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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Western Alliance Bancorporation v. Contact Privacy Inc. Customer 1245118904 and 1245118997 / Paul Smiley / Wix.com Ltd. / Matt Keller / Robert Smith

Case No. D2019-2030

1. The Parties

Complainant is Western Alliance Bancorporation, United States of America (“United States), represented by Quarles & Brady LLP, United States.

Respondent is Contact Privacy Inc. Customer 1245118904 and 1245118997, Canada / Paul Smiley, United States / Wix.com Ltd., United States / Matt Keller, United States / Robert Smith, United States.

2. The Domain Names and Registrars

The disputed domain names <westernallianceassociation.com> and <westernalliancefsa.com> are registered with Wix.com Ltd.

The disputed domain names <westernalliancebankgroup.com> and <westernalliancebankinggroup.com> are registered with Google LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 21, 2019, the Registrar Google LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names <westernalliancebankgroup.com> and <westernalliancebankinggroup.com> which differed from the named Respondents and contact information in the Complaint. On August 22, 2019, the Registrar Wix.com Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names <westernallianceassociation.com> and <westernalliancefsa.com> which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on August 28, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 18, 2019. In response to a clarification request by the Center, Complainant filed an amendment to the Complaint on September 25, 2019.

The Center verified that the Complaint, together with the amended Complaint and 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 September 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 17, 2019.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on October 24, 2019. 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.

4. Preliminary Issue Regarding the Request for Consolidation of Respondents

Complainant has submitted a request for consolidation of Respondents Matt Keller, Robert Smith and Paul Smiley in the same proceeding. In determining whether a single consolidated complaint can be brought against multiple respondents, UDRP panels typically look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See section 4.11.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Based on the evidence submitted, which is not contested by Respondent, the Panel accepts Complainant’s contention that the disputed domain names are subject to common control. The disputed domain names <westernalliancebankgroup.com> and <westernalliancebankinggroup.com> were registered under the name of Respondent Paul Smiley. The email address for the disputed domain name <westernallianceassociation.com> uses the name of Respondent Paul Smiley and the email address for the disputed domain name <westernalliancefsa.com> is based on the <westernalliancebankinggroup.com> disputed domain name. In addition, evidence submitted by Complainant shows that emails and attachments sent by Respondent Paul Smiley using the disputed domain name <westernalliancebankgroup.com> made reference to the disputed domain names <westeranalliancegroupfsa.com> and <westernalliancebankinggroup.com>. Given that the disputed domain names appear to have all been registered either on the same day or within a close period of time from one another, and have been used in connection with websites and email communications that appear to be part of a common purpose, the Panel finds that that under these circumstances consolidation would be fair and equitable to all parties. (Respondents in this proceeding will hereinafter be referred to collectively as “Respondent” in the singular form.)

5. Factual Background

Complainant, Western Alliance Bancorporation, is a banking company based in the United States that provides a wide range of financial services. Complainant owns a number of trademark registrations in the United States in connection with its financial services that consist of the name and mark WESTERN ALLIANCE, including (i) Registration No. 5,323,825 for WESTERN ALLIANCE, which issued to registration on October 31, 2017, (ii) Registration No. 3,767,994 for WESTERN ALLIANCE BANCORPORATION, which issued to registration on March 30, 2010, and (iii) Registration No. 5,575,446 for WESTERN ALLIANCE BANK, which issued to registration on October 2, 2018. Complainant also owns in the United States a trademark registration for a stylized logo for WA (Registration No. 3,758,1444, which issued to registration on March 9, 2010). Lastly, Complainant owns the domain name <westernalliancebanccorporation.com> which it uses in connection with its financial services.

The disputed domain names <westernalliancebankgroup.com>, <westernalliancebankinggroup.com> and <westernallianceassociation.com> were all registered by Respondent on July 23, 2019. The disputed domain name <westernalliancefsa.com> was registered by Respondent on August 4, 2019. The disputed domain names <westernallianceassociation.com> and <westernalliancefsa.com> appear to have been used by Respondent, at various points since registration, with websites that have offered banking or other financial services and which, at times, featured Complainant’s WA logo. The disputed domain names <westernbankgroup.com> and <westernalliancebankinggroup.com> appear to have been used by Respondent for email purposes. The disputed domain names currently do not resolve to any active web pages or websites.

6. Parties’ Contentions

A. Complainant

Complainant contends that it owns long-standing rights in the trademark WESTERN ALLIANCE and variations thereof in connection with its financial services and that it owns several trademark registrations for the WESTERN ALLIANCE mark that predate Respondent’s registration of the disputed domain names.

Complainant argues that Respondent has no rights or legitimate interests in any of the disputed domain names as Respondent (i) has used the disputed domain names to impersonate Complainant in furtherance of a fraudulent financial scheme, and (ii) has never used the disputed domain names for a bona fide offering of goods and services.

Lastly, Complainant asserts that Respondent has registered and used the disputed domain names in bad faith given that Respondent has used the disputed domain names for purposes of impersonating Complainant and to trick individuals into sending Respondent their personal information and money. In that regard, Complainant notes that Respondent has (i) posted websites at some of the disputed domain names that have featured Complainant’s WA logo as well as images of Complainant’s offices, and (ii) sent emails and documents to consumers posing as Complainant. Finally, Complainant argues that Respondent has acted in bad faith by hiding behind a privacy service while carrying out its illegitimate activities.

B. Respondent

Respondent did not reply to Complainant’s contentions.

7. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See WIPO Overview 3.0, section 4.3; see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns trademark registrations for WESTERN ALLIANCE and variations thereof in the United States, and that such issued to registration well before Respondent registered the disputed domain names.

With Complainant’s rights in the WESTERN ALLIANCE mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s WESTERN ALLIANCE mark, as they each incorporate the WESTERN ALLIANCE mark in its entirety. The addition of common words such as “bank group,” “banking group,” “association,” or “fsa” (an abbreviation for “flexible spending account”) in the disputed domain names does not prevent a finding of confusing similarity with Complainant’s WESTERN ALLIANCE mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s WESTERN ALLIANCE mark and in showing that the disputed domain names are identical or confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Based on the evidence submitted in this proceeding, it appears that Respondent has registered multiple disputed domain names based on Complainant’s WESTERN ALLIANCE trademark for purposes of impersonating Complainant and perpetuating a financial fraud. Complainant has provided evidence that Respondent has used the disputed domain names for websites that feature Complainant’s marks and for emails that appear to originate from Complainant, but which, in fact, are based on some of the disputed domain names. Simply put, Respondent’s use of the disputed domain names to impersonate Complainant for a deceitful purpose cannot in any sense of the word be seen as being legitimate or evidencing a bona fide right or legitimate interest.

Given that Complainant has established with sufficient evidence that it owns rights in the WESTERN ALLIANCE mark, and given Respondent’s above noted actions and failure to appear in this proceeding, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

Given Respondent’s actions as noted above, and its failure to appear in this proceeding, it is easy to infer that Respondent’s use of the disputed domain names which consist of Complainant’s WESTERN ALLIANCE mark as part of a fraudulent financial scheme has been done in bad faith. Given that Complainant had established rights in the WESTERN ALLIANCE mark prior to when Respondent registered the disputed domain names, it is evident that Respondent opportunistically registered the disputed domain names for purposes of perpetuating a fraud at the expense of Complainant.

Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.

8. Decision

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 names <westernallianceassociation.com>, <westernalliancebankgroup.com>, <westernalliancebankinggroup.com> and <westernalliancefsa.com> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: November 7, 2019

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