International Bancshares Corporation v. Ann Southcombe
Claim Number: FA1104001386286
Complainant is International Bancshares Corporation (“Complainant”), represented by Matthew M. Jennings of Cox Smith Matthews Incorporated, Texas, USA. Respondent is Ann Southcombe (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ibconlinecenter.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2011; the National Arbitration Forum received payment on May 2, 2011.
On April 29, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <ibconlinecenter.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 May 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2011 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@ibconlinecenter.com. Also on May 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <ibconlinecenter.com> domain name is confusingly similar to Complainant’s IBC mark.
2. Respondent does not have any rights or legitimate interests in the <ibconlinecenter.com> domain name.
3. Respondent registered and used the <ibconlinecenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, International Bancshares Corporation, owns the IBC mark and has used the mark since at least September 1996 in connection with its financial and banking services. Complainant holds a trademark registration for its IBC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,345,660 issued April 25, 2000).
Respondent, Ann Southcombe, registered the <ibconlinecenter.com> domain name on April 5, 2011. Respondent used the disputed domain name to operate a website nearly identical to Complainant’s online banking website as part of an illegal phishing operation. There is currently no content on the resolving website.
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."
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.”).
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 maintains that it has demonstrated its rights in the IBC mark. Registration of a mark with a trademark authority is one way in which a complainant can establish rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Here, Complainant has a trademark registration for its IBC mark with the USPTO (Reg. No. 2,345,660 issued April 25, 2000) and therefore, the Panel finds that Complainant has established rights in the IBC mark under Policy ¶ 4(a)(i).
Complainant also maintains that Respondent’s <ibconlinecenter.com> domain name is confusingly similar to its IBC mark. The disputed domain name uses the entire IBC mark and only changes the mark by adding the descriptive words “online center” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the descriptive words “online center,” which references Complainant’s provision of an online banking center for its customers, does not remove the disputed domain name from the realm of confusing similarity. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The Panel also finds that the addition of a gTLD is not a factor in a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel concludes that Respondent’s <ibconlinecenter.com> domain name is confusingly similar to Complainant’s IBC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant alleges that Respondent lacks rights and legitimate interests the disputed domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.” Here, Complainant has presented a prima facie case in support of its claims. Due to Respondent’s failure to submit a response to the Complaint, this can be viewed as an admission that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel elects to review the evidence to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <ibconlinecenter.com> domain name. The WHOIS information identifies Respondent as “Ann Southcombe,” which is not similar to the disputed domain name. Additionally, Complainant argues that it has never had a business relationship with Respondent or granted a license for use of the IBC mark to Respondent. The Panel concludes that Respondent is not commonly known by the disputed domain name, under Policy ¶ 4(c)(ii), as there is no evidence that would provide a basis for finding otherwise. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain name previously resolved to a website nearly identical to the layout of Complainant’s official website in order to deceive customers into believing that Respondent’s website was actually Complainant’s online banking portal. The Panel finds such use of the confusingly similar disputed domain name to pass itself off as Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Complainant argues that Respondent used the <ibconlinecenter.com> name in order to conduct an illegal phishing operation. Complainant claims that Respondent’s website contained underlying HTML source code which mimicked the behavior of Complainant’s website, likely in an attempt to elicit and capture the secure log-in information of Complainant’s customers. The Panel finds that Respondent’s use of the disputed domain name to operate a phishing scheme for the purpose of gathering private log-in information of Complainant’s online banking and financial customers is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant contends that after it became aware of Respondent’s phishing attack, it contacted the relevant Internet service provider and conferred takedown of Respondent’s website, such that no content is currently displayed on the site. The Panel finds that Respondent’s inactive holding of the disputed domain name still does not establish Respondent’s rights or legitimate interests under Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Respondent’s <ibconlinecenter.com> domain name previously resolved to website that appeared very similar to Complainant’s banking and financial site in an attempt to pass itself off as Complainant’s online banking portal and to conduct an illegal phishing operation. The Panel infers that Respondent likely profited from the phishing scheme. Given the similarities between the websites and the use of Complainant’s IBC mark, the disputed domain name created a likelihood of confusion as to Complainant’s association with the resolving website. Respondent attempted to commercially gain from this confusion by conducting the phishing operation. The Panel finds that Respondent’s revision and use of the disputed domain name was evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
Complainant maintains that Respondent previously registered and used the <ibconlinecenter.com> domain name for the purpose of conducting an illegal phishing operation and securing the log-in information of Complainant’s customers. Respondent’s website used Complainant’s IBC trademark on the resolving site and created a look and feel similar to Complainant’s website in order to deceive customers into providing their personal information. The Panel finds that the conducting of such a phishing scheme constitutes bad faith use and registration 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); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
After discovering Respondent’s illegal phishing scheme, Complainant claims that it contacted an Internet service provider to have the content removed and that Respondent’s website currently has no active content. The Panel finds that the inactive holding of a confusingly similar disputed domain name is evidence of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ibconlinecenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 6, 2011
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