WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dollar Bank, Federal Savings Bank v. Pham Dinh Nhut
Case No. D2016-0787
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 Pham Dinh Nhut of Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <dollaebank.com> is registered with April Sea Information Technology Corporation (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2016. On April 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 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 28, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 28, 2016.
The Complaint was filed in English. The language of the Registration Agreement is Vietnamese. In the Complaint and in the amended Complaint, the Complainant requested English as the language of the proceeding. No submission from the Respondent was received. The Center notified the Complaint in both English and Vietnamese.
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 May 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 27, 2016.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 2, 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 and is the holder of the following trademarks:
DOLLAR BANK, United States Patent and Trademark Office ("USPTO"), principal register, stated first use in commerce December 30, 1987, registered December 2, 2008, registration number 3539973, class 36;
DOLLARBANK.COM, USPTO, principal register, stated first use in commerce January 10, 1999, registered January 20, 2009, registration number 3562865, class 36.
No background information is available about the Respondent except for the details provided for the purposes of registration of the disputed domain name <dollaebank.com>, which was registered on December 31, 2007 and does not resolve to an active website.
5. Parties' Contentions
The Complainant contends that it has used its trademarks DOLLARBANK and DOLLARBANK.COM in the field of banking and providing financial information since December 13, 1994 and January 10, 1999, respectively, and has produced summary copies of the registration documents in respect of those trademarks.
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademarks. The disputed domain name incorporates the Complainant's trademarks in their entirety except that the letter "r" in the trademarks has been substituted with the letter "e".
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been granted permission by the Complainant to use it. The disputed domain name is not in use in connection with a bona fide offering of goods or services. To the best of the Complainant's knowledge, the Respondent has not been commonly known by the disputed domain name, which is not in non-commercial or fair use and does not resolve to a website.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent has intended to attract Internet users to the corresponding website for commercial gain by creating the likelihood of confusion with the Complainant's trademarks. The disputed domain name is a misspelling of the Complainant's trademark with the letter "r" replaced by the letter "e", which is next to it on the keyboard, in an attempt to deceive users who mistype the Complainant's trademark in this way.
The Complainant has cited certain previous decisions under the Policy that it considers should support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Procedural Issues
Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. In the present case, the language of the Registration Agreement is Vietnamese.
The Complainant submitted its Complaint in English and requested the language of the proceeding to be English. The Respondent has not submitted any comments in this regard despite having been given the opportunity. The Center notified the commencement of the administrative proceeding in both English and Vietnamese. In these circumstances, and taking into account the Respondent's default, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate in this case to determine that the language of the proceeding shall be English.
Therefore, the Panel has decided to accept the Complainant's filings in English and to issue a decision in English.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainant initially cited a privacy service as the Respondent. After the identification details of the registrant were disclosed by the Registrar, the Complainant submitted an Amended Complaint, in which Pham Dinh Nhut was named solely as the Respondent in place of the privacy service. The Panel has proceeded in accordance with the Complainant's decision.
6.2. Substantive Issues
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant "has" rights, in the present tense, in a trademark. The Complainant has produced evidence, satisfactory to the Panel for the purpose of this proceeding, of its rights in the registered trademarks DOLLARBANK and DOLLARBANK.COM. The dates of the respective trademark registrations at the USPTO, which were later than the registration of the disputed domain name, are not presently relevant.
The disputed domain name is <dollaebank.com>. One of the Complainant's trademarks is DOLLARBANK.COM, from which the disputed domain name differs solely by the replacement of the letter "r" in the trademark with the letter "e".
The Complainant's other trademark is DOLLAR BANK from which the disputed domain name differs by the replacement of the letter "r" with the letter "e", and by the omission of the space that is not permissible in a domain name, and by the inclusion of the generic Top-Level Domain ("gTLD") designation ".com", which may be disregarded in the determination of confusing similarity.
The Panel finds the disputed domain name <dollaebank.com> to be a misspelling of and confusingly similar to the Complainant's trademarks DOLLARBANK and DOLLARBANK.COM within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent does not have rights or legitimate interests in respect of the disputed domain name and has not been granted any permission by the Complainant to use it.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you 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 (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 are making a legitimate non-commercial 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".
The Respondent has not responded formally and has not asserted rights or legitimate interests in the disputed domain name under the terms of paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise.
According to the Complainant, the disputed domain name did not resolve to a webpage. There is no evidence of preparations for its use in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the disputed domain name, or that it has been in non-commercial or fair use. The Panel finds under paragraph 4(a)(ii) of the Policy that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 website or location or of a product or service on your website or location".
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
The scheme known as Internet typosquatting or typopiracy is well recognised. That is the registration of a domain name that mimics a legitimate domain name or trademark except for a devious error, in the expectation that a percentage of users will make the same error by either using the wrong spelling or by hitting the wrong key and will, in consequence, be led to the Internet presence of the scheming party. The purpose is to syphon off Internet traffic from its rightful destination and then to offer to the misled visitors goods or services for sale, or commonly an array of pay-per-click links to websites that pay commission for referrals. Many of the businesses linked to in this way may be entirely legitimate.
The disputed domain name comprises the Complainant's trademarks DOLLARBANK.COM and DOLLARBANK except for the replacement of "r" with "e", which is the adjacent letter on the popular "QWERTY" or "AZERTY" keyboards. Having regard to all the evidence, the Panel finds on the balance of probabilities that the Respondent has registered the disputed domain name with the intention of typosquatting on the Complainant's trademarks, in the expectation that some users seeking the Complainant will accidentally hit the "e" key instead of "r" and be misled into visiting the Respondent's website, potentially generating commercial gain for the Respondent by confusion of the visitor within the contemplation of paragraph 4(b)(iv) of the Policy.
The Panel notes there is no evidence that the disputed domain name resolves yet to a meaningful website or other Internet presence, since it appears to be passively held. That does not preclude a finding that the disputed domain name is in use in bad faith by the Respondent for purposes of the Policy. The disputed domain name incorporates the registered trademarks of an established bank and logically has been purchased by the Respondent for some purpose, but it is not reasonably possible to conceive of any use to which it could be put by the Respondent that would be in good faith. The Panel finds the disputed domain name to be in use in bad faith within the meaning of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
It is further noted that the registration of the disputed domain name on December 31, 2007 predated the registration of the Complainant's trademarks, DOLLAR BANK having been granted trademark registration on December 2, 2008, and DOLLARBANK.COM on January 20, 2009. The registration date of a trademark is not the critical date for comparison with that of the disputed domain name however, instead the critical date is when "... the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis) ..." (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.1). The Complainant states, uncontested, that it first used its trademarks in banking on December 13, 1994. First use in commerce of the trademark DOLLAR BANK according to the trademark certificate is December 30, 1987 and first use in commerce of the trademark DOLLARBANK.COM is specified in the trademark registration document as having been on January 10, 1999, and on balance the Panel does not find it credible that the registration nearly 9 or respectively 20 years later of the disputed domain name, almost identical except for a predictable typographical mistake, was made by the Respondent without prior knowledge of the trademark it simulates.
The Panel finds the disputed domain name to have been registered and used in bad faith under paragraph 4(a)(iii) 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 <dollaebank.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: June 9, 2016