Regions Asset Company v. Gioacchino Zerbo
Claim Number: FA1202001430917
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is Gioacchino Zerbo (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwamsouth.com>, registered with NAME.COM LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his or her knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2012; the National Arbitration Forum received payment on February 22, 2012.
On February 28, 2012, NAME.COM LLC confirmed by e-mail to the National Arbitration Forum that the <wwwamsouth.com> domain name is registered with NAME.COM LLC and that Respondent is the current registrant of the name. NAME.COM LLC has verified that Respondent is bound by the NAME.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 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2012 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@wwwamsouth.com. Also on March 2, 2012, 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 April 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant operates financial institutions and ATMs across various regions of the United States under the AMSOUTH mark.
Complainant owns rights in the AMSOUTH service mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,207,527, registered September 7, 1982).
Respondent registered the disputed <wwwamsouth.com> domain name on May 10, 2003.
The <wwwamsouth.com> domain name is confusingly similar to Complainant’s AMSOUTH mark
Respondent’s domain name resolves to a website offering hyperlinks to the websites of enterprises whose services compete with those of Complainant.
Respondent receives “click-through” fees from the operation of the website resolving from the contested domain name.
Respondent is not commonly known by the <wwwamsouth.com> domain name.
Respondent is not affiliated with Complainant.
Respondent lacks rights to and legitimate interests in the disputed domain name.
Respondent is a serial cyber-squatter, and Respondent’s domain name demon-strates typo-squatting, both of which facts are evidence of bad faith registration and use of the domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in its AMSOUTH service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), and AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), both panels finding that registration with the USPTO establishes a complainant’s rights in a mark for purposes of the Policy.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that in which Respondent resides or does business. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that, under Policy ¶ 4(a)(i), it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction); to the same effect, see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000).
The <wwwamsouth.com> domain name is confusingly similar to Complainant’s AMSOUTH mark. The only differences between the mark and the domain name are the addition of “www” in front of the mark and the generic top-level domain (“gTLD”) “.com” at the back. These differences do not avoid a finding of con-fusing similarity under the standards of the Policy. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that a respondent’s domain name <wwwbankofamerica.com> was confusingly similar to a complain-ant’s trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
The Panel therefore finds that Respondent’s <wwwamsouth.com> domain name is confusingly similar to Complainant’s AMSOUTH mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent is not commonly known by the <wwwamsouth.com> domain name, and that Respondent is not affiliated with Complainant in any way. More-over, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Gioacchino Zerbo,” which does not resemble the disputed domain name. On this record, we conclude that Respondent is not known by the disputed domain name so as to have demonstrated that it has rights to or legit-imate interests in the domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), both panels finding that a respondent had no rights to or legitimate interests in a contested domain name under Policy ¶ 4(c)(ii) where no evidence in the record supported a finding that that respondent was commonly known by the domain name.
We next observe that Complainant asserts, without objection from Respondent that Respondent does not use the <wwwamsouth.com> domain name in con-nection with a bona fide offering of goods and services or a legitimate noncom-mercial or fair use, in that Respondent uses website resolving from the domain name to carry hyperlinks to the websites of Complainant’s commercial com-petitors. In the circumstances described in the Complaint, we may comfortably presume that Respondent profits from this use of the domain name. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legit-imate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain name to operate a website containing links to various commercial websites competing with the business of a complainant, which the panel found not to be 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)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
In addition, it is plain from the record that Respondent is engaged in typo-squatting in the creation and employment of the <wwwamsouth.com> domain name, which merely adds the prefix “www” to the AMSOUTH mark. This, too, is evidence that Respondent lacks rights to and legitimate interests in the domain. See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) holding that a respondent lacked rights to and legitimate interests in a domain name where that respondent merely added the prefix “www” to a com-plainant’s mark in forming the domain. Similarly, the panel in Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) concluded that a respondent had no rights to or legitimate interests in a domain name where it used a typo-squatted version of the mark of another to divert Internet users to a search engine webpage.
Thus the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The record in this proceeding amply demonstrates that Respondent is engaged in a pattern of registering domain names that are confusingly similar to the marks of others, a behavior properly described as serial cyber-squatting. See, for ex-ample, ExxonMobil Oil Corp. v. Zerbo, D2008-0046 (WIPO Feb. 27, 2008); see also Principal Fin. Servs. v. Zerbo, D2009-0280 (WIPO Apr. 20, 2009); further see Lego Juris A/S v. Zerbo, D2009-0500 (WIPO Jun. 29, 2009). This is evi-dence that Respondent has registered and is using the instant domain name in bad faith within the contemplation of Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a re-spondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of various complainants).
It is also evident that Respondent’s use of the <wwwamsouth.com> domain name disrupts Complainant’s business in that it diverts potential customers to the websites of Complainant’s commercial competitors via a domain name which is confusingly similar to Complainant’s mark. This demonstrates bad faith registra-tion and use of the domain name under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (con-cluding that the use of a domain name confusingly similar to the mark of another to attract Internet users to a website containing links to the websites of a com-plainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assoc., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise the goods and services of a complainant’s competitors, thereby disrupting its business).
Finally, as we have already found, Respondent’s registration and use of the <wwwamsouth.com> domain name, as alleged in the Complaint, constitutes typo-squatting, which is itself evidence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003):
Respondent’s registration and use of [the domain name] that capit-alizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith regis-tration and use pursuant to Policy ¶ 4(a)(iii).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wwwamsouth.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 16, 2012
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