New York Community Bancorp, Inc. v. Ryan G Foo / PPA Media Services
Claim Number: FA1601001657051
Complainant is New York Community Bancorp, Inc. (“Complainant”), represented by David Bateman of K&L Gates LLP, Washington, United States. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mynybc.com> ('the Domain Name'), registered with Internet Domain Service BS 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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 18, 2016; the Forum received payment on January 18, 2016.
On January 21, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <mynybc.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS 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 January 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@mynybc.com. Also on January 26, 2016, 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 February 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
Complainant's submissions can be summarized as follows:
Complainant is the holding company for New York Community Bank, which has continuously used the NYCB marks in connection with its services to distinguish those from its competitors since 2000. It uses the NYCB marks as part of the second level of the top-level domain mynycb.com to market and advertise its banking services and uses the mark prominently in its marketing. It owns US trademark registrations for its banking services consisting of or incorporating NYCB including the word mark NYCB BANK and a logo consisting of the NYCB letters in a square.
The Domain Name was registered in 2006, but it does not appear Respondent was the original registrant and acquisition of a domain name is equivalent to a new registration. Even if Respondent was the original registrant, Complainant's rights in the NYCB marks predate the registration of the Domain Name.
The Domain Name is virtually identical or at the very least confusingly similar to Complainant's well-known NYCB mark and mynycb.com domain name other than reversing the 'c' and 'b'. The transposing of two letters is, at best, a peripheral difference and does not create a new or different mark. As such the Domain Name is confusingly similar to Complainant's federally registered mark.
Respondent has not made legitimate use of, nor has it made demonstrable preparations to legitimately use the Domain Name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Respondent is not affiliated with Complainant and has not been granted any licence or permission to use the well-known NYCB marks. There is no evidence to show Respondent has ever been known by or operated a business under the name MYNYBC, nor does Respondent have any trademark rights in the name.
Before Complainant contacted Respondent, the Domain Name redirected users to a website located at National-Consumer-Survey.com, which purported to offer a consumer survey by Complainant in return for rewards. It was headed 'New York Community Bank Consumer Survey' and claimed to want to improve services. After Complainant contacted Respondent, this use ceased and the Domain Name displayed links to third party web pages for Complainant's competitors for the purpose of generating click through revenue.
Use of a typosquatting version of Complainant's mark is, by itself, evidence that Respondent lacks rights or legitimate interests in the Domain Name.
Respondent is soliciting offers from Internet users to buy the Domain Name though sedo.com.
The Domain Name was registered and is being used in bad faith. Respondent has registered the Domain Name to disrupt Complainant's business and to intentionally attract Internet users to Respondent's web site for commercial gain by creating a likelihood of confusion with Complainant's NYCB marks. The actual use of Complainant's name in association with the Domain Name indicates actual knowledge of Complainant and its domain name.
Bad faith use and registration exists when a respondent's disputed domain name merely misspells Complainant's mark. It is diverting Internet users and purporting to offer a consumer survey by Complainant for its own commercial gain. Bad faith is also evident in the current use diverting Internet traffic to a general commercial links page. Bad faith is indicated when the web page contains competitive links. Respondent is also seeking to sell the Domain Name and this also indicates bad faith registration and use. The initial use of a privacy service also indicates bad faith registration and use. Respondent is a serial cybersquatter with prior bad faith findings which establishes a pattern of bad faith domain name registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the holding company for New York Community Bank which has continuously used the NYCB marks in connection with its services to distinguish those from its competitors since 2000. It uses the NYCB marks as part of the second level of the top-level domain mynycb.com to market and advertise its banking services and uses the mark prominently in its marketing. It owns US trademark registrations for its banking services consisting of or incorporating NYCB including the word mark NYCB BANK and a logo consisting of the NYCB letters in a square, which records its first use in commerce as 2000.
The Domain Name initially redirected users to a web site located at National-Consumer-Survey.com, which purported to offer a consumer survey by NYCB in return for rewards. It was headed 'New York Community Bank Consumer Survey' and claimed to want to improve services. After Complainant states it contacted Respondent, this use ceased and the Domain Name then began to display links to third party web pages for banking services not associated with Complainant.
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(f), 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 Domain Name consists of a misspelling of Complainant’s domain name mynycb.com and the distinctive part of the Domain Name is a misspelling of the Complainant's NYCB mark which is registered in the USA for, inter alia, banking services and was first used in commerce in 2000. Merely the 'b' and 'c' is swapped around. gTLDs are typically irrelevant in the determination of confusing similarity. See Isleworth Land Co. v Lost In Space , SA, FA 117330 (Nat. Arb. Forum Sept 27, 2002) ('It is a well-established policy that generic top level domains are irrelevant when conducting a Policy 4(a)(i) analysis.’). The swapping around of the letters 'b' and 'c', the addition of the generic word 'my' and the gTLD .com do not serve to distinguish the Domain Name from Complainant's NYCB trademark. As such, the Domain Name is confusingly similar to a trade mark in which Complainant has rights for the purpose of the Policy.
Respondent has not filed a Response and does not appear to have any trademarks associated with the name NYBC. There is no evidence that it is commonly known by this name and it does not have any consent from Complainant to use its similar mark NYCB. Respondent does not appear to have used the Domain Name for any bona fide offering of services of its own. In fact, on the evidence, Complainant has successfully shown that Respondent has sought to pass itself off as Complainant or associated with it by use of typosquatting in order to gather information. See Juno Online Servs, Inc. v Nelson, FA 241972 (Nat. Arb. Forum Mar. 29 2004) (finding that using a domain name in a fraudulent scheme to deceive internet users into providing personal information is not a bona fide offering of goods and services nor a legitimate noncommercial or fair use). The act of 'phishing' as such practices are known does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name.
Paragraph 4 (b) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on‑line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. Reviewing the evidence and noting the typosquatting and phishing activities of Respondent, the Panelist finds that Respondent had actual knowledge of Complainant and its services and has attempted to cause confusion amongst Internet users between Complainant's mark and its Domain Name, which is a misspelling of Complainant's mark for commercial gain and to disrupt Complainant's business. Past panels have held that phishing for information through a disputed domain name indicates bad faith. 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 acquire information from the Complainant's customers). Typosquatting is, in itself, an indication of bad faith registration and use. See Vanguard Group Inc v IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004). As such. the Panelist finds that Complainant has made out its case under para 4(b)(iv) and (iii) of the Policy due to the typosquatting and phishing activities of Respondent and there is no need to consider Complainant's additional submissions as to possible further grounds of bad faith.
Accordingly, the Panel finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mynybc.com> domain name be TRANSFERRED from Respondent to Complainant..
<<Dawn Osborne>>, Panelist
Dated: <<March 4, 2016>>
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