Heritage Bank of Commerce v. Lucreasha Johnson
Claim Number: FA1412001595507
Complainant is Heritage Bank of Commerce (“Complainant”), represented by Larry St. Regis, California, USA. Respondent is Lucreasha Johnson (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <heritagebankcommerce.com>, registered with Moniker Online Services LLC.
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 December 16, 2014; the National Arbitration Forum received payment on December 17, 2014.
On December 17, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <heritagebankcommerce.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2015 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@heritagebankcommerce.com. Also on December 18, 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 January 12, 2015, 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 has registered HERITAGE BANK OF COMMERCE with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,634,978, registered June 9, 2009). The <heritagebankcommerce.com> domain name is confusingly similar to the HERITAGE BANK OF COMMERCE mark.
2. Respondent has never had any relationship with Complainant. Respondent uses the disputed domain name in connection with a website copying the look and feel of Complainant’s legitimate website. Respondent passes itself off as Complainant in an effort to obtain personal and non-public information from Complainant’s clients.
3. Respondent’s attempt to mimic Complainant’s own website in furtherance of a phishing scheme is demonstrative of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the banking and financial services industries.
2. Complainant has registered the HERITAGE BANK OF COMMERCE mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,634,978, registered June 9, 2009).
3. Respondent registered the disputed domain name on August 7, 2014.
4. Respondent uses the disputed domain name to endeavour to pass itself off as Complainant and to operate a phishing scheme.
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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the HERITAGE BANK OF COMMERCE mark to identify its banking and financing services. Complainant urges that it has registered HERITAGE BANK OF COMMERCE with the USPTO (Reg. No. 3,634,978, registered June 9, 2009). The Panel finds Complainant’s registration with the USPTO demonstrates its rights in the HERITAGE BANK OF COMMERCE mark for purposes of 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)).
The second issue that arises is whether the disputed <heritagebankcommerce.com> domain name is identical or confusingly similar to Complainant’s HERITAGE BANK OF COMMERCE mark. Complainant claims the <heritagebankcommerce.com> domain name is confusingly similar to the HERITAGE BANK OF COMMERCE mark. The Panel notes that the disputed domain name incorporates the mark in full less the preposition “of” and spacing, and also adds the generic top-level domain (“gTLD”) “.com.” The Panel agrees that these minor alterations fail to negate confusing similarity pursuant to Policy ¶ 4(a)(i). See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”); Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
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 HERITAGE BANK OF COMMERCE mark and to use it in its domain name, omitting only the preposition “of” which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on August 7, 2014 and uses it to endeavour to pass itself off as Complainant and to operate a phishing scheme;
(c) Respondent registered and has use the domain name in this manner without the knowledge or approval of Complainant;
(d) Complainant argues that Respondent has never had any relationship with Complainant. The Panel notes that the WHOIS information identifies “Lucreasha Johnson” as registrant of the <heritagebankcommerce.com> domain name. Given the available evidence, the Panel finds no basis to conclude Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the 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 the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(e) Complainant further claims that Respondent uses the disputed domain name in connection with a website copying the look and feel of Complainant’s legitimate website. Complainant contends that Respondent passes itself off as Complainant in this way to obtain personal and non-public information from Complainant’s clients. The Panel notes that Complainant has included in its evidence a screenshot of the resolving website, which depicts the HERITAGE BANK OF COMMERCE mark as well as fields inviting users to submit their “Account Number,” “Password,” and “Pin.” See Compl., at Attached Ex. 1. The Panel finds Respondent’s use of the <heritagebankcommerce.com> domain name as a portal to phish for personal information from Complainant’s clients under the guise of Complainant’s genuine website provides strong evidence that Respondent is not making a legitimate or protected use of the disputed domain name. See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
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. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
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 that Respondent’s attempt to pass itself off as Complainant in furtherance of a phishing scheme is demonstrative of bad faith. The Panel recalls that the disputed domain name resolves to a website purporting to be operated by Complainant, and invites users to submit private account information in order to access the website fully. See Compl., at Attached Ex. 1. Under comparable circumstances, in Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004), the panel concluded that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use. Consistent with prior analysis, the Panel finds Respondent’s efforts to mimic Complainant’s banking website to acquire personal information fraudulently from Complainant’s clients strongly demonstrates Respondent registered and is using the disputed domain name in bad faith as defined by Policy ¶ 4(a)(iii).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <heritagebankcommerce.com> domain name using the HERITAGE BANK OF COMMERCE mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it 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 <heritagebankcommerce.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 13, 2015
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