WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SVB Financial Group v. WhoisGuard Protected, WhoisGuard, Inc. / Citizen Global Cargo
Case No. D2018-0398
1. The Parties
The Complainant is SVB Financial Group of Santa Clara, California, United States of America (“United States” or “U.S.A.”), represented by Gowlings WLG (Canada) LLP, Canada.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Citizen Global Cargo of Bluefield, West Virginia, United States.
2. The Domain Name and Registrar
The disputed domain name <svbank.online> (“domain name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2018. On February 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On February 22, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the domain name which differed from the named the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 23, 2018, 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 amended Complaint on February 28, 2018. In response to a request for clarification by the Center, the Complainant filed a second amended Complaint on March 8, 2018.
The Center verified that the Complaint together with the amended Complaints 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 the Respondent of the Complaint, and the proceedings commenced on March 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.
The Center appointed R. Eric Gaum as the sole panelist in this matter on April 12, 2018. 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. Factual Background
The Complainant is the owner of numerous trademark registrations in jurisdictions worldwide that are comprised of, or contain, SVB, including, without limitation, the trademark registrations set out in the table below (collectively, the “SVB Trademarks”):
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The Respondent registered the domain names <svbank.ca> and <svbankonline.ca> on July 10, 2017 and December 1, 2017, respectively. On February 11, 2018, the Respondent registered the domain name <svbank.online>. The domain name is currently not used with an active website.
5. Parties’ Contentions
A. Complainant
The Complainant is the owner of numerous trademarks registrations, including the United States trademark registrations SVB, SVB SILICON VALLEY BANK and SVB FINANCIAL GROUP. The Respondent has engaged in the wholesale and flagrant misappropriation of the Complainant’s intellectual property with a view to defrauding unsuspecting consumers. Impersonating the Complainant, the Respondent issued emails to consumers from the email address “info@svbank.ca” indicating to email recipients that an account had been “setup successfully” on their behalf, that a “minimum deposit” would be required to verify the account and that the failure to verify the account would result in it being disabled. The email not only included two “svbank.ca” email addresses, but also a link to the Respondent’s “svbank.ca” website, which was a duplicate of the Complainant’s “svb.com” homepage. The Respondent also registered <svbankonline.ca>, which was made to hyperlink to <svbank.ca>.
Following the Complainant’s February 9, 2018 request, the hosting company disabled the domain names <svbank.ca> and <svbankonline.ca>. Just two days later, the Respondent registered the domain name at issue <svbank.online> and resolved it back to the same duplicate website.
The Complainant submits that the Respondent has engaged in a pattern of registering domain names that incorporate third party trademarks to which it is not entitled and has prevented the Complainant from registering the domain name. The Respondent has also registered the domain name for the purpose of disrupting the business of the Complainant, a competitor of the Respondent. Furthermore, the Respondent registered the domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant as to source or sponsorship.
Accordingly, the Complainant submits that the registration and use of the domain name falls squarely within the scope of the Policy, and under the circumstances the transfer of the domain name to the Complainant is warranted.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent via email and the Written Notice of the proceeding via courier in accordance with the contact details found in the appropriate WhoIs database confirmed by the Registrar. The Center also forwarded the Notification of Respondent’s Default to the Respondent via email.
Based on the methods employed to provide the Respondent with notice of the Complaint and default, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of this proceeding. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements is present. As the Respondent has failed to submit a response to the Complaint, the Panel may accept as true all of the reasonable allegations of the Complainant (see, Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Based upon the registered trademarks for SVB, SVB SILICON VALLEY BANK, SVB FINANCIAL GROUP, and related marks, and the continuous use of the marks, the Complainant clearly has rights in the marks. The Panel agrees with the Complainant that the domain name <svbank.online> is confusingly similar with the Complainant’s marks in which the Complainant has rights, and continues to have rights.
The Panel finds that the domain name <svbank.online> is confusingly similar to the SVB and related trademarks owned by the Complainant pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not licensed or authorized the Respondent to use its trademarks in any manner and there has never been any relationship between them.
There is no evidence in the record that would indicate that the Respondent has any rights or legitimate interests in respect of the domain name <svbank.online>.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <svbank.online> pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several circumstances, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
(i) circumstances indicating that you [respondent] 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 online 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 or service on your website or location.
The Respondent has engaged in a pattern of registering domain names that contain trademarks to which it is not entitled, and has prevented the Complainant from registering the domain name. The Respondent registered the domain names <svbank.ca>, <svbankonline.ca>, and <svbank.online>. All three domain names have been used in the furtherance of the same fraudulent scheme. As few as two domain name registrations, including a disputed domain name, has been sufficient to establish that a respondent has engaged in a pattern of registering domain names that incorporate the trademarks of third parties (New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812; Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338).
Furthermore, the Respondent registered the domain name for the purpose of disrupting the business of the Complainant, a competitor of the Respondent. The use of a domain name for a fraudulent purpose may constitute bad faith as per paragraph 4(b)(iii) (Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285; Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017). By way of domain names, a duplicate website and an email, the Respondent impersonated the Complainant with a view to defrauding unsuspecting consumers. The Respondent’s activities may reasonably render it a competitor of the Complainant who is actively undertaking the diversion of Internet traffic to its site for a fraudulent purpose. Therefore, the Respondent’s activities constitute a disruption to the Complainant and its business.
Finally, the Respondent is using a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement as per paragraph 4(b)(iv). The registration and use of a domain name for a fraudulent purpose can constitute bad faith under paragraph 4(b)(iv) (eBay Inc. v. Douglas Bennett, WIPO Case No. D2015-1178). The domain name incorporates the whole of the SVB trademark and is confusing similar to the SVB Trademarks. Furthermore, the domain name resolves to a website that constitutes a wholesale misappropriation of the Complainant’s intellectual property, including the unauthorized use of the SVB trademarks and copyrighted works. The domain name is likely to confuse potential consumers into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant.
The Panel finds that the Respondent’s registration and use of the domain name, with actual or constructive knowledge of the Complainant’s trademark rights, establishes the Respondent’s registration and use of the domain name in bad faith pursuant to paragraphs 4(b)(ii), 4(b)(iii), and 4(b)(iv) of the Policy.
7. Decision
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 <svbank.online> be transferred to the Complainant.
R. Eric Gaum
Sole Panelist
Date: April 26, 2018