Regions Asset Company v. HYRO FZ-LLC
Claim Number: FA1204001439997
Complainant is Regions Asset Company (“Complainant”), represented by Rachel Hofstatter of Steptoe & Johnson LLP, Washington, D.C., USA. Respondent is HYRO FZ-LLC (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <www-regions.com>, registered with PSI-USA, Inc. d/b/a Domain Robot.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 18, 2012; the National Arbitration Forum received payment on April 18, 2012.
On April 23, 2012, PSI-USA, Inc. d/b/a Domain Robot confirmed by e-mail to the National Arbitration Forum that the <www-regions.com> domain name is registered with PSI-USA, Inc. d/b/a Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. d/b/a Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. d/b/a Domain Robot 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 April 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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@www-regions.com. Also on April 24, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <www-regions.com> domain name is confusingly similar to Complainant’s REGIONS mark.
2. Respondent does not have any rights or legitimate interests in the <www-regions.com> domain name.
3. Respondent registered or used the <www-regions.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in the REGIONS mark which it uses in connection with banking services;
2. Complainant owns registrations for the REGIONS mark (e.g., Reg. No. 1,881,600 registered February 28, 1995) through the United States Patent and Trademark Office (“USPTO”);
3. Respondent is not commonly known by the <www-regions.com> domain name;
4. The <www-regions.com> domain name resolves to a website which displays links to services which compete with those that Complainant offers in the banking and financial services industry;
5. Respondent has made a pattern of registering and using disputed domain names in bad faith;
6. Respondent registered and began using the disputed domain name with an intent to create confusion as to the source, sponsorship, or affiliation of the disputed domain name in order to take commercial advantage of Internet users’ resulting mistakes;
7. Respondent has engaged in typosquatting;
8. Respondent had actual knowledge of Complainant’s rights in the REGIONS mark prior to its registration and use of the <www-regions.com> domain name.
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(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.”).
Complainant contends that it has rights in the REGIONS mark, which Complainant claims it uses in connection with banking services. Complainant asserts that it owns trademark registrations through the USPTO for the REGIONS mark (e.g., Reg. No. 1,881,600 registered February 28, 1995). Previous panels have found that the registration of a mark is evidence of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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)). Additionally, panels have previously held that these rights satisfy Policy ¶ 4(a)(i) regardless of the location of the parties. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the REGIONS mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <www-regions.com> domain name is confusingly similar to the REGIONS mark. Complainant asserts that Respondent simply adds the prefix “www,” a hyphen, and the generic top-level domain (“gTLD”) “.com” to the REGIONS mark in order to create the disputed domain name. The Panel finds that the addition of “www” fails to distinguish the disputed domain name from the REGIONS mark. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also Sony Kabushiki Kaisha v. EOS1\EOS-1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (“Respondent’s <www-sony.com> domain name is confusingly similar to Complainant’s SONY mark, as the domain name incorporates Complainant’s mark and adds a “www” prefix, a hyphen, and the generic top-level domain (“gTLD”) “.com.”). The Panel also finds that the addition of a hyphen does not make the <www-regions.com> domain name distinct from the REGIONS mark. See Innomed Techs., Inc. v. DRP Serves., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Finally, the Panel determines that the addition of a gTLD is irrelevant for the purpose of Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); 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.”). Therefore, the Panel finds that the <www-regions.com> domain name is confusingly similar to the REGIONS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 asserts that Respondent is not commonly known by the <www-regions.com> domain name. Complainant contends that Respondent has never legitimately used any trademark or service mark similar to the <www-regions.com> domain name. Additionally, the WHOIS record for the <www-regions.com> domain name list “HYRO FZ-LLC” as the registrant of the domain name, which Complainant argues is in no way reflective of the <www-regions.com> domain name. Panels have previously held that the WHOIS record is strong evidence of whether or not a respondent is commonly known by a disputed domain name. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, the Panel finds that Respondent is not commonly known by the <www-regions.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next argues that Respondent is using the disputed domain name in a way which is not protected by Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant asserts that the <www-regions.com> domain name resolves to a website which displays links to competing banking and financial goods and services. The Panel finds that Respondent’s use of the <www-regions.com> domain name to display links to goods and services in competition with Complainant’s goods and services is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
Complainant has submitted evidence that Respondent, HYRO FZ-LLC, has been the respondent in multiple previous UDRP proceedings that resulted in the disputed domain names in those cases being transferred to the respective complainants. See Humana Inc v. HYRO FZ-LLC, D2008-1695 (WIPO Dec. 26, 2008); see also WestJet Airlines Ltd. v. Hyro FZ-LLC, D2010-1815 (WIPO Dec. 16, 2010); see also Frey v. HYRO FZ-LLC, FA 1362409 (Nat. Arb. Forum Jan. 19, 2011); see also Webster Fin. Corp. & Wenbster Bank, Nat’l Ass’n. v. HYRO FZ-LLC, FA 1195145 (Nat. Arb. Forum July 10, 2008). The Panel finds that multiple adverse UDRP proceedings constitute evidence of Respondent’s serial cybersquatting and are evidence of Respondent’s bad faith registration and use of the current disputed domain name under 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 the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant asserts that Respondent’s bad faith is further demonstrated by its intent to cause confusion with regard to the source of the <www-regions.com> domain name and then to take commercial advantage of mistakes made as a result of this confusion. Complainant alleges that the <www-regions.com> domain name resolves to a website which displays links to goods and services in the banking and finance industry that compete with Complainant’s offerings made under the REGIONS mark. Complainant argues that Respondent is compensated for the display of these links. Therefore, the Panel finds that Respondent registered and is using the <www-regions.com> domain name in bad faith as it finds that Respondent intentionally attracted, for commercial gain, Internet users to the <www-regions.com> domain name by creating confusion as to the source, sponsorship, or affiliation of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Complainant contends that Respondent typosquatted the disputed domain name. Complainant asserts that Respondent registered Complainant’s mark in a domain name along with the prefix “www-” which usually precedes domain names with a period, rather than a hyphen. The Panel finds that Respondent’s registration of a typosquatted domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use).
Complainant contends that Respondent’s bad faith is further demonstrated by Respondent’s constructive and/or actual knowledge regarding Complainant’s rights in the REGIONS mark prior to its registration and use of the disputed domain name. Complainant contends that, due to the goodwill established in the REGIONS mark by Complainant and Complainant’s trademark registrations, Respondent had knowledge of Complainant’s rights prior to the registration and use of the <www-regions.com> domain name. Panels have held that, while constructive knowledge of a complainant’s rights in a mark is not enough, actual knowledge of rights in a mark does establish bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith if it finds that Respondent had actual knowledge of the REGIONS mark under 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 <www-regions.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 30, 2012
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