WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dollar Bank, Federal Savings Bank v. Moniker Privacy Services / Shaun Hedges, Accueil Des Solutions Inc
Case No. D2016-0454
1. The Parties
The Complainant is Dollar Bank, Federal Savings Bank of Pittsburgh, Pennsylvania, United States of America (“United States”), represented by Metz Lewis Brodman Must O’Keefe LLC, United States.
The Respondent is Moniker Privacy Services of Fort Lauderdale, Florida, United States / Shaun Hedges, Accueil Des Solutions Inc of Vancouver, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <dollabank.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2016. On March 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar 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 March 9, 2016 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 March 14, 2016.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceeding commenced on March 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on April 22, 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
The Complainant is a corporation providing banking and financial services and is located in Pittsburgh, Pennsylvania, United States. It owns a United States word mark registration for DOLLAR BANK under registration number 3539973 dating from 2008 and for DOLLARBANK.COM under registration number 3562865 dating from 2009. The earlier of these registrations has a “first use in commerce” date of 1987.
The Complainant operates a commercial Internet website at “www.dollarbank.com”. The “about us” information provided at that website indicates that Complainant has been doing business in Pennsylvania for 161 years, and “has grown to become a large, full service, regional bank”. According to an “historical timeline” at the about us page, the name of the institution was changed from “Dollar Savings Bank” to “Dollar Bank” in 1984. Further according to that historical timeline: “March 1997 - Dollar Bank becomes the 17th bank in the country to offer Online Banking via the Internet”.
The disputed domain name was first registered in December 2004. The WhoIs record indicates that the record was “updated” in December 2015.
5. Parties’ Contentions
The Complainant submits that the disputed domain name incorporates both the Complainant’s trade marks in their entirety in the disputed domain name. It says that the only difference is one letter, namely the “r” in “dollar”. The Complainant says that as a result the disputed domain name is confusingly similar to its United States trade mark registrations.
The Complainant submits that it has not permitted or licensed the Respondent to use its DOLLAR BANK or DOLLARBANK.COM trade marks. It says that to the best of its knowledge the Respondent has not been commonly known by and nor does it trade under, the DOLLAR BANK mark. It says that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but is rather using it for the purpose of misleading and re-directing consumers to its website by leading them to believe that they are dealing with a reputable bank such as the Complainant, or at the least one that has a connection with the Complainant.
The Complainant says that the Respondent registered the disputed domain name to intentionally attract, for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location. The Complainant says that the Respondent has intentionally misspelt its trade mark and incorporated it into the disputed domain name so as to deceive Internet users who accidentally misspell or mistype the Complainant’s mark and notes that there is no indication on the website that it belongs to the Respondent and not to the Complainant. As a result, the Complainant says that this is evidence under the Policy that the Respondent has registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered rights in the United States in its DOLLAR BANK and DOLLARBANK.COM trade marks as set out above. The disputed domain name omits the “r” in “dollar” but otherwise wholly incorporates the DOLLAR BANK mark and in other respects is identical to the Complainant’s DOLLARBANK.COM mark. As a consequence the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trade marks and that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that it has not permitted or licensed the Respondent to use its DOLLAR BANK or DOLLARBANK.COM trade marks. It also says that to the best of its knowledge the Respondent has not been commonly known by, or under, the DOLLAR BANK mark and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but is rather confusing Internet users and misdirecting them to the Respondent’s website. The Complainant says that the Respondent has intentionally facilitated this by incorporating its trade mark into the disputed domain name but with a misspelling and that it is therefore not making a bona fide use of the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not filed a response and has therefore failed to rebut the Complainant’s case that the Respondent has no rights or legitimate interests under this element of the Policy. As a result the Panel finds that the Complaint also succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered in 2004 prior to the date on which the Complainant registered its trade marks in the United States. However, as noted above, the Complainant has been in business for a very long time and has been using the name “Dollar Bank” in commerce since 1984, and has had an online presence since the 1990s.
It is apparent that by 2004 the Complainant had established rights in the DOLLARBANK and DOLLARBANK.COM trade marks and it is likely that the Respondent was aware of the Complainant and its operations. In these circumstances and considering that the term “dollarbank” as the combination of two ordinary words is not a common combined expression in English, that the disputed domain name is an obvious misspelling of the Complainant’s trade mark, that the disputed domain name also appears to have been registered in the name of a privacy service (even if the circumstances surrounding this are unclear) and also the Respondent’s failure to rebut the Complainant’s allegations, the Panel infers on the balance of probabilities that the disputed domain name was registered in bad faith.
The disputed domain name resolves to a commercial parking page featuring sponsored links to “Dollar Bank” (presumably the Complainant) but also to certain competitor banks. It appears to the Panel that the Respondent has engaged here in a form of classic typo-squatting in order to misdirect Internet users to its website at the disputed domain name with a view to earning pay-per-click income. Under paragraph 4(b)(iv) of the Policy, registering a domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location amounts to evidence of registration and use in bad faith. The Panel finds that in all the circumstances here the requirements of this section are, on the balance of probabilities, made out.
Accordingly, the Panel finds that the disputed domain name was both registered and used in bad faith and the Complaint also succeeds under the third element of the Policy.
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 name <dollabank.com> be transferred to the Complainant.
Date: May 2, 2016