANK mark in connection with financial services including personal and business banking services, mortgages, credit cards and wealth management services.
2. Complainant registered the CAPITAL BANK mark with the United States Patent and Trademark Office ("USPTO"). The <capitallbank.com> domain name is confusingly similar to the CAPITAL BANK mark as the domain name simply adds a second “l” in place of the space, and the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the dispute domain name. There is no evidence that Respondent is commonly known by the disputed domain name. Further, the disputed domain name is used to operate a phishing website designed to obtain sensitive personal and financial information from Complainant’s customers. The dispute domain name resolves to a page imitating Complainant’s own website. Respondent likely profits through this scheme.
4. Respondent’s bad faith is demonstrated by the use of the disputed domain name to resolve to a website that impersonated Complainant in furtherance of an apparent phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in financial services including personal and business banking services, mortgages, credit cards and wealth management services.
2. Complainant registered the CAPITAL BANK mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,898,782 registered Jan. 14, 2011).
3. The <capitallbank.com> domain name was registered June 14, 2014. It is used to impersonate Complainant and conduct a phishing scheme designed to obtain sensitive personal and financial information from Complainant’s customers.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant uses the CAPITAL BANK mark in connection with financial services including personal and business banking services, mortgages, credit cards and wealth management services. Complainant registered the CAPITAL BANK mark with the USPTO (e.g., Reg. No. 3,898,782 registered Jan. 14, 2011). The Panel finds this USPTO registration sufficient to establish Complainant’s rights in the CAPITAL BANK mark under Policy ¶ 4(a)(i). See Amusement Art, LLC v. zarathustra james / bomit, FA 1536201 (Nat. Arb. Forum Jan. 29, 2014) (“The Panel observes that Respondent appears to reside and operate within the United States. Therefore, the Panel holds that Complainant’s registration of the MR BRAINWASH mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CAPITAL BANK mark. Complainant argues the <capitallbank.com> domain name is confusingly similar to the CAPITAL BANK mark as the domain name simply adds a second “l” in place of the space, and the gTLD “.com.” Previous panels have found that such alterations are insufficient to differentiate a domain name from the incorporated mark for the purposes of Policy ¶ 4(a)(i) analysis. In Choice Hotels Int’l, Inc. v. Stoyan Bagdanov, FA 1370565 (Nat. Arb. Forum March 1, 2011), the panel found the <cchoicehotels.com> domain name confusingly similar to Complainant’s CHOICE HOTELS mark as the addition of an additional letter “c,” the elimination of the spacing, and the affixation of the gTLD “.com” were insufficient to negate confusing similarity. Accordingly, the Panel agrees that the <capitallbank.com> domain name is confusingly similar to the CAPITAL BANK mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CAPITAL BANK mark and to use it in its domain name, merely adding an extra letter “l” to the trademark to make up the domain name;
(b) Respondent is using the disputed domain name to impersonate Complainant and conduct a phishing scheme designed to obtain sensitive personal and financial information from Complainant’s customers;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant argues that there is no evidence that Respondent is commonly known by the disputed domain name, and that it has not authorized Respondent’s use of the mark. Complainant notes that the WHOIS information identifies “Rohani Ahmed / Insurance Company” as the registrant of record. The Panel recalls that Respondent has failed to submit a response in the matter and therefore has not refuted the claims made by Complainant. In light of the available record, the Panel concludes that Respondent is not commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute);
(e)Complainant contends the disputed domain name is used to operate a phishing website designed to obtain sensitive personal and financial information from Complainant’s customers, and that Respondent likely profits through this scheme. See Compl., at Attached Ex. M. In Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) the panel concluded that the use a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Here, the Panel observes that Complainant has included Exhibits L and M to demonstrate that the disputed domain name resolves to a page imitating Complainant’s own website to effectuate a phishing scheme. The Panel agrees that the use of the disputed domain name in conjunction with a phishing scheme imitating Complainant’s own webpage does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
name was registered and used in bad faith. That is so for the following
reasons.
First, Complainant argues Respondent’s use of the disputed domain names is likely to cause confusion as to Complainant’s affiliation with the resolving page, and that Respondent presumably profits from this confusion. Complainant urges that such use evinces bad faith. The Panel recalls that the dispute domain name resolves to a page that purports to offer internet banking services under the CAPITAL BANK mark and logo. See Complainant’s Exhibit M. Further, the Panel notes from Exhibit L that the Respondent’s resolving page is identical to Complainant’s own online banking website. Previous panels have held that efforts to imitate the complainant’s own webpage for commercial benefit are evidence of bad faith. Complainant cites Valiant Trust Co. v. Valiant Trust, FA 0844658 (Nat. Arb. Forum Jan. 11, 2007) where the Panel found the respondent’s use of the disputed domain name in connection with a financial fraud scheme would likely cause confusion as to the complainant’s sponsorship of and affiliation with the resulting website and therefore found evidence of bad faith pursuant to Policy ¶ 4(b)(iv). At present, the Panel similarly agrees that Respondent’s efforts implicate Policy ¶ 4(b)(iv).
Secondly, the Panel concludes that Respondent has engaged in passing off. In Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006), the panel wrote, “Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).” In light of the similarities between the disputed landing page and Complainant’s own webpage (see Complainant’s Exhibit L for a side-by-side comparison), the Panel concludes that Respondent’s efforts amount to passing off and evince bad faith pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent’s bad faith is demonstrated by the use of the disputed domain name in furtherance of an apparent phishing scheme. See Complainant’s Exhibit M. Panels have consistently found evidence of bad faith where the respondent uses the domain name for fraudulent purposes. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). As the Panel accepts Complainant’s allegations of fraud and the evidence adduced in their support, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the CAPITAL BANK mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capitallbank.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 21, 2014
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