WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Financial Industry Regulatory Authority, Inc. v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Edward Banis
Case No. D2016-0434
1. The Parties
1.1 The Complainant is Financial Industry Regulatory Authority, Inc. of Washington, DC, United States of America ("United States"), represented by Fried, Frank, Harris, Shriver & Jacobson LLP, United States.
1.2 The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Edward Banis of Barcelona, Spain.
2. The Domain Name and Registrar
2.1 The disputed domain name <otcibb.com> (the "Domain Name") is registered with Shinjiru MSC Sdn Bhd (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2016. At the time the Complaint was filed, the publically available WhoIs details for the Domain Name named the Registrar's domain name privacy service.
3.2 On March 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Under paragraph 4(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") the Registrar was obliged to respond to the registrar verification request within 2 business days. It failed to do so.
3.3 Given that failure, on March 10, 2016 the Center sent a further email to the Registrar asking for a response to its request. Finally, on March 15, 2016, the Registrar transmitted by email to the Center its verification response. In that response it disclosed the underlying registrant data that it held for the Domain Name and identified "Edward Banis" as the underlying registrant. The Center sent an email communication to the Complainant on March 15, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
3.4 The Complainant did not amend the Complaint and the Center proceeded to verify that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.5 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2016.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 21, 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.
4. Factual Background
4.1 The Complainant is a not-for-profit Delaware corporation and a self-regulatory organization registered with the Securities Exchange Commission in the United States. It is the largest non-governmental regulator for securities firms doing business in the United States.
4.2 One of the services it provides is the "Over the Counter Bulletin Board". This is an online web site with quotation and trade information for unlisted publicly traded equity securities. It has used the term "OTCBB" in respect of these activities since 1988.
4.3 The Complainant is the owner of United States registered trade mark No. 4113904, which is a standard character mark for OTCBB in class 36. The mark was filed on January 18, 2011.
4.4 The Complainant also uses the domain names <otcbb.com>, <otcbb.net> and <otcbb.org> in connection with its OTCBB branded services.
4.5 The Domain Name was first registered on September 20, 2014.
4.6 The registrant disclosed by the Registrar would appear to be an individual based in Spain. For the sake of convenience the Panel will refer hereafter to this person as the Respondent, regardless of whether this is the true "Respondent" for the purposes of these proceedings (for an explanation as to why in a privacy service case who is formally named as the "Respondent" in the heading of the Complaint does not matter, see Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins., WIPO Case No. D2010-1699).
4.7 On April 16, 2015 the Complainant sent an email to those operating the website displayed from the Domain Name at that time, complaining about the use of the Domain Name.
4.8 Later that day it received an email reply that claimed to be from the "Issuers Services Department" of the "Over The Counter Bulletin Board" in Hong Kong, China. That reply stated as follows:
"Please refer to our disclaimer on our website. We do not deal with any investors, companies or entities in the United States. In fact as per out TOS we restrict anyone in the USA from using our site. We also specifically sate that we are NOT associated with FINRA. Please visit: http://otcibb.com/disclaimer.php[otcibb.com]. Furthermore we are NOT a USA company nor do we do business in the USA. Our legal counsel has assure [sic] us that we are within our rights. If you have any questions please feel free to get back to us".
4.9 On or about the date that these proceedings were commenced a website was displayed from the Domain Name that purported to be operated by the "OTCIBB". That website described itself as a "quote system designed to give transparency to the international secondary off-market.
4.10 As at the date of this decision, this website is no longer online and instead displays a statement that the "website is under maintenance".
5. Parties' Contentions
5.1 The Complainant provides details of its operations and its United States registered trade mark. It claims that the Domain Name is confusingly similar to its trade mark.
5.2 The Complainant contends that the Respondent started using the Domain Name in 2014 and that the Respondent chose the name in order to attract business based on the Complainant's renown. It states that the Respondent "may" be offering bona fide goods and services from the website operating from the Domain Name but asserts that that the Respondent has never been known by the Domain Name and has acquired no trade mark or service mark in the Domain Name. Accordingly, it claims that the Respondent has no rights or legitimate interests in the Domain Name.
5.3 Further, so far as bad faith is concerned, the Complainant repeats its contention that the Respondent is intentionally attempting to mislead or divert consumers to the Respondent's website. It also claims that the Respondent's claims in an email not to deal with investors, companies or entities in the United States is untrue. In support of that claim it provides a copy of an email dated March 30, 2015 purporting to be sent from a "M. Flint" of the "OTCIBB", which included the following text:
"I see that you had recently been suspended on the OTC Markets. We have a bulletin board that would be interest in listing your company".
5.4 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge any Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate".
A. Identical or Confusingly Similar
6.4 The Domain Name comprises the entirety of the Complainant's trade mark with the insertion of the letter "i" and the addition of the ".com", Top-Level Domain. The addition of the letter "i" does not so transform or change the natural reading of the Domain Name so as to prevent a finding of confusing similarity.
6.5 The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's trade mark.
6.6 Further, had the Panel been in any doubt in this respect (which it is not), this is also a case where the way in which the Domain Name has been used (namely to what appears to be a similar "Bulletin Board" to that offered by the Complainant) is a factor which the Panel would have been prepared to take into account when considering whether there is confusing similarity (for a further explanation of this point notwithstanding the fact that the relevant comparison is an objective one between the domain name and the trade mark only, see RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089).
6.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.8 For reasons that the Panel addresses in greater detail under the heading of bad faith below, the Panel accepts the Complainant's contention that the Domain Name has been registered and held with the intention of drawing business to the Respondent because of the similarities between the Domain Name and the Complainant's trade mark. The Panel also accepts that even if the Respondent is engaged in an otherwise bona fide offering of goods and services from the website, the fact that the Respondent has deliberately chosen a name for its business that is similar to that of the Complainant's mark and with the intention of drawing Internet users to its site because of that similarity, does not provide the Respondent with a right or legitimate interest in the Domain Name either under paragraph 4(c)(i) of the Policy or otherwise.
6.9 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.10 The Panel accepts the Complainant's contention that the Domain Name has been registered and held with the intention of drawing business to the Respondent by reason of a confusing similarity between the Domain Name and the Complainant's trade mark. The key factors that have led the Panel to this conclusion are as follows:
(i) The email that the Respondent sent to a third party on March 30, 2015 demonstrates that at that time the Respondent was aware of and monitoring the activities of the Complainant and the companies that use the Complainant's services. This email was sent only a few months after the Domain Name was first registered. Further, the Respondent appears to have been engaged in activities that at least purport to compete with those of the Complainant. The Panel infers from this that the Respondent was aware of the Complainant's activities at the time the Domain Name was registered.
(ii) The Respondent appears at least recently to have been using the term "OTCIBB" as an acronym for "Over the Counter International Bulletin Board". These are, for example, the words that appeared in small text on the webpage operating from the Domain Name at about the time the proceedings were commenced. Nevertheless, the word "International" appears to be an afterthought and is not the name that the Respondent has used in correspondence. In both the email sent to a third party on March 30, 2015 and in the email sent to the Complainant on April 16, 2015 the Respondent refers to itself as simply the "Over the Counter Bulletin Board".
6.11 There is also the assertion of the Complainant that the Respondent has untruthfully claimed that it has not targeted companies in the United States. This is a serious allegation and one that if disputed, the Panel would have expected any legitimate business to have attempted to rebut. The fact that the Respondent has not attempted to do so in this case is something that the Panel considers telling and is a further factor which the Panel considers it can take into account when assessing the Respondent's motives for registering and using the Domain Name.
6.12 In the circumstances, the Panel concludes that the Complainant has demonstrated that the Respondent has engaged in activity that falls within the scope of paragraph 4(b)(iv) of the Policy and that it was with this bad faith use in mind that the Domain Name was most likely registered.
6.13 The Complainant has, therefore, made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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, <otcibb.com>, be transferred to the Complainant.
Matthew S. Harris
Date: April 26, 2016