The Complainant is First Citizens Bancshares Inc., of Raleigh, North Carolina, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Above.com Domain Privacy/ Transure Enterprise Ltd, respectively of Beaumaris, Victoria, Australia and Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <firstcitizensonlin.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2010. On April 7, 2010, the Center transmitted by email to Above.com Inc. a request for registrar verification in connection with the disputed domain name. On April 8, 2010, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 16, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2010.
The Center appointed John Terry as the sole panelist in this matter on May 21, 2010. 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.
The Complainant is an American bank holding company established in 1898 and has used and registered trade marks for services in Class 36 and characterized by FIRST CITIZENS. It also has numerous domain names similarly characterized.
The disputed domain name was registered November 28, 2009.
Complainant relies on its banking business activities using the name and trade mark which is registered trade mark 1728084 dated October 27, 1992 in United States.
The disputed domain name <firstcitizensonlin.com> is submitted to be confusingly similar to the Complainant's trade mark FIRST CITIZENS in that it incorporates the trade mark in its entirety.
According to the certified Complaint, the disputed domain name resolved to click-through revenue or pay-per-click websites provided by Above.com. The links contained on the site are for the Complainant, wholly unrelated third party organizations and competitors providing similar services.
The Complaint argued that the utilization of hyperlink advertising on a domain name similar to a registered trade mark does not constitute a legitimate noncommercial or fair use of the domain name within the scope of paragraph 4(c)(iii). The Respondent intentionally recruited the assistance of a parking company provider (Above.com) to generate revenue from members of the public who were misled and diverted customers.
The Complainant submits and asserts that the registrant of the domain name has no rights or legitimate interests in respect of the domain name <firstcitizenonlin.com> and the Respondent does not satisfy the requirements of paragraph 4(a)(ii) of the Policy.
The Complainant further asserted that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source of the Respondent's web site and products and services on the Respondent's website within the ambit of 4(b)(iv) of the Policy.
The Respondent utilized the assistance of a parking company service to generate revenue from the site. The site contained links to similar products and competitors of the Complainant. This would generate a lot of confusion with the public by implying the Respondent had an affiliation with the Complainant.
The Complainant requested transfer of the disputed domain name to it.
The Respondent did not reply to the Complainant's contentions.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a response.
As there has been no response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Panel finds the disputed domain name to be confusingly similar to the trade mark FIRST CITIZENS in which the Complainant has established prior rights as a result of its usage and trade mark registration of FIRST CITIZENS. The only difference in the domain name in dispute is the addition of a non-distinctive suffix “onlin”, an obvious misspelling of “on-line”.
The Panel concludes that the disputed domain name is confusingly similar to the registered mark of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
The Panel is satisfied that the uncontroverted Complaint is made out under paragraph 4(a)(ii) of the Policy because the Respondent has not at any time had relevant rights of legitimate interests.
Paragraph 4(c) of the Policy provides three non-limiting examples of circumstances under which a Respondent may be able to demonstrate legitimate rights or interests under paragraph 4(a)(ii). Sub-paragraph (i) of 4(c) does not apply as the Respondent has produced no evidence of use or preparations for use of the domain name with a bona fide offering of goods or services as of the date of the Complaint. Paragraph 4(c)(ii) does not apply as there is no evidence from the Respondent it had become commonly known by the domain name. Paragraph 4(c)(iii) does not apply because the Respondent has not demonstrated any legitimate noncommercial or fair use of the domain name. Thus not only does the Respondent fail to establish circumstances within any of the examples in paragraph 4(c) but also the Respondent fails generally to rebut the Complainant's prima facie case as to evidence applicable to paragraph 4(a)(ii).
The Complaint relies on the principle applied in Compagnie Générale des Etablissements Michelin CGEM – Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752. The Panelist stated: “the disputed domain name [was] used for ‘click-through' revenue generating sites which provide[d] income to the Respondent by inducing Internet users to click through to sponsored links. It is the Panel's opinion that the purpose of the Respondent's use of the domain name containing the Complainant's famous trade mark is merely to capture the Complainant's customers who are seeking the Complainant's products and/or services, and to re-direct them to other websites. Such use of domains is neither legitimate, nor of good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant's mark is evidence of bad faith registration under the Policy, paragraph 4(b)(iv).”
Furthermore, the Complaint relies on the principle stated in the case of Movado LLC v. Titan Net, WIPO Case No. D2006-0824. The Panelist stated the following: “The Panel accepts that it is highly likely that the Respondent is deriving click-through revenue from the website. This brings the deception within paragraph 4(b)(iv) of the Policy and constitutes evidence of both bad faith registration and bad faith use”.
Based on the evidence and unrefuted contentions of the Complainant, the Panel finds the third element met by the Complaint.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <firstcitizensonlin.com> be transferred to the Complainant.
Dated: June 1, 2010