Regions Bank v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2110001969271
Complainant is Regions Bank (“Complainant”), represented by Rachel Hofstatter of Honigman LLP, District of Columbia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwregionsmortgage.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2021; the Forum received payment on October 15, 2021.
On November 10, 2021 and after much delay, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <wwwregionsmortgage.com> domain name is registered with Internet Domain Service BS Corp. It also advised the Forum that Respondent is the current registrant of the name, albeit that it seems more likely that Internet Domain Service BS Corp overlooked the probability that Respondent is merely the name of a privacy service provider. 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 November 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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@wwwregionsmortgage.com. Also on November 10, 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 December 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in REGIONS and REGIONS MORTGAGE. Complainant holds a national registration for those trademarks. Complainant submits that the domain name is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; and the domain name has not been used other than for an illegitimate purpose. In particular, Complainant asserts that Respondent uses the disputed domain name to pass itself off as Complainant and confuse the public into mistakenly providing personal information.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides banking services by reference to the trademarks REGIONS (registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 1881600, registered February 28, 1995) and REGIONS MORTGAGE (registered with the USPTO as Reg. No. 3,224,650, registered April 3, 2007);
2. the disputed domain name was registered on October 13, 2005 and resolves to a website using Complainant’s trademarks which solicits personal information; and
3. there is no association between the parties and Complainant has not authorized Respondent to use the trademarks or register any domain name incorporating the trademarks.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights in REGIONS and REGIONS MORTGAGE since it provides proof of its registration of those trademarks with the USPTO, a national trademark authority.
The disputed domain name takes the trademark REGION to which it prefixes the universally understood letters, “www”, later appending the descriptive word, “mortgage”, and the gTLD, “.com”. Those additions are not of any distinctive value and the Panel finds the domain name to be confusingly similar to the trademark REGIONS (see, for example, MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); AmeriMark Direct, LLC and its subsidiary Anthony Richards v. Domain Admin / Hush Whois Protection Ltd., FA 1735800 (Forum July 30, 2017) (“[T]he domain name merely adds the non-distinctive integer, “www” to the trademark. None of those additions or alterations significantly alters the identity of the trademark which remains the distinctive element of the domain names.”); Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”)).
No analysis is thus required of the comparison of the domain name with the trademark REGIONS MORTGAGE, albeit that something is said below of the registration of that trademark. The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
As indicated already, the Registrar may have erred when it advised that the name of the domain name registrant is “Domain Admin / Whois Privacy Corp”. Thus, it appears that the Panel has no true knowledge of the name of the underlying domain name holder. However, absent a Response and given the use of a privacy service to shield the name of the actual registrant, coupled with the other evidence as it unfolds, the Panel finds that there is nothing to indicate that Respondent might be commonly known by the domain name.
There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties. The disputed domain name has been used to misdirect Internet users to third party providers of mortgage or other financial services and has been used to attempt to gather sensitive personal information from internet users seeking Complainant’s online location. Neither use establishes rights or a legitimate interest in the domain name (see, for example, General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”); Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (“Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”)).
Although it is well established under the Policy that, for the purposes of paragraph 4(a)(i) discussed earlier, trademark rights need not predate the registration date of a disputed domain name, the relative timing of the registrations can be of crucial significant to the other limbs of the Policy. In this regard the Panel observes that Reg. No. 3,224,650 for REGIONS MORTGAGE was filed on March 8, 2006, a year after the disputed domain name was registered. Nevertheless, the registration shows a date of first use of that trademark in commerce of August 1, 2004. Furthermore, the Panel has already found rights in REGIONS predating the creation of the domain name by many years. The Panel finds no evidence that Respondent might have intended to use the domain name for a bona fide purpose without knowledge of Complainant and every likelihood that the domain name was registered after the trademark REGIONS MORTGAGE was seen in use.
The Panel finds that a prima facie case has been made. The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that the matter falls squarely under paragraph 4(b)(iv) above. The Panel has already found the domain name to be confusingly similar to the trademark REGION. The disputed domain name exists for commercial gain and the Panel finds that Respondent has used the domain name intending to attract internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwregionsmortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 13, 2021
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