Salem Five Cents Savings Bank v. Kristine Davis Cannon / Cannon
Claim Number: FA2212002023175
Complainant is Salem Five Cents Savings Bank (“Complainant”), represented by Robert M. Connell of Orrick, Herrington & Sutcliffe LLP, California, USA. Respondent is Kristine Davis Cannon / Cannon (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <salemtive.com>, registered with NameCheap, Inc..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on December 7, 2022; Forum received payment on December 7, 2022.
On Dec 7, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <salemtive.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 9, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2022 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@salemtive.com. Also on December 9, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 states that it is a financial services company providing banking, investment, mortgage, and insurance services, with assets in excess of $5 billion. It has been serving families and businesses across New England for over 150 years, since its founding in 1855. In the past twenty-five (25) years, Complainant has experienced significant growth, transforming itself from a community bank serving northeastern Massachusetts to a significant regional and online banking player. During that time Complainants assets have grown from less than $900 million in 1995 to $6.5 billion today, and Complainant now services customers in all fifty (50) states. Complainant was an early entrant in the online banking field. Complainant’s website at <www.salemfive.com> was launched in or about 1995. For almost thirty years, Complainant has used the domain name <salemfive.com> for its customer-facing website, through which it advertises, promotes, and renders its services under the SALEM FIVE mark. Complainant has rights in the SALEM FIVE mark through its registration in the United in 2007.
Complainant alleges that the disputed domain name is confusingly similar to its SALEM FIVE mark as it consists of a misspelling of the mark (changing the letter “F” to a “T”), and merely adding the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s SALEM FIVE mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a phishing scheme: the resolving website displays Complainant’s mark, distinctive logo, and business address, and mimics Complainant’s legitimate website. Further, Respondent’s registration and use of the disputed domain name constitutes typosquatting. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent has demonstrated a pattern of cybersquatting. Respondent uses the disputed domain name to impersonate Complainant and deceive Internet users in furtherance of a phishing scheme. Respondent’s registration and use of the disputed domain name constitutes typosquatting. Respondent had actual or constructive knowledge of Complainant’s rights in the SALEM FIVE mark prior to registering the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark SALEM FIVE dating back to at least 2007 and uses it to provide banking services.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent uses the disputed domain name to impersonate Complainant: the resolving website displays Complainant’s mark, distinctive logo, and business address, and mimics Complainant’s legitimate website.
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 disputed domain name consists of a misspelling of Complainant’s SALEM FIVE mark (changing the letter “F” to the letter “T” which is adjacent on an ASCII keyboard), and merely adding the “.com” generic top-level domain (“gTLD”). Misspelling a mark and adding gTLD has been found insufficient to defeat a finding of confusing similarity. Such changes do not distinguish the domain names from the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”); see also Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”).
Further, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) states under 1.7: “In specific limited instances, … the broader case context such as website content trading off the complainant’s reputation … may support a finding of confusing similarity.” In the instant case, the disputed domain name is used specifically to trade off Complainant’s reputation, because it is used to pass off as Complainant. Such use provides further justification for a finding of confusing similarity to Complainant’s mark.
For all the above reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information of record identifies “Kristine Davis Cannon” as the registrant of the disputed domain name. Therefore the Panel finds that Respondent is not commonly known the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to impersonate Complainant. Specifically, Complainant provides evidence showing that the resolving website displays Complainant’s mark, distinctive logo, and business address, and mimics Complainant’s legitimate website. Previous Panels have found that use of a domain name to imitate a Complainant’s website does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, the disputed domain name is an example of typosquatting. Typosquatting may be independent evidence of a lack of rights or legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
For all the above reasons, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent has engaged in a pattern of bad faith registration and use of domain names. In support, it presents a reverse WHOIS showing that Respondent has registered numerous domain names that appear to incorporate marks, including seven other domain names that consist of misspellings of Complainant’s mark. Complainant does not however cite any UDRP cases in which Respondent was found to have registered and used a domain name in bad faith. The Panel finds that Complainant has failed to satisfy its burden of proof for this allegation, therefore it will not further discuss it.
Complainant alleges that the disputed domain name is used in furtherance of a phishing scheme, but it does not present screenshots of the resolving web pages that invite users to enter their personal information. While the allegation of phishing is plausible, the Panel will not retain it, because the reasons given above and below are sufficient to justify transferring the disputed domain.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website impersonates Complainant. Use of a disputed domain name to pass off as or as affiliated with a complainant through an imitation site may indicate bad faith disruption of a complainant’s business pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Thus the Panel finds find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Further, also as already noted, Respondent engaged in typoquatting. Typosquatting has been found as evidence of bad faith. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Thus the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii).
Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark, distinctive logo, and business address, and mimics Complainant’s legitimate website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <salemtive.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 4, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page