WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dollar Bank, Federal Savings Bank v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2016-0700
1. The Parties
The Complainant is Dollar Bank, Federal Savings Bank of Pittsburgh, Pennsylvania, United States of America, represented by Metz Lewis Brodman Must O'Keefe LLC of United States of America.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd of Wilmington, Delaware, United States of America.
2. The Domain name and Registrar
The disputed domain name <dollarbanl.com> is registered with Above.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2016. On April 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2016, 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 April 12, 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 April 12, 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 proceedings commenced on April 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 6, 2016.
The Center appointed Angela Fox as the sole panelist in this matter on May 18, 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 United States bank corporation, which trades in the field of banking and the provision of financial information. The Complaint stated that since 1994 the Complainant has been carrying out these activities under the name and trademark DOLLAR BANK.
The Complainant is the proprietor of United States federal trademark registration no. 3,539,973 DOLLAR BANK, registered on December 2, 2008 for "banking services" in Class 36. Details of this registration were appended to the Complaint. The registration gives a date of first use as October 11, 1987.
The Complainant also owns United States federal trademark registration no. 3,562,865 for DOLLARBANK.COM, registered on January 20, 2009 for "banking services via global computer network" in Class 36. Details of this registration were also appended to the Complaint and showed a first use date of October 1, 1999.
The disputed domain name <dollarbanl.com> was registered on March 13, 2007. The Complaint stated that it did not resolve to any website when the Complaint was filed, but it appears at least now to resolve to a pay-per-click ("PPC") website featuring links to websites relating to bill payment (e.g. "Online Payment Card", "BSNL Landline Bill Payment", "Credit Card Bill Payment", "E Bill Pay", etc).
5. Parties' Contentions
The Complainant submits that the disputed domain name is confusingly similar to its name and trademark DOLLAR BANK. The element "dollarbanl" is essentially DOLLAR BANK with a typographical error at the end, in which the letter "l" is misstyped for the letter "k", which the Panel notes that is adjacent to it on the keyboard.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship between the Complainant and the Respondent, and the Respondent has not been authorised to use a domain name that is confusingly similar to the Complainant's trademark.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith, in order to misleadingly divert customers looking for the Complainant's website.
The Respondent did not reply to the Complainant's contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) a respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it owns registered trademark rights in DOLLAR BANK in the United States.
The disputed domain name consists of "dollarbanl" and the generic Top-Level Domain ("gTLD") ".com", which is a non-distinctive suffix. The first element of the disputed domain name is a predictable misspelling for "dollar bank". The letters "k" and "l" are adjacent to each other on a standard keyboard, and the substitution of "l" for "k" is a predictable and common typographical error. Consequently, the disputed domain name is inherently likely to attract Internet users attempting to locate the Complainant's website by typing a web address consisting of the Complainant's DOLLAR BANK trademark into an Internet browser bar.
In the Panel's view, the disputed domain name is confusingly similar to the Complainant's registered DOLLAR BANK trademark.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name, nor has the Respondent made any effort to prove that it has any. The Complainant has not authorised the Respondent to use the disputed domain name, and there is no evidence that the Respondent has been commonly known by a name corresponding to it.
As noted above, the Complainant submitted that the disputed domain name is not in use for any website, but at the time of writing of this decision it appears to be in use for a pay-per-click website featuring links to websites relating to bill payment. This appears to be a standard pay-per-click landing site from which the Respondent is likely to have been deriving click-through income.
The only distinctive element of the disputed domain names is the term "dollarbanl", which is a common and predictable typographical error for "dollar bank". It has no relevant descriptive meaning in relation to the subject matter of the links on the Respondent's website as it currently appears. The attractiveness of the disputed domain name as an address for a pay-per-click landing page appears to be based on the inclusion of a trademark that is confusingly similar to the Complainant's distinctive trademark, and the use of the disputed domain name to host pay-per-click links to websites relating to a form of financial service shows that the Respondent has sought to gain financially from the confusing similarity of the disputed domain name with the DOLLAR BANK trademark. Such activities do not, in the Panel's view, amount to bona fide commercial use (see, inter alia, ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649, "linking to competitive third-party websites shows that Respondent is well aware of Complainant as well as of its products and activities, and, [that] instead of making a bona fide use of the domain name, [the Respondent] rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks". See also mVisible Technologies Inc, v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141, "If the links on a given landing page [...] are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally […] constitute abusive cybersquatting").
The disputed domain name is inherently likely to mislead Internet users, and the Respondent has not attempted to argue, nor is there any evidence that it could realistically argue, that it has been making a legitimate noncommercial or fair use given the presence on the linked website of pay-per-click links relating to the field in which the Complainant is active, namely financial services.
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on complainants, but panels have long recognized that the information needed to prove such a right or interest is normally in the possession of respondents (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not attempted to refute the Complainant's assertions.
There is nothing in the evidence to suggest that the Respondent has any right or legitimate interest in the disputed domain name. The Panel finds that it has none.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, the following circumstance, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The disputed domain name was registered in 2007. There is no evidence as to when the disputed domain name was first used, nor when the Complainant first learned about its existence or use. Having said that, though, the Complainant's evidence, uncontested by the Respondent, is that it had been using the DOLLAR BANK trademark in the United States continuously since 1994 in relation to banking and financial information services, and that the DOLLAR BANK trademark had therefore been in use for some thirteen years when the disputed domain name was registered.
The Complainant has asserted that the disputed domain name did not resolve to a website at the time of filing. UDRP panels may find bad faith registration and use of a domain name for purposes of the Policy despite such passive holding based on the totality of the circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003
The disputed domain name has, moreover, been used to host what appear to be pay-per-click links to commercial websites of third parties in the field of financial services, which strongly suggests an awareness of the Complainant's business on the Respondent's part. In the Panel's view, all of these factors make it more likely than not that the Respondent registered the disputed domain name in, and most likely prompted by, the knowledge of the Complainant's banking business under the DOLLAR BANK trademark, and with the intention to gain commercially by hosting pay-per-click links whose success depended on the ability of the disputed domain name to attract Internet users seeking information on the Complainant's bank.
The Respondent made no effort to refute the Complainant's allegations in this regard. In the light of the findings above, the Panel concludes that the disputed domain name was registered and has been used in bad faith in light of the circumstances described above and under paragraph 4(b)(iv) 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 <dollarbanl.com>, be transferred to the Complainant.
Date: June 10, 2016