OneWest Bank N.A. v. STEVENS AZPUILICU
Claim Number: FA1502001605838
Complainant is OneWest Bank N.A. (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is STEVENS AZPUILICU (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onewstbk.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2015; the Forum received payment on February 19, 2015.
On February 23, 2015, ENOM, INC. confirmed by e-mail to the Forum that the <onewstbk.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 March 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 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@onewstbk.com. Also on March 2, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Complainant owns the ONEWEST BANK mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,735,172, registered Jan. 5, 2010). Complainant offers banking products and services for individual consumers and business and uses the ONEWEST BANK mark in connection with its services.
2. The <onewstbk.com> domain name is confusingly similar to the ONEWEST BANK mark. The domain name contains Complainant’s mark but omits the letter “e” from WEST and omits the “a” and “n” from BANK. The disputed domain name adds the generic top-level domain (“gTLD”) “.com.”
3. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the domain name does not reflect that Respondent is commonly known by the domain name. Further, Complainant has never authorized Respondent to use the ONEWEST BANK trademark. Respondent’s lack of rights or legitimate interests in the <onewstbk.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
4. Respondent is using the <onewstbk.com> domain name to attempt to impersonate Complainant.
5. Respondent has engaged in bad faith registration and use of the <onewstbk.com> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, by choosing a domain name connected with Complainant’s well-known mark, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
6. Finally, Respondent operates a phishing scheme, which is further evidence of bad faith under Policy ¶ 4(a)(iii).
7. The Panel <onewstbk.com> domain name was registered December 23, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ONEWEST BANK mark. Respondent’s domain name is confusingly similar to Complainant’s ONEWEST BANK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <onewstbk.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.”).
Complainant owns the ONEWEST BANK mark through registration with the USPTO (e.g., Reg. No. 3,735,172, registered Jan. 5, 2010). Complainant offers banking products and services for individual consumers and business and uses the ONEWEST BANK mark in connection with its services. Registration with a federal trademark agency sufficiently demonstrates Complainant’s rights in the mark, despite evidence that Respondent reportedly resides in Austria. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant asserts that the <onewstbk.com> domain name is confusingly similar to the ONEWEST BANK mark. The domain name contains Complainant’s mark but omits the letter “e” from WEST and omits the “a” and “n” from BANK. The mere omission of letters from a registered mark makes a domain name confusingly similar under Policy ¶ 4(a)(i). 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”). Further, the domain name adds the gTLD “.com” and eliminates the spaces in Complainant’s mark. The addition of a gTLD to a complainant’s mark and removing the spaces does not negate confusing similarity under 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)). The Panel holds that the disputed domain name is confusingly similar to Complainant’s ONEWEST BANK mark under 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant contends the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the domain name. Further, Complainant has never authorized Respondent to use the ONEWEST BANK trademark. The WHOIS information lists “Stevens Azpuilicu” as the registrant of record. These uncontradicted contentions sufficiently establish Respondent’s lack of rights in the disputed 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).
Complainant argues Respondent’s lack of rights or legitimate interests in the <onewstbk.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant states Respondent is using the <onewstbk.com> domain name to attempt to impersonate Complainant. Complainant asserts that Respondent’s website appears identical to Complainant’s, and Respondent fraudulently attempts to pass itself off as Complainant to trick customers into divulging personal information. On this record, Complainant has established that Respondent’s resolving website is not operated in connection with a bona fide offering of goods or services. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Respondent’s resolving website requests Internet users “Access ID” and “Access Pin.” Where a respondent attempts to procure personal information from Internet users through an infringing use of a trademark this amounts to phishing. See also See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Because the Panel finds that Respondent failed to demonstrate either a bona fide offering of goods or services or legitimate noncommercial or fair use, the Panel holds that Respondent has no rights or legitimate interests in respect of the domain name in dispute under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website away from Complainant’s business. Complainant alleges that Respondent uses the disputed domain name primarily for the purpose of disrupting its business and to provide a sense of false legitimacy to fool Complainant’s customers. Complainant asserts this constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel agrees.
Further, by choosing a domain name connected with Complainant’s well-known mark, Complainant claims that Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark and Complainant’s business. Complainant argues that Respondent’s resolving website confuses consumers as to the source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website, and commercially benefits Respondent from the goodwill associated with the ONEWEST BANK mark. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). The Panel agrees that Respondent is seeking commercial gain through a likelihood of confusion with Complainant’s mark, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent operates a phishing scheme, which is further evidence of bad faith under Policy ¶ 4(a)(iii). The record shows that Respondent uses the disputed domain name to lure Complainant’s customers to a phishing website, and Respondent is then able to receive Internet users’ personal and private financial information. These activities are evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 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). Once again, the Panel agrees.
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 <onewstbk.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 7, 2015
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