Premier Bankcard, LLC v. MD Dipu Mia / MD Reyadul / Mokki Amin
Claim Number: FA2107001954719
Complainant is Premier Bankcard, LLC (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is MD Dipu Mia / MD Reyadul / Mokki Amin (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mypremiercreditcard.one>, <mypremiercreditcard.me>, and <mypremiercreditcard.bid>, registered with NameSilo, LLC and Porkbun LLC (the “disputed domain names”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2021; the Forum received payment on July 12, 2021.
On July 12, 2021, NameSilo, LLC; Porkbun LLC confirmed by e-mail to the Forum that the <mypremiercreditcard.one>, <mypremiercreditcard.me>, <mypremiercreditcard.bid> domain names are registered with NameSilo, LLC; Porkbun LLC and that Respondent is the current registrant of the names. NameSilo, LLC; Porkbun LLC has verified that Respondent is bound by the NameSilo, LLC; Porkbun 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 July 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2021 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@mypremiercreditcard.one, postmaster@mypremiercreditcard.me, postmaster@mypremiercreditcard.bid. Also on July 14, 2021, 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 August 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the disputed domain names are effectively controlled by the same person or entity operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant demonstrates that the disputed domain names follow a similar composition, have similar content at the resolving websites, and the address listed for each registrant is listed as “Dhaka, Dhaka, Bangladesh.” The Panel finds that the disputed domain names are likely controlled by the same person or entity and will refer to them as “Respondent” throughout this Decision.
A. Complainant
1. Respondent’s disputed domain names are confusingly similar to Complainant’s PREMIER BANKCARD mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and uses the disputed domain names in bad faith.
B. Respondent did not file a Response.
Complainant provides credit to individuals who might be turned down by traditional lenders. Complainant holds a registration for the PREMIER BANKCARD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,983,123 registered Aug. 9, 2005).
Respondent registered the <mypremiercreditcard.one>, <mypremiercreditcard.me>, and <mypremiercreditcard.bid> domain names on April 1, 2021, December 16, 2017, and July 23, 2020, respectively, and uses them to pass off as Complainant and phish for personal 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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the PREMIER BANKCARD mark based upon the registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”)
Respondent’s <mypremiercreditcard.one>, <mypremiercreditcard.me>, and <mypremiercreditcard.bid> domain names contain the PREMIER BANKCARD mark in its entirety and merely add generic words and a gTLD. These changes fail to sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain names confusingly similar to Complainant’s PREMIER BANKCARD mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights and legitimate interests in the <mypremiercreditcard.one>, <mypremiercreditcard.me>, and <mypremiercreditcard.bid> domain names since Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed to Respondent any rights in the PREMIER BANKCARD mark. The WHOIS information for the disputed domain names lists the registrants as “Mokki Amin,” “MD Reyadul,” and “MD Dipu Mia.” The Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant argues that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the domain names to pass off as Complainant. Using a disputed domain name to pass off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the disputed domains’ resolving websites, showing that they mimic Complainant’s website. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the <mypremiercreditcard.one>, <mypremiercreditcard.me>, and <mypremiercreditcard.bid> domain names to further a fraudulent phishing scam by collecting personal information using the disputed domain names. Phishing is a practice used to defraud Internet users into revealing personal information. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”) Use of a domain name in a phishing scheme can show registration and use in bad faith per Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant provides screenshots of the websites at the disputed domain names showing that Respondent uses them to solicit personal information from users. The Panel therefore finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the PREMIER BANKCARD mark at the time of registering the <mypremiercreditcard.one>, <mypremiercreditcard.me>, <mypremiercreditcard.bid> domain names. To support this assertion, Complainant points to its trademark registrations as well as its commercial presence and reputation. The Panel also notes that Respondent uses the disputed domain names to pass off as Complainant, and thus had actual knowledge of Complainant’s right in the PREMIER BANKCARD mark, which constitutes bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that 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 <mypremiercreditcard.one>, <mypremiercreditcard.me>, and <mypremiercreditcard.bid> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 9, 2021
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