WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

First Citizens Bancshares, Inc. v. Richard Davis

Case No. D2014-2221

1. The Parties

The Complainant is First Citizens Bancshares, Inc. of Raleigh, North Carolina, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

The Respondent is Richard Davis of Dyersburg, Tennessee, United States.

2. The Domain Names and Registrar

The disputed domain names <firstcitizenswealthmanagement.com> and <firstcitizenswealthservices.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2014. On December 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2015.

The Center appointed Lynda M. Braun as the sole panelist in this matter on February 20, 2015. 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 language of the proceedings is English.

4. Factual Background

The Complainant is an American bank holding company established in 1898. The Complainant offers an array of wealth management services to customers today, including personal and commercial financial services. In addition to its banking locations, the Complainant offers online banking via its website. The Complainant’s two bank subsidiaries provide a broad range of financial services, including wealth management through a network of more than 570 branches in 18 states and the District of Columbia. As of December 31, 2013, the Complainant and its subsidiaries employed a total of 4,875 employees. The Complainant’s assets total more than USD 30 billion and a deposit market share of 3.7 percent in North Carolina, United States, making it the fourth largest bank in that jurisdiction.

The Complainant holds several trademark registrations for FIRST CITIZENS, including in the United States, where the Respondent is located. The Complainant secured a trademark registration for FIRST CITIZENS as a stand-alone trademark in 1992 (the “FIRST CITIZENS Mark”), having first used it in commerce as far back as 1930. The Complainant also holds registrations for trademarks incorporating the FIRST CITIZENS Mark that are followed by descriptive or generic terms. For example, the Complainant owns the following trademark registrations: FIRST CITIZENS BANK; FIRSTCITIZENS.COM; FIRST CITIZENS DIRECT; and FIRST CITIZENS INVESTOR SERVICES.

In addition to its trademark registrations, the Complainant, through its wholly-owned subsidiary First-Citizens Bank & Trust Company, owns several domain name registrations incorporating its FIRST CITIZENS Mark. These include <firstcitizens.com>; <firstcitizens.info>; <firstcitizens.co.uk>; and <firstcitizens.biz>. The Complainant operates its official website at the address “www.firstcitizens.com”.

The Disputed Domain Names were registered on July 29, 2014, long after the Complainant began to use the FIRST CITIZENS Mark. The Disputed Domain Names resolve to parking pages that contain links of advertised goods and services, some of which are in competition with the Complainant, and operate on a pay-per-click basis.¹

According to allegations in the Complaint, the Respondent is a certified financial planner also known as Chad Davis. The Respondent’s website at “www.daviswealthservices.com” claims that the Respondent worked as a financial planner for 12 years with one of the Complainant’s subsidiaries.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Names are confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

- The Disputed Domain Names were registered and are being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Disputed Domain Names:

(i) That the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) That the Respondent has registered and is using the Disputed Domain Names in bad faith.

These elements are discussed below.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the FIRST CITIZENS Mark based on longstanding use and fame. The Disputed Domain Names <firstcitizenswealthmanagement.com> and <firstcitizenswealthservices.com> consist of the FIRST CITIZENS Mark followed by the descriptive words “wealth management” and “wealth services”, and followed by the generic Top-Level Domain (“gTLD”) “.com”.

The Panel finds that the Disputed Domain Names <firstcitizenswealthmanagement.com> and <firstcitizenswealthservices.com> are nearly identical, or if not identical, are confusingly similar to the Complainant’s FIRST CITIZENS Mark. The words “wealth management” and “wealth services” in the Disputed Domain Names are descriptive and indicate that the website provides information about wealth management and financial services. Potential consumers encountering the Disputed Domain Names would likely expect that the words “wealth management” and “wealth services” describe the services offered by the Complainant under its FIRST CITIZENS Mark.

It is well established that the addition of a descriptive or generic word to a mark does not avoid confusing similarity to a complainant’s trademark. See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (the panel found confusing similarity where the word “shop” was added to the trademark of the complainant in the disputed domain name); PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks). This is especially true where, as in the present case, the descriptive or generic words are associated with the Complainant and its services. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).

Further, the Disputed Domain Names are confusingly similar to the Complainant’s famous and registered FIRST CITIZENS Mark because they contain the mark in its entirety. A domain name is “nearly identical or confusingly similar to a complainant’s mark when it fully incorporate[s] said mark.” See PepsiCo. Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (holding <pepsiadventure.net>, <pepsitennis.com>, and others are confusingly similar to complainant’s PEPSI mark since they incorporated the trademark in its entirety).

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to a complainant’s mark, and that the complainant has made a prima facie case of lack of rights or legitimate interests, the burden of production shifts to the respondent to establish some rights or legitimate interests in respect of the domain name.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. There is no evidence in the record that the Respondent has any authority, license or permission to use the FIRST CITIZENS Mark, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Names for commercial gain.

Although the Respondent’s website at “www.daviswealthservices.com” alleges that the Respondent previously worked as a financial planner for one of the Complainant’s subsidiaries, even if true, such prior employment would not bestow upon the Respondent the right to use the FIRST CITIZENS Mark. See Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868 (“An employee or former employee is not a licensee, and thus has no authorization to use a company’s trademark or a confusingly similar variation thereof without permission.”). As stated above, the Respondent s does not have any authority, license or permission to use the FIRST CITIZENS Mark.

Furthermore, by not submitting a response, the Respondent has failed to invoke any circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds rights or legitimate interests in the Disputed Domain Names. See Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323. See also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (the respondent’s default is further evidence to conclude that it had no rights or legitimate interests in the domain name).

In addition, the Respondent’s registration and use of the Disputed Domain Names to host parking pages with various websites that have commercial links to third-party advertisements for financial-related goods and services, including sponsored links to some of the Complainant’s competitors, does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See F. Hoffmann-La Roche AG v. Dean Gagnon, WIPO Case No. D2007-1009 (“The use of a domain name comprising a third party’s renown trademark to redirect to a search engine consisting of third parties’ links, most probably for profit purposes, cannot be considered a use in connection with a bona fide offering of goods and services.”); Blue Cross and Blue Shield Association v. John Kraus, d/b/a MrINTER.NET, WIPO Case No. D2004-0756 (“Prior decisions under the Policy leave little doubt that a registrant cannot have a right or a legitimate interest in using a domain name that is confusingly similar to registered trademarks or service marks in order to compete with the marks’ owner”) (citing cases).

Finally, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, based on the circumstances here, the Respondent registered and is using the Disputed Domain Names in bad faith because the Respondent was attempting to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s FIRST CITIZENS Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites. By so doing, the Respondent is trading on the name and reputation of the Complainant and its FIRST CITIZENS Mark, which is a violation of the Policy. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).

Second, the Respondent’s action of registering the Disputed Domain Names and using them to direct Internet traffic to its websites evidences a clear intent to disrupt the Complainant’s business, deceive customers and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s FIRST CITIZENS Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Since the websites to which the Disputed Domain Names resolve had been set up to provide links on a pay-per-click basis, this is further evidence of bad faith. See St. Baldrick’s Foundation Inc. v. Web Advertising, Corp., WIPO Case No. D2007-0707 (“Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate ‘click-through’ sites, can be considered to be evidence of bad faith.”). Whether the revenue generated through the pay-per-click links accrued directly to the Respondent or to the Registrar, or to both, is immaterial. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. Such conduct demonstrates that the Respondent registered and is using the Disputed Domain Names in bad faith.

Third, the Respondent’s registration of the Disputed Domain Names long after the Complainant began to use and widely promote its FIRST CITIZENS Mark is evidence that the Disputed Domain Names were registered in bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademark). It is inconceivable that the Respondent did not have knowledge of the Complainant and its FIRST CITIZENS Mark. Registration of a domain name with knowledge of the trademark owner’s rights has been found to constitute bad faith under the Policy. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

Finally, the Panel notes that the Respondent’s use and registration of the Complainant’s FIRST CITIZENS Mark in bad faith is not an isolated incident. The Respondent previously registered and used the domain names <firstcitizens-financialplus.com> and <firstcitizenstrust.com> and, as here, linked these domain names to parking pages that contained sponsored links on a pay-per-click basis. The Complainant brought a UDRP proceeding against the Respondent and the Panel in that case ordered that the domain names be transferred to the Complainant. See First Citizens Bancshares, Inc. v. Richard Davis, WIPO Case No. D2010-0013. This pattern of conduct is another example on the part of the Respondent to use and register in bad faith and for his own commercial gain the Disputed Domain Names incorporating the Complainant’s FIRST CITIZENS Mark.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 Disputed Domain Names <firstcitizenswealthmanagement.com> and <firstcitizenswealthservices.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: February 26, 2015

¹ The way in which many of these services operate is that the domain parking service operators obtain “click through revenue” when Internet users click on the sponsored links on the displayed page. Many of these services will then provide the domain name registrant with part of that “click-through” revenue.