Simmons First National Corporation v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1604001670209
Complainant is Simmons First National Corporation (“Complainant”), represented by Wendy Robertson of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC, Tennessee, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simmonsbank.com>, registered with Internet Domain Service 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2016; the Forum received payment on April 12, 2016.
On April 18, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <simmonsbank.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service 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 April 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2016 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@simmonsbank.com. Also on April 18, 2016, 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.
On May 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant uses the SIMMONS BANK mark in connection with its banking business. Complainant has registered the SIMMONS BANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,916,562, registered March 15, 2016), which demonstrates rights in the mark.
2. Complainant has used the SIMMONS mark extensively in commerce in a variety of capacities since 1903.
3. Respondent’s <simmonsbank.com> domain name is identical to the SIMMONS BANK mark, as it incorporates the entire mark except for the space and adds the generic top-level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the <simmonsbank.com> domain name. Respondent is not commonly known by the domain name. Further, Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <simmonsbank.com> domain name.
5. Rather, the domain name resolves to a website containing hyperlinks to the websites of Complainant’s competitors.
6. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent must have had constructive or actual notice of Complainant's rights in the SIMMONS BANK and SIMMONS marks prior to registration of the domain name because of Complainant's widespread use of the marks.
7. Lastly, Respondent has engaged a privacy service which masks its identity in this proceeding.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the SIMMONS mark. Respondent’s domain name is confusingly similar to Complainant’s SIMMONS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <simmonsbank.com> domain name, and that Respondent registered and uses the domain name 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:
(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.”).
Complainant uses the SIMMONS BANK mark in connection with its banking business. Complainant registered the SIMMONS BANK mark with the USPTO (e.g., Reg. No. 4,916,562, registered March 15, 2016), which demonstrates rights in the mark. Complainant’s USPTO registration is sufficient to establish rights in the SIMMONS BANK mark, even though Respondent operates in a different country. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Although Respondent’s <simmonsbank.com> domain name was registered in October 2003, 13 years before Complainant registered its SIMMONS BANK mark with the USPTO, in response to a request from the Panel, Complainant has provided evidence it has used the SIMMONS mark extensively and in a variety ways relating to its banking and financial services since 1903. Where secondary meaning is established a panel may find common law rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). The evidence in the record supports Complainant’s contention that its SIMMONS mark has acquired secondary meaning sufficient to establish rights in the mark for the purpose Policy ¶ 4(a)(i).
The Panel concludes that Respondent’s <simmonsbank.com> domain name is confusingly similar to the SIMMONS mark, as it incorporates the SIMMONS mark, and adds the word “bank,” describing a service provided by Complainant, and adds the gTLD “.com.” See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,” which is an obvious allusion to complainant’s business.”); see also 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);
Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (FORUM July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). The Panel agrees that Respondent’s <simmonsbank.com> domain name is confusingly similar to the SIMMONS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <simmonsbank.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <simmonsbank.com> domain name. First, Complainant asserts that Respondent is not commonly known by the domain name. The WHOIS information regarding the domain name lists “Domain Admin” as registrant. Complainant also has shown it has not given Respondent permission to use its SIMMONS BANK mark, and also that Respondent has utilized a privacy service. Therefore, in light of the available evidence, the Panel agrees there is no basis to find Respondent commonly known by the <simmonsbank.com> domain name pursuant to Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (FORUM January 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).
Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <simmonsbank.com> domain name. The record indicates that the domain name resolves to a website containing hyperlinks to the websites of Complainant’s competitors. A respondent’s use of a complainant’s mark to direct users to competing services via hyperlinks does not to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (FORUM January 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Therefore, the Panel agrees that Respondent’s use of the <simmonsbank.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that even though Respondent has engaged in parking the <simmonsbank.com> domain name, Respondent is ultimately responsible for the content presented on the resolving website. See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith). The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv) regardless of Respondent’s control of the parking service.
Complainant alleges that Respondent must have had actual notice of Complainant's rights prior to registration of the <simmonsbank.com> domain names because of Complainant's widespread use of the SIMMONS mark. The Panel agrees and holds that Respondent registered the <simmonsbank.com> domain name in bad faith under Policy ¶ 4(a)(iii). 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 Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Complainant has satisfied 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 <simmonsbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 6, 2016
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