WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KeyCorp v. Samarjeet Shukla
Case No. D2016-0520
1. The Parties
Complainant is KeyCorp of Cleveland, Ohio, United States of America (“United States”), represented by Thompson Hine LLP, United States.
Respondent is Samarjeet Shukla of Madison, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <keyequipmentfinanceblog.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2016. On March 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on March 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 21, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 29, 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
Complainant is a bank holding company, and its subsidiary KeyBank National Association is a national banking association in the United States. Through this and other subsidiaries, Complainant offers various banking and financial services. Complainant offers these services through a variety of registered trademarks, including KEYBANK and KEYBANK REWARDS. Some of these marks have been registered with the United States Patent and Trademark Office (“USPTO”) for several decades.
Complainant also holds a USPTO trademark registration for the mark KEY EQUIPMENT FINANCE. This mark was first used in commerce in 2001 in connection with equipment finance services, including lease financing of commercial equipment for businesses. This mark was registered in September 2003.
Complainant also operates a website at the address “www.key.com”. One of the offerings featured at this website is “Equipment Finance.”
The Domain Name was registered on March 26, 2014. The Domain Name resolves to a website featuring a series of articles generally related to the business of equipment finance. According to the Complaint, Respondent is using the Domain Name and the corresponding website “to market services related to lending and financing, services which are offered by [Complainant].” In one video testimonial embedded on the site to which the Domain Name resolves, a person “claims to have used the ‘system’ of a person named [JZ] to obtain business financing from several lending institutions that are competitors of [Complainant].”
According to the Complaint, and an exhibit annexed thereto, JZ is a convicted felon “who pled guilty to two counts of making false statements to financial institutions.”
5. Parties’ Contentions
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. Specifically, Complainant argues that Respondent has registered and used the Domain Name to attract visitors to Respondent’s website, where they are directed to services in competition with Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant clearly has rights, through registration and use, in the mark KEY EQUIPMENT FINANCE. The Domain Name entirely incorporates the mark, and adds the descriptive word “blog.” In the Panel’s view, the additional word “blog” does little or nothing to reduce the confusing similarity between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(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 [Respondent] (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 [Respondent] 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.
Respondent has not come forward to explain its bona fides, and has instead allowed the allegations in the Complaint to go unrebutted. The Panel finds credible Complainant’s allegations that Respondent has made no legitimate noncommercial or fair use of the Domain Name, is not commonly known by the Domain Name, and has made no use of the Domain Name (or demonstrable preparations to use the Domain Name) in connection with a bona fide offering of goods or services. Further, the Panel discerns no other basis for finding that Respondent has rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds it more likely than not that Respondent was aware of Complainant and its KEY EQUIPMENT FINANCE mark at the time he registered the Domain Name. The fact that Respondent’s website blog focuses on the business of equipment finance the very business offered by Complainant under the KEY EQUIPMENT FINANCE mark–makes it hard to believe that Respondent was ignorant of Complainant and its mark.
The Panel also concludes that Respondent has been using the Domain Name in bad faith. Respondent’s failure to respond to the Complaint makes it difficult to know precisely what Respondent is up to here, but the evidence of record leads to the conclusion that Respondent is acting in bad faith. The appropriation of Complainant’s established trademark to attract visitors to a website where the services of Complainant’s competitors are featured is inherently suspect. In the absence of any explanation or evidence from Respondent, the Panel is left with little choice but to conclude that Respondent is seeking to disrupt the business of Complainant.
Complainant has established Policy paragraph 4(a)(iii).
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 <keyequipmentfinanceblog.com> be transferred to Complainant.
Robert A. Badgley
Date: May 2, 2016