Hancock Holding Company v. Fluder
Claim Number: FA1512001651952
Complainant is Hancock Holding Company (“Complainant”), represented by Bradford C. Ray of Jones Walker, LLP, Mississippi, USA. Respondent is Fluder (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hancockbank.online>, registered with Dynadot, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2015; the Forum received payment on December 14, 2015.
On December 11, 2015, Dynadot, LLC confirmed by e-mail to the Forum that the <hancockbank.online> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2016 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@hancockbank.online. Also on December 14, 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.
A timely Response was received and determined to be complete on December 14, 2015.
Complainant’s Additional Submission was received and determined to be compliant on December 21, 2015.
On December 22, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant holds two trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HANCOCK BANK mark (Reg. No. 2,852,868, registered June 15, 2004; Reg. No. 4,309,116, registered March 26, 2013), which demonstrates rights in the mark.
2. Respondent’s <hancockbank.online> domain name includes the entire HANCOCK BANK mark, less the space, and appends the generic top-level domain (“gTLD”) “.online.”
3. Respondent has no rights or legitimate interests in the <hancockbank.online> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is using the disputed domain name in conjunction with its business, profiting from the goodwill associated with the HANCOCK BANK mark.
4. Additionally, the domain name is offered by Respondent for sale in the amount of $500.00.
5. Respondent registered and uses the domain name in bad faith. Respondent has offered the domain name for sale online at <sedo.com>, as well as specifically to Complainant in email correspondence.
6. Respondent has been involved in multiple UDRP decisions, wherein Respondent was found to have registered domains in bad faith. See Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder), D2014-1747 (WIPO Nov. 8, 2014) (transferred to Complainant); Première Vision v. Pierre-Olivier Fluder, D2014-2036 (WIPO Dec. 29, 2014) (transferred to Complainant); Aspect Capital Limited v. Fluder (aka Pierre Fluder), D2015-0475 (WIPO April 14, 2015) (transferred to Complainant.
7. Respondent’s <hancockbank.online> domain name is nearly identical to Complainant’s HANCOCK BANK mark, which undoubtedly causes Internet user confusion, resulting in commercial profit for Respondent.
B. Respondent
1. Respondent has not registered the disputed domain name in bad faith.
2. Five hundred dollars is not in excess of out-of-pocket costs within the meaning of Policy ¶ 4(b)(i).
3. Respondent has not targeted Complainant through its registration of its domain, nor has it tried to profit from any associated goodwill with the HANCOCK BANK mark.
4. Complainant has failed to present evidence of Respondent’s commercial gain.
C. Complainant’s Additional Submission
1. Respondent is a domain name reseller, and has 1,798 domains associated with it. Respondent’s use of the domain name is purely commercial.
2. Five hundred dollars is a higher price than what many online domains are being offered for on various websites.
Complainant holds trademark rights for the HANCOCK BANK mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <hancockbank.online 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.
Complainant holds two trademark registrations with the USPTO for the HANCOCK BANK mark (Reg. No. 2,852,868, registered June 15, 2004; Reg. No. 4,309,116, registered March 26, 2013), which demonstrates rights in the mark pursuant to Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Nat. Arb. Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Next, Complainant argues that Respondent’s <hancockbank.online> domain name includes the entire HANCOCK BANK mark, less the space, and adds the generic top-level domain (“gTLD”) “.online” and therefore is confusingly similar to the mark. Such minor alterations fail in distinguishing a disputed domain from a mark. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Nat. Arb. Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the <hancockbank.online> domain name is confusingly similar to the HANCOCK 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 name. 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 has no rights or legitimate interests in the <hancockbank.online> domain name. Complainant asserts that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). Complainant presents evidence that Respondent owns a multitude of domain names. Further, the WHOIS of record, lists “Fluder” as registrant for the disputed domain. Based on the record, and in light of Respondent’s failure to present evidence with respect to Policy ¶ 4(c)(ii), the Panel finds that Complainant has shown that Respondent is not commonly known by the domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Further, Complainant asserts that Respondent is using the disputed domain name in conjunction with its business, profiting from the goodwill associated with the HANCOCK BANK mark. Respondent describes its business as follows:
We registered this domain only to promote New gTLD Program and especially dot ONLINE extension, not for commercial gain, or to create a likelihood of confusion.
This is important for the success of the new domain extensions, that a lot of companies embrace new gTLDs and know the dot ONLINE potential, making it the perfect choice for anyone looking to create an online presence.
New gTLDs and especially dot ONLINE extension will open up new space in which companies can improve security, build trust and authenticity, embrace new business opportunities, and support new business models, and they have to know it, that's why we registered this domain, to focus on it.
Respondent’s asserted use of the domain name is much like the use rejected in La Salle University v. Fred McCaw, FA 1515840 (Nat. Arb. Forum Oct. 1, 2013). There, the respondent claimed he registered hundreds of domain names because the “next big thing” was to list domain names for sale. The Panel had little trouble in finding the respondent’s proposed use of the domain name did not establish rights or legitimate interests within the meaning of the Policy.
Moreover, Respondent’s claimed purpose in registering the <hancockbank.online> domain name “open up new space in which companies can improve security, build trust and authenticity, [and] embrace new business opportunities” is simply not credible. Hancock Bank was founded over 100 years ago, with branches throughout Mississippi, Alabama, Florida, Louisiana and Texas. Thus, none of the reasons proffered by Respondent for listing the <hancockbank.online> domain name for sale are persuasive. Therefore, the Panel agrees that Respondent has shown no rights or legitimate interests in the <hancockbank.online> domain name per Policy ¶¶ 4(c)(i) or (iii).
Additionally, the <hancockbank.online> domain name is offered by Respondent for sale in the amount of $500.00 which presumably exceeds Respondent’s out-of-pocket costs. This is a further reason demonstrating that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been involved in multiple UDRP decisions, wherein Respondent was found to have registered domains in bad faith. E.g., Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder), D2014-1747 (WIPO Nov. 8, 2014) (transferred to Complainant); Première Vision v. Pierre-Olivier Fluder, D2014-2036 (WIPO Dec. 29, 2014) (transferred to Complainant); Aspect Capital Limited v. Fluder (aka Pierre Fluder), D2015-0475 (WIPO April 14, 2015) (transferred to Complainant). Such a history of bad faith domain registrations has been seen to support a finding of bad faith under Policy ¶ 4(b)(ii). See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”). This history is sufficient to find bad faith under Policy ¶ 4(b)(ii).
Finally, because the domain name incorporates the entirety of Complainant’s mark, it is apparent that Respondent had actual knowledge of Complainant’s rights. This amounts to bad faith. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); 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").
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 <hancockbank.online> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 31, 2015
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