Dickinson Financial Corporation v. DOMAIN MANAGER / WEB D. G. LTD.
Complainant is Dickinson Financial Corporation (“Complainant”), represented by Judith L. Carlson of Stinson Leonard Street LLP, Missouri, USA. Respondent is DOMAIN MANAGER / WEB D. G. LTD. (“Respondent”), Hong Kong, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <armedforcesbank.com>, registered with Uniregistrar Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 14, 2015; the Forum received payment on May 14, 2015.
On May 14, 2015, Uniregistrar Corp confirmed by e-mail to the Forum that the <armedforcesbank.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar 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 May 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 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@armedforcesbank.com. Also on May 19, 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 June 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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’s Contentions
1. Complainant owns common law rights in the ARMED FORCES BANK mark, and owns additional rights through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,643,901, first used in commerce Apr. 12, 2013, filed Jan. 7, 2014, registered Nov. 25, 2014). Complainant offers banking and financial services and uses the ARMED FORCES BANK mark to promote its goods and services. The <armedforcesbank.com> domain name is identical to the ARMED FORCES BANK mark. The domain name contains Complainant’s mark in full and attaches the generic top-level domain (“gTLD”) “.com” to the domain name.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to direct Internet users to a website that displays hyperlinks to various third-party websites featuring banking and financial services, some of which compete directly with Complainant.
3. Respondent has engaged in bad faith registration and use of the <armedforcesbank.com> domain name. Respondent uses the disputed domain to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Further, Respondent had constructive knowledge of Complainant’s rights in the mark prior to acquiring the disputed domain name.
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <armedforcesbank.com> domain name is confusingly similar to Complainant’s ARMED FORCES BANK mark.
2. Respondent does not have any rights or legitimate interests in the <armedforcesbank.com> domain name.
3. Respondent registered or used the <armedforcesbank.com> 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 Panel also sees that Complainant owns rights to the ARMED FORCES BANK through its registration with the USPTO (Reg. No. 4,643,901, first used in commerce Apr. 12, 2013, filed Jan. 7, 2014, registered Nov. 25, 2014). Although the <armedforcesbank.com> was first registered on November 29, 2001, Complainant contends that Respondent acquired the disputed domain name no earlier than November of 2014, which is well after Complainant first filed for its registration with the USPTO. See Compl., at Attached Ex. G, p 4-12. Previous panels have found that the relevant date for determining a respondent’s rights to a disputed domain name dates back to the time it was transferred to the respondent. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, which complainant’s rights in the mark predated). Further, previous panels have found that the relevant date for determining a complainant’s rights in a mark dates back to the filing date with trademark authorities. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel finds that Complainant’s rights in the ARMED FORCES BANK mark predate Respondent’s acquisition of the disputed domain name, and therefore finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
The Policy does not require that Complainant’s trademark be registered by a government authority or agency to establish rights in the mark under ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts that it owns common law rights in the ARMED FORCES BANK mark. Complainant states that it offers banking and financial services and uses the ARMED FORCES BANK mark to promote its goods and services, and argues that it has established secondary meaning in the mark through longstanding use, considerable advertising expenditures, and other promotional activities. Complainant states that its services have been available since 1997, and Complainant operates nearly 50 branches. This Panel finds that Complainant has established secondary meaning in its mark, and thus finds Complainant owns common law rights in the NATIONSTAR mark, satisfying the initial requirement of Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning).
Complainant asserts that the <armedforcesbank.com> domain name is identical to the ARMED FORCES BANK mark. The domain name contains Complainant’s mark in full and attaches the gTLD “.com” to the domain name. Previous panels have found that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant.). Therefore, the Panel finds that the <armedforcesbank.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name identifies “DOMAIN MANAGER / WEB D. G. LTD.” as the registrant of record. Further, Complainant asserts that Respondent is not a licensee of Complainant, nor has it received permission to use the ARMED FORCES BANK mark for any purpose. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to 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).
Complainant claims that Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. According to Complainant, Respondent uses the disputed domain name to direct Internet users to a website that displays hyperlinks to various third-party websites featuring banking and financial services, some of which compete directly with Complainant. See Compl., at Attached L, M. Past panels have agreed that use of a disputed domain name to feature competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites). The Panel concludes that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel agrees that as Respondent presumably attempts to profit through click-through fees, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
Complainant alleges that Respondent uses the disputed domain to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent presumably receives “click through” fees through the use of its disputed domain name, and obtained the disputed domain name to attract and mislead consumers for its own profit. Prior panels have found that hyperlinks are typically associated with referral fees, and a respondent’s use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent had constructive knowledge of Complainant’s rights in the mark prior to acquiring the disputed domain name. Complainant asserts that at the time Respondent acquired the disputed domain name, the ARMED FORCES BANK mark had been in use for over 17 years and was the subject of a federal trademark application. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <armedforcesbank.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 19, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page