BBVA Compass Bancshares, Inc. v. jeff kennedy
Claim Number: FA1803001775740
Complainant is BBVA Compass Bancshares, Inc. (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is jeff kennedy (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bbvacompasscryptocurrency.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 13, 2018; the Forum received payment on March 13, 2018.
On March 14, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bbvacompasscryptocurrency.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2018 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@bbvacompasscryptocurrency.com. Also on March 14, 2018, 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. Respondent did however send two e-mails to the Forum, see below.
On April 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it uses the BBVA COMPASS marks to provide and market its banking services, including services related to cryptocurrencies. Complainant claims rights in the mark based on its registration in the United States in 2010.
Complainant alleges that the disputed domain name is confusingly similar to its BBVA COMPASS mark as it incorporates the mark in its entirety, merely adding the descriptive term “cryptocurrency” and the generic top level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the BBVA COMPASS mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the disputed domain name to feature click-through links to services that compete directly with Complainant. In addition, Respondent also offered to sell the disputed domain name to Complainant for US $50,000. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and used the disputed domain name in bad faith. Respondent has offered to sell the disputed domain name to Complainant. Respondent has an established pattern of registering famous domain names and attempting to sell them. Respondent is using the disputed domain name to feature click-through links to services that compete directly with Complainant. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BBVA COMPASS mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent did send two e-mails to the Forum, in which he states (verbatim):
What does this involve. They contacted me and I told them the webname was for sale and they can buy it? Tell them to make me an offer. Its just business. Advise please
And
Goodness, just make me an offer and buy the damn name.
Complainant owns the mark BBVA COMPASS, with rights dating back to 2010. The mark is used to market Complainant’s banking services, including services related to cryptocurrencies.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is attempting to sell the disputed domain name and uses it to resolve to a website that offers links to products and services that compete with those of Complainant. Further, Respondent has exhibited a pattern of bad faith registration.
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 (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 disputed domain name is confusingly similar to the BBVA COMPASS mark as it contains the mark in its entirety and adds the descriptive term “cryptocurrency” as well as the gTLD “.com.” Panels have consistently found that differences between domain names and registered marks such as the addition of words that describe the goods or services in connection with the mark, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus the Panel finds that the disputed domain name is confusingly similar to the BBVA COMPASS mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the BBVA COMPASS mark in any way. Further, Respondent is not commonly known by the disputed domain name: in the absence of a response WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here the WHOIS information of record identifies the registrant of the disputed domain name as “Jeff Kennedy.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Further, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use as, instead, Respondent uses the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Specifically, the resolving webpage features links to cryptocurrency sites for Respondent’s presumed commercial gain. Offering links to products in competition with a complainant can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Consequently, the Panel finds that this use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
In addition, Respondent offered to sell the disputed domain name for US $50,000, which is an amount well in excess of the out-of-pocket costs. This is evidence of a lack of rights and legitimate interests in a domain name per Policy ¶ 4(a)(ii). See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”). Therefore, the Panel finds that under Policy ¶ 4(a)(ii), this is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent (who did not submit a Response) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is using the disputed domain name to attract internet users for commercial gain through using a confusingly similar domain name to resolve to a website offering various sponsored listings. Panels have found a respondent to have acted in bad faith under Policy ¶ 4(b)(iv) where a respondent used a domain confusingly similar to another’s mark to profit from commercial links. See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). The Panel finds that Respondent has used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Further, as already noted, Respondent offered to sell the domain name for an amount in excess of out of pocket costs. This can evince bad faith per Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As such, the Panel views this offer as evidence of bad faith pursuant to Policy ¶ 4(b)(i).
In addition, Respondent has a pattern of bad faith registration: Complainant reveals a history of Respondent’s registering domain names featuring famous brands associated with banking services. A respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Therefore, the Panel finds that Respondent registered and uses the disputed domain name 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 <bbvacompasscryptocurrency.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 6, 2018
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