Salem Five Cents Savings Bank v. Kristine Davis Cannon / Cannon
Claim Number: FA2212002024546
Complainant is Salem Five Cents Savings Bank (“Complainant”), represented by Robert M. O'Connell of Orrick, Herrington & Sutcliffe LLP, California. Respondent is Kristine Davis Cannon / Cannon (“Respondent”), Utah.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <salemvive.us>, <salemfivel.us>, <salemfives.us>, <salemfivez.us>, <salemfivett.us>, <salemfivet.us> and <salemtive.us>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on December 19, 2022; Forum received payment on December 19, 2022.
On December 19, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <salemvive.us>, <salemfivel.us>, <salemfives.us>, <salemfivez.us>, <salemfivett.us>, <salemfivet.us>, and <salemtive.us> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 22, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2023 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@salemvive.us, postmaster@salemfivel.us, postmaster@salemfives.us, postmaster@salemfivez.us, postmaster@salemfivett.us, postmaster@salemfivet.us, postmaster@salemtive.us. Also on December 22, 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 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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.
A. Complainant
Complainant contends as follows:
Complainant, Salem Five Cents Savings Bank is in the financial services business.
Complainant asserts rights in the SALEM FIVE mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s
<salemvive.us>, <salemfivel.us>, <salemfives.us>,
<salemfivez.us>, <salemfivett.us>, <salemfivet.us>, and <salemtive.us>
domain names are each
confusingly similar to Complainant’s SALEM FIVE trademark because they incorporate the mark in its entirety or change
the letter “f” with the letters “t” or “v”, and add the letters “l”, “s”, “z”, “t”,
and “tt” and the country-code top-level domain name (“ccTLD”) “.us”.
Respondent does not have rights or legitimate interests in the at-issue domain names. Respondent is not licensed or authorized to use Complainant’s SALEM FIVE mark and is not commonly known by any at-issue domain name. Respondent also does not use any domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the at-issue domain names resolve to inactive websites. Respondent engages in typosquatting.
Respondent registered and uses each at-issue domain name in bad faith. Respondent engages in a pattern of bad faith registration and use. The at-issue domain names address inactive websites. Respondent uses the domain names to engage in typosquatting. Respondent registered the at-issue domain names with actual knowledge of Complainant’s rights in the SALEM FIVE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SALEM FIVE trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the SALEM FIVE trademark.
Respondent holds the at-issue domain names passively.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the SALEM FIVE mark demonstrates Complainant’s rights in such mark for the purposes of Policy ¶ 4 (a)(I). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <salemvive.us>, <salemfivel.us>, <salemfives.us>, <salemfivez.us>, <salemfivett.us>, <salemfivet.us>, and <salemtive.us> domain names each contain a recognizable but misspelled version of Complainant’s SALEM FIVE trademark followed by the “.us” top-level domain name. The differences between Respondent’s domain names and Complainant’s trademark fail to distinguish either <salemvive.us>, <salemfivel.us>, <salemfives.us>, <salemfivez.us>, <salemfivett.us>, <salemfivet.us>, or <salemtive.us> from Complainant’s SALEM FIVE mark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <salemvive.us>, <salemfivel.us>, <salemfives.us>, <salemfivez.us>, <salemfivett.us>, <salemfivet.us>, and <salemtive.us> domain names are each confusingly similar to Complainant’s SALEM FIVE trademark. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain names. See 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)”).
The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Kristine Davis Cannon / Cannon” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by any at-issue domain name or by SALEM FIVE. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain name domain for the purposes of 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).
Respondent holds the at-issue <salemvive.us>, <salemfivel.us>, <salemfives.us>, <salemfivez.us>, <salemfivett.us>, <salemfivet.us>, and <salemtive.us> domain names passively. Browsing to any of the at-issue domain names returns an error message stating that “this site can’t be reached”. Passive holding of the domain names constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names under Policy ¶4(a)(ii).
As discussed below without being exhaustive, bad faith circumstances are present which allow the Panel to conclude that Respondent has acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent has registered tens of domain names including multiple domain names confusingly similar to Complainant’s trademark. Doing so suggest a pattern of bad faith domain name registrations under Policy ¶ 4(b)(ii) and thereby is evidence of bad faith registration regarding the at-issue domain names in the instant case. See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Next, Respondent currently holds its confusingly similar <salemvive.us>, <salemfivel.us>, <salemfives.us>, <salemfivez.us>, <salemfivett.us>, <salemfivet.us>, and <salemtive.us> domain names passively. Doing so further indicates Respondent’s bad faith registration and use of such domain names. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Additionally, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name. The registrant hopes that internet users will inadvertently type the malformed string when searching for content related to the domain name’s target trademark and/or upon reading the domain name will overlook the misspelling and subsequently believe the domain name is related to, or sponsored by, the target trademark’s owner. In the instant case, <salemvive.us>, <salemfivel.us>, <salemfives.us>, <salemfivez.us>, <salemfivett.us>, <salemfivet.us>, and <salemtive.us> each contain recognizable misspellings of Complainant’s SALEM FIVE mark. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the SALEM FIVE mark when it registered < <salemvive.us>, <salemfivel.us>, <salemfives.us>, <salemfivez.us>, <salemfivett.us>, <salemfivet.us>, and <salemtive.us> as domain names. Respondent’s actual knowledge is evident from the notoriety of the SALEM FIVE trademark and from Respondent’s registration of multiple domain names incorporating Complainant’s SALEM FIVE trademark. Respondent’s registration and use of the at-issue domain names with knowledge of Complainant’s rights in SALEM FIVE further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); 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).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <salemvive.us>, <salemfivel.us>, <salemfives.us>, <salemfivez.us>, <salemfivett.us>, <salemfivet.us>, and <salemtive.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 13, 2023
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