Complainant is Trustmark National Bank of Jackson, Mississippi, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
Respondent is Rodica Ilea of Cluj-Napoca, Romania.
The disputed domain name <trustmark-com.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 7, 2013.
The Center appointed Amund Grimstad as the sole panelist in this matter on October 16, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a renowned financial institution engaged in a broad range of commercial activities under its federally registered trademarks which all contain the element “trustmark”.
In connection with its business, Complainant owns a number of United States federal service mark registrations for TRUSTMARK and its TRUSTMARK logo (collectively the “TRUSTMARK Mark”), each covering a wide range of banking services. The first registration date which has been documented before the Panel was in the year 2000.
Respondent registered the disputed domain name <trustmark-com.com> on August 16, 2013.
It is submitted that the disputed domain name is substantially identical to and incorporates in its entirety Complainant’s TRUSTMARK Mark and Complainant’s <trustmark.com> domain name. As such, the disputed domain name is confusingly similar to Complainant’s TRUSTMARK Mark.
It is further submitted that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not made any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services. Respondent has merely used the disputed domain name in a deliberate attempt to exploit user’s typographical mistakes and intercept and siphon off Internet traffic searching for Complainant’s services. Moreover, Respondent is currently using the disputed domain name to misdirect Internet users to its own website, which prominently features third party advertising for competitive banking institutions, for commercial gain. Respondent has no agreements, legal or otherwise, with Complainant authorizing it to use the TRUSTMARK Mark.
It is submitted that Respondent registered the disputed domain name in bad faith with full knowledge of the famous TRUSTMARK Mark.
Respondent did not reply to Complainant’s contentions.
In order for Complainant to prevail and have the disputed domain name <trustmark-com.com> transferred to it, Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
In order for Complainant to succeed under the Policy, the disputed domain name must be identical or confusingly similar to a trademark or service mark in which Complainant has rights. (Policy, paragraph 4(a)(i)).
The disputed domain name has incorporated the full trademark of Complainant. The addition of the element “com” does not prevent the disputed domain name from being confusingly similar to TRUSTMARK Mark.
The mere addition of the term “com”, to the mark, does not change the overall impression of the disputed domain name as being a domain name connected to the mark. Furthermore, the generic Top-Level Domain (gTLD) suffix “.com” is not relevant in assessing whether the domain name is confusingly similar to Complainant’s trademark.
The use of the trademark in the disputed domain name is likely to create confusion amongst Internet users as to whether the website to which the disputed domain name resolves is endorsed by or affiliated in some way with Complainant.
The first requirement of the Policy has therefore been fulfilled.
Secondly, Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
There is no evidence that Respondent has used the disputed domain name for a bona fide offering of goods or services. Indeed, the Panel notes that the disputed domain name resolves to a website which features third party advertising for competitive banking institutions.
Complainant has not authorized Respondent to use Complainant’s TRUSTMARK Mark in a domain name or otherwise.
Therefore, in light of the above, and in the absence of submissions from Respondent, Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Finally, Complainant must show that the disputed domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
The Panel considers that Complainant and its trademark are well known. In this Panel’s view, it is likely that Respondent was aware of Complainant’s reputation and its products and trademarks, when Respondent registered the disputed domain name.
The Panel agrees with the decision rendered in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163, in which it was established that bad faith may be present where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. The use of the trademark TRUSTMARK, with the addition of the generic word “com” in addition to the fact that the disputed domain name resolves to a website which features third party advertising for competitive banking institutions, suggests that Respondent is deliberately trying to free ride on the goodwill of Complainant. This leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith.
The third requirement of the Policy has therefore been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <trustmark-com.com> be transferred to Complainant.
Amund Grimstad
Sole Panelist
Date: October 30, 2013