BB&T Corporation v. Gioacchino Zerbo
Claim Number: FA1303001489015
Complainant is BB&T Corporation (“Complainant”), represented by Dean A. Scharnhorst of PO Box 1255, North Carolina, USA. Respondent is Gioacchino Zerbo (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwbbandt.com>, registered with Internet.bs Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2013; the National Arbitration Forum received payment on March 8, 2013.
On March 12, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <wwwbbandt.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.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 March 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2013 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@wwwbbandt.com. Also on March 18, 2013, 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 April 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
a. Complainant, BB&T Corporation, is a well-known financial holding company in the United States. Complainant has also used the domain name <bbt.com> in conjunction with its financial services.
b. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BB&T mark (Reg. No. 1,382,662, registered February 11, 1986).
c. The accused domain name is confusingly similar to the BB&T mark because it wholly incorporates Complainant’s BB&T mark by changing the “&” in BB&T to “and,” removing the punctuation between the “www” and the mark, and adding the generic top-level domain (“gTLD”) “.com.”
d. Respondent has no rights or legitimate interests in the accused domain name.
i. Respondent is not commonly known by the <wwwbbandt.com> domain name.
ii. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring links to third-party websites.
e. Respondent has registered and is using the domain name in bad faith.
i. A search of the online databases maintained by the National Arbitration Forum and World Intellectual Property Organization resulted in at least 3 domain disputes involving CDN Properties Incorporated that resulted in the disputed domain names in those cases being transferred to the respective complainants. A search of the National Arbitration Forum’s database found sixteen (16) additional cases involving Respondent Gioacchino Zerbo that resulted in the disputed domain names being transferred to the respective complainants.
ii. Respondent is appropriating the BB&T mark for use in a confusingly similar domain name to refer Internet users to a directory website full of pay-per-click links.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is well-known as a financial holding company providing banking and financial services.
2.Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BB&T mark (Reg. No. 1,382,662, registered February 11, 1986) ( “the BB&T mark”).
3.Respondent registered the <wwwbbandt.com> domain name on June 19, 2003. It resolves to a website containing links to third-party websites offering services including online financial services and information.
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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can reply. Complainant submits that it is a well-known financial holding company in the United States. Complainant asserts that it has also used the domain name <bbt.com> in conjunction with its financial services. Complainant argues that it is the owner of trademark registrations with the USPTO for the BB&T mark (Reg. No. 1,382,662, registered February 11, 1986). See Complainant’s Exhibit 1. The Panel notes that although Respondent appears to reside in Italy, it is irrelevant whether Complainant has registered its trademark in the country of Respondent’s residence. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel concludes that Complainant’s registration of the BB&T mark with the USPTO demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the BB&T mark. Complainant asserts that the domain name is confusingly similar to the BB&T mark because it wholly incorporates Complainant’s BB&T mark by changing the “&” in BB&T to “and,” removing the punctuation between the “www” and the mark, and adding the gTLD “.com.” The Panel holds that Respondent’s substitution of “&” does not distinguish the domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, D2001-1216 (WIPO Mar. 25, 2002) (“The Panel further finds that the domain name <bunsandnoble.com> is confusingly similar to the BARNES & NOBLE marks in so far as the domain name is similar in sound to Complainant’s marks.”). The Panel determines that Respondent’s removal of the punctuation between “www” and the mark does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered 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”). Finally, the Panel holds that Respondent’s addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) confusingly similar analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BB&T mark and to use it in its domain name, making only minor alterations and adding the letters “www” at the beginning of the domain name, thus giving the false impression that it is an official domain name of Complainant that will lead to an official website of Complainant;
(b) Respondent has then used the domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which promote financial services and information in fields that are within the ambit of Complainant’s business such as mortgages and online banking;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) There is no other evidence showing that on any other ground Respondent could have a right or legitimate interest in the domain name.
(e) Complainant argues that Respondent is not commonly known by the <wwwbbandt.com> domain name. Complainant contends that on March 8, 2013, the registrant of the disputed domain name was “CDN Properties Incorporated.” See Complainant’s Exhibit 4. The Panel notes that the WHOIS information lists “Gioacchino Zerbo” as the current registrant of the domain name. See Complainant’s Exhibit 9. Complainant contends that it has not authorized Respondent to use Complainant’s BB&T mark. The Panel notes that Respondent does not provide any evidence that it is known by the domain name. Thus, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(f) Complainant also submits that Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring links to third-party websites. The Panel notes that Respondent’s disputed domain name provides referrals to hyperlinks titled “HOME MORTGAGE – LOW FIXED-RATE HOME MORTGAGE,” “3.0% NO CLOSING COST REFI- NO SSN, NO CLOSING COST LOAN,” “CHASE MORTGAGE-PREQUALITY,” and others. See Complainant’s Exhibit 5. Complainant argues that it is reasonable to infer that Respondent is receiving “click-through” fees for these referrals. The Panel finds that Respondent’s diversion of Internet users who are seeking Complainant’s website by use of a misleading domain name for Respondent’s benefit is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that a search of the online databases maintained by the National Arbitration Forum and World Intellectual Property Organization resulted in at least 3 domain disputes involving CDN Properties Incorporated that resulted in the disputed domain names in those cases being transferred to the respective complainants. Complainant argues that a search of the National Arbitration Forum’s database found sixteen (16) additional cases involving Respondent Gioacchino Zerbo that resulted in the disputed domain names being transferred to the respective complainants. See Complainant’s Exhibit 7: American Career College, Inc. v. Gioacchino Zerbo, a/k/a Vincenzo Dinoia, FA 1404659 (Nat. Arb. Forum September 26, 2011; Possis Medical, Inc. v. CDN Properties Incorporated, FA 964416 (Nat. Arb. Forum June 5, 2007). The Panel determines that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer evidence bad faith use and registration under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Secondly, Complainant asserts that Respondent is appropriating the BB&T mark for use in a confusingly similar domain name to refer Internet users to a directory website full of pay-per-click links. Complainant contends that the subject website content includes links to “Home Mortgages,” “Chase Mortgage,” “Online Banking,” and others. See Complainant’s Exhibit 5. As the Panel finds that Respondent is using the disputed domain name to misdirect Internet users for its own commercial gain, the Panel holds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BB&T mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwbbandt.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 22, 2013
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