Complainant is Dollar Bank, Federal Savings Bank of Pittsburgh, Pennsylvania, United States of America ("United States"), represented by Metz Lewis Brodman Must O'Keefe LLC, United States.
Respondent is Brandon In of United States.
The disputed domain name <dollarbank.club> ("the Domain Name") is registered with eNom, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2016. On April 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. An amendment to the Complaint was filed with the Center on April 20, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 13, 2016.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on May 25, 2016. 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 Dollar Bank, Federal Savings Bank, a United States Bank corporation, owns the trademark rights to DOLLAR BANK (United States Registration No. 3,539,973, registered on December 2, 2008) (the "DOLLAR BANK Mark" or "the Mark") and DOLLARBANK.COM (United States Registration No. 3,562,865, registered on January 20, 2009). The earlier of these registrations has a "first use in commerce" date of December 30, 1987 for banking services.
Complainant operates a commercial Internet website at "www.dollarbank.com". The "about us" information provided at that website indicates that Complainant has been doing business in Pennsylvania for over 160 years, and "has grown to become a large, full service, regional bank". See Dollar Bank, Federal Savings Bank v. Moniker Privacy Services / Shaun Hedges, Accueil Des Solutions Inc, WIPO Case No. D2016-0454. According to an "historical timeline" at the about us page, the name of the institution was changed from "Dollar Savings Bank" to "Dollar Bank" in 1984.
Respondent registered the Domain Name on February 27, 2016.
The Domain Name incorporates the DOLLAR BANK Mark in its entirety and, as such, the Domain Name is identical and/or confusingly similar to Complainant's DOLLAR BANK and DOLLARBANK.COM Marks.
Respondent has no right or legitimate interest in the Domain Name because Complainant has not granted any permission (e.g., license) to Respondent to use the Domain Name, Respondent is not an agent of Complainant, and Respondent has no "connection with a bona fide offering of goods or services". To the best of Complainant's knowledge, Respondent has not been "commonly known by" a name consisting in whole or in part of the wording "Dollar Bank" or its substantial equivalent. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain due to the misleading nature of the Domain Name to deceive consumers. Respondent is using the Domain Name with a website which misleads consumers into believing they are dealing with a reputable bank – Complainant. The name of Respondent is not placed anywhere on the website and attempts to confuse the public by implying it is Complainant's website or at the very least, has a connection to Complainant.
Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location. As indicated above, the Domain Name is confusingly similar and actually identical to Complainant's DOLLAR BANK Mark, and the Domain Name is commercial in nature. Additionally, Respondent has a website which closely imitates and references Complainant's line of business in an attempt to attract users to the website. The website purports to be a "Dollar Bank Club" with banking services and card transactions, both of which directly relate to the purpose of the Marks and Complainant's business of banking and finance. Due to the similarity of services on Respondent's website it is not immediately apparent to Internet users visiting the website that it is not operated by or associated with Complainant. Neither Complainant nor any agent of Complainant has authorized Respondent to use the Domain Name, leading to Respondent's use of an identical name to attract users and generate business.
Respondent did not reply to Complainant's contentions.
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainant prove each of the three elements set forth therein to obtain an order that the Domain Name should be transferred.
By virtue of the aforementioned U.S. trademark registrations, Complainant has demonstrated that it owns rights in the United States in its DOLLAR BANK and DOLLARBANK.COM trademarks. The Domain Name consists of the Complainant's DOLLAR BANK Mark in its entirety and the generic Top-Level Domain ("gTLD") ".club". It is an accepted principle that the addition of suffixes such as ".club", being a gTLD, is not a distinguishing factor. Dollar Bank, Federal Savings Bank v. Moniker Privacy Services / Shaun Hedges, Accueil Des Solutions Inc, supra. Consequently, the Panel finds that the Domain Name is identical to Complainant's DOLLAR BANK Mark.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. It is undisputed that Complainant has not licensed or otherwise permitted Respondent to use the DOLLAR BANK Mark in any manner, including as a domain name. To the best of Complainant's knowledge, and on the available record before the Panel, Respondent has not been commonly known by a name consisting in whole or in part of the DOLLAR BANK Mark. Furthermore, there is no evidence that Respondent is making a legitimate noncommercial or fair use of the Domain Name insofar as Respondent is using the Domain Name with a website that is offering banking services to the public. For example, the first page of the site states prominently: "AS THIS IS THE TWENTY-FIRST CENTURY WE THOUGHT IT WAS TIME TO START BANKING LIKE IT WAS" […] "BEHOLD, DOLLAR BANK CLUB. WE ARE DOING CARD TRANSACTIONS FOR A DOLLAR OR 1% OF YOUR TRANSACTION, WHICHEVER IS LESS. Through Blockchain technology we are able to do transactions at a fraction of the cost of these big banks and provide you a way for you to accept online payments without a bank account".
Lastly, the Panel finds that the use to which Respondent has put the Domain Name is not bona fide, given the Respondent's adoption of Complainant's trademarks in the Domain Name for the same goods and services.
Complainant has raised a prime facie presumption of Respondent's lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product."
These criteria are not exclusive and the Panel may conclude that Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the Domain Name.
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Name in bad faith. Complainant's long-standing rights including their registration of the DOLLAR BANK Mark, is uncontroverted. Respondent registered the Domain Name in 2016 long after Complainant's United States registration for the DOLLAR BANK Mark issued (2008) and even longer after Complainant began using the Mark in conjunction with banking services. Respondent registered the Domain Name <dollarbank.club>, which is identical to Complainant's DOLLAR BANK Mark, without any rights or legitimate interests in the Domain Name. Furthermore, Respondent is using the Domain Name to offer the public banking services. These undisputed facts lead to the conclusion that Respondent knew of Complainant's rights in the Mark when it registered the Domain Name.
As indicated above, the Domain Name is identical to Complainant's DOLLAR BANK Mark, and Respondent is using the Domain Name on a website which purports to provide services that are in competition with banks generally, and specifically with services that Complainant offers. Respondent advertises that is performing the transactions for a dollar or 1 per cent of the transaction – whichever is less. Thus, by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Mark as to its source, sponsorship, affiliation, or endorsement.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <dollarbank.club> be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: May 27, 2016