DECISION

 

Dacotah Banks, Inc. v. Domain Admin / TotalDomain Privacy Ltd

Claim Number: FA2403002090482

 

PARTIES

Complainant is Dacotah Banks, Inc. ("Complainant"), represented by Jamie N. Nafziger of Dorsey & Whitney LLP, Minnesota, USA. Respondent is Domain Admin / TotalDomain Privacy Ltd ("Respondent"), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dakotahbank.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelist in this proceeding.

 

Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 26, 2024; Forum received payment on March 26, 2024.

 

On March 28, 2024, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <dakotahbank.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 March 29, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2024 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@dakotahbank.com. Also on March 29, 2024, 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 April 19, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a full-service, state chartered banking institution that, since 1955, provides banking, insurance, mortgage, and trust and wealth management services to its customers. The Complainant is the owner of the DACOTHA BANK trademark.

 

The disputed domain name is confusingly similar to Complainant's trademark, as it shares the entirety of the Complainant's trademark and its primary domain name, with only one letter changed – a "K" in place of "C" in DACOTAH. Thus, the <dakotahbank.com> domain name is substantively identical to the DACOTAH BANK trademark and Complainant's <dacotahbank.com> domain name.

 

The Respondent has no rights or Legitimate Interests in the disputed domain name. Respondent does not use the <dakotahbank.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial use as contemplated under Policy ¶¶ 4(c)(i) & (iii). The website connected with the disputed domain name is a clear attempt to impersonate and pass off as Complainant, displaying links for directly competitive services, namely, banking services.

 

The disputed domain name has been registered and is being used in bad faith. In light of the registration of Complainant's DACOTAH BANK trademark and extensive common law use of the trademark, Respondent clearly had actual or constructive knowledge of the trademark at the time of registration.  Respondent's domain name fully incorporates Complainant's trademark. Respondent registered the disputed domain name nearly 60 years after Complainant began offering its services under the trademark, and 27 years after Complainant first obtained a trademark registration for the DACOTAH BANK.

 

Respondent attempts to disrupt Complainant's business by diverting internet users to Respondent's website, and uses the disputed domain name to create confusion with Complainant's trademark for Respondent's commercial gain. The similarity of Respondent's domain name, <dakotahbank.com>, to the domain name used by Complainant to send emails to customers, <dacotahbank.com> also evidences bad faith. Respondent could easily use the domain name to contact and defraud Complainant's customers as part of a phishing campaign. The domain names differ by only one letter. The average Internet customer is unlikely to notice a "k" used in place of a "c" if reviewing emails from Respondent and is likely to assume that any such communications are directly from Complainant. In the financial services area, this risk is especially problematic for consumers because they stand to lose the money they have in the bank.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the following U.S. trademark registration:

 

No. 2,070,341 DACOTAH BANK & Design, registered on June 10, 1997 for services in Intl Class 36.

 

The Complainant also refers to some other in USA registered trademarks with DACOTAH as the initial part, as well as to common law trademark rights in DACOTAH BANK trademark.

 

The disputed domain name <dakotahbank.com> was originally registered on November 27, 2005.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Complainant claims rights to the DACOTAH BANK trademark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a trademark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant's USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides a copy of its USPTO registration for the DACOTAH BANK trademark (e.g., Reg. No. 2,070,341, registered June 10, 1997). Therefore, the Panel finds that Complainant has rights in the DACOTAH BANK trademark per Policy ¶ 4(a)(i).

 

Further, the Complainant claims common law trademark rights in the DACOTAH BANK trademark. To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its trademark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.

 

Here, the Complainant has provided distinctive evidence of use of DACOTAH BANK. The fact that the Respondent is shown to have been targeting the Complainant's DACOTAH BANK trademark, by register a domain name that (except for the gTLD and a minor misspelling) is nearly identical to DACOTAH BANK is also a clear indication that DACOTAH BANK has achieved significance as a source identifier.

 

The Panel therefore find that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."); see also Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

Complainant argues that Respondent does not have rights or legitimate interests in the <dakotahbank.com> domain name because Respondent is not licensed or authorized to use Complainant's DACOTAH BANK trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant's trademark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as "Domain Admin / TotalDomain Privacy Ltd". Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

As noted by the Complainant, the disputed domain name displays a pay-per-click parking page with links for goods or services that compete with, or are related to, those of Complainant or links that appear to refer to DACOTAH BANK related services.

 

A respondent's use of a disputed domain name to host hyperlinks to a complainant and its competitors is not a bona fide offering of goods or services or legitimate noncommercial or fair use per under Policy ¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) ("Respondent's confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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)."). Complainant provides screenshots of Respondent's web site connected to the disputed domain name which purportedly hosts hyperlinks to Complainant and its competitors.

 

The Panel therefore clearly finds that Respondent fails to make a bona fide offering of goods or services, nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent knew or should have known ("actual or constructive knowledge") of Complainant's trademark DACOTAH BANK at the time of the registration of the disputed domain name <dakotahbank.com>.

 

The Panel agrees in this assumption. It can be no coincidence that Respondent registered a domain name that is close to identical to the DACOTAH BANK. Registration of a domain name that is confusingly similar to another's trademark, despite knowledge of the trademark holder's rights, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int'l v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) ("there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively").

 

A further evidence of Respondent's knowledge of Complainant's trademarks is the fact that the disputed domain name is being directed to a pay-per-click parking page with links services that compete with, or are related to, those of Complainant or links that appear to refer to DACOTAH BANK or at least the same services that the Complainant offer. The Panel finds it obvious that Respondent has intentionally created a likelihood of confusion as to Complainant's affiliation or endorsement of the disputed domain name for commercial gain via affiliate fees.

 

The Panel concludes that Respondent registered and has been using the disputed domain name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <dakotahbank.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Petter Rindforth, Panelist

Dated: May 4, 2024