Bank of Canton v. Olga Pererva
Claim Number: FA1604001672374
Complainant is Bank of Canton (“Complainant”), represented by Phi Lan M. Tinsley of K&L Gates LLP, Massachusetts, United States. Respondent is Olga Pererva (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofcanton.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn, appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2016; the Forum received payment on April 28, 2016.
On April 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bankofcanton.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 April 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@bankofcanton.com. Also on April 29, 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 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Complainant uses the BANK OF CANTON mark in connection with banking and financial services in the United States. Complainant has registered the BANK OF CANTON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,921,818, registered Mar. 22, 2016, first use in commerce Jan. 1, 1991) which establishes rights in the mark. Complainant also establishes common law rights in the mark through evidence of long-term use, past domain name registrations, and advertising. Respondent’s <bankofcanton.com> domain name is confusingly similar to the BANK OF CANTON mark as it incorporates the mark in its entirety.
Respondent has no rights or legitimate interests in the <bankofcanton.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <bankofcanton.com> domain name. Rather, the domain name resolves to an inactive website.
Respondent is using the <bankofcanton.com> domain name in bad faith. Respondent’s inactive holding of the website constitutes bad faith. Further, Respondent had knowledge of the BANK OF CANTON mark and Complainant’s rights therein because of the mark’s fame.
B. Respondent
The Panel notes that the <bankofcanton.com> domain name was registered on January 30, 2002.
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 BANK OF CANTON mark in connection with banking and financial services in the United States. Complainant purports to have registered the BANK OF CANTON mark with the USPTO (Reg. No. 4,921,818, registered Mar. 22, 2016, first use in commerce Jan. 1, 1991), and argues that its trademark registration establishes Policy ¶ 4(a)(i) rights in the BANK OF CANTON mark. Panels have held that a complainant’s registration of its mark with the USPTO suffices to establish rights in its mark, with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (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.”). Therefore, the Panel finds that Respondent has demonstrated its rights in the BANK OF CANTON mark pursuant to Policy ¶ 4(a)(i).
Complainant’s mark is predated by Respondent’s registration of its disputed domain. As such, Complainant argues that its rights in the BANK OF CANTON mark are based on common law rights, which is permitted when a complainant’s trademark registration fails to predate a respondent’s registration of a disputed domain. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (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).
Complainant argues that because the BANK OF CANTON mark has been continuously used by Complainant since at least as early as 1991, it has demonstrated common law rights in the mark for the purposes of Policy ¶ 4(a)(i). In support of this contention, Complainant provides a copy of its USPTO registration, which details a “first use in commerce” date of January 1, 1991. Additionally, in response to an interlocutory order, Complainant provided information on length of time and amount of transactions under the mark and media recognition of the mark prior to the January 30, 2002 date of registration of the domain name. In light of the lack of any contrary evidence on this issue from Respondent, this Panel finds that Complainant has established common law rights in the BANK OF CANTON mark under Policy ¶ 4(a)(i).
The Panel further finds that Respondent’s <bankofcanton.com> domain name is identical to the BANK OF CANTON mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <bankofcanton.com> domain name. To begin with, Complainant asserts that Respondent is not commonly known by the disputed domain name. WHOIS information regarding the disputed domain name, lists “Olga Pererva” as registrant of record. It is again noted that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel finds that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <bankofcanton.com> domain name. Rather, Complainant contends that the domain name resolves to an inactive website. Panels have found such inactive use by a respondent consists of neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)). Therefore, this Panel agrees that Respondent’s <bankofcanton.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).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is engaging in inactive holding of the domain name. Panels have held respondent’s failure to make an active use as evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). In this case, Respondent’s inactive domain name has been registered for 14 years. Therefore, this Panel agrees with Complainant, and finds that Respondent’s inactive use of the domain falls under the purview of Policy ¶ 4(a)(iii).
Respondent ‘s incorporation of Complainant’s identical mark further supports this finding of bad faith registration and use.
Thus, Complainant has also 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 <bankofcanton.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 15, 2016
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