WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dollar Bank, Federal Savings Bank v. Thomas Pillsworth, BTCNYEX

Case No. D2016-1403

1. The Parties

Complainant is Dollar Bank, Federal Savings Bank of Pittsburgh, Pennsylvania, United States of America (“United States” or “U.S.”), represented by Metz Lewis Brodman Must O’Keefe LLC, United States.

Respondent is Thomas Pillsworth of New York, New York, United States, self-represented.

2. The Domain Name and Registrar

The Disputed Domain Name <bitdollarbank.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2016. On July 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 12, 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 proceedings commenced on July 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2016. Respondent did not submit any response before this date. Accordingly, the Center notified Respondent’s default on August 17, 2016. However, an email was received from Respondent on August 18, 2016. The email contested whether “bit” or “dollar” afforded trademark protection, because they were generic. The email did not constitute a proper Response, but has been considered by the Panel.

The Center appointed Richard W. Page as the sole panelist in this matter on August 24, 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 Dollar Bank, Federal Savings Bank, a United States Bank corporation, is the owner of the trademark rights supported by registrations to DOLLAR BANK (U.S. trademark No. 3539973, registered on December 2, 2008) and DOLLARBANK.COM (U.S. trademark No. 3562865, registered on January 20, 2009) and all other intellectual property rights associated with the use of “Dollar Bank” and “Dollarbank.com” trademarks (the “DOLLAR BANK Mark”).

The Disputed Domain Name was registered by Respondent on March 13, 2015, and last updated on April 9, 2016. Respondent incorporates the DOLLAR BANK Mark in its entirety in the Disputed Domain Name, with the addition of the prefix “bit.”

5. Parties’ Contentions

A. Complainant

Complainant contends that it has trademark rights supported by registrations to the DOLLAR BANK Mark. Complainant has used the DOLLAR BANK Mark since at least December 13, 1994 as it relates to banking and providing financial information in the field of banking.

Complainant argues that the entirety of the DOLLAR BANK Mark is incorporated into the Disputed Domain Name. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark with only the addition of a common word, it is still confusingly similar to the trademark as the addition of the term like “bit” does not eliminate the likelihood of confusion. See, e.g., NameSecure L.L.C.F. Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

Complainant alleges that Respondent has no “rights or legitimate interests” in the Disputed Domain Name because Complainant has not granted any permission for Respondent’s use of the Disputed Domain Name and the Disputed Domain Name has no “connection with a bona fide offering of goods or services.”

Complainant further alleges that, Respondent has not been “commonly known by” a name consisting in whole or in part of the wording “Dollar Bank” or its substantial equivalent; indeed, it could not be without authorization from Complainant, and Respondent is not an agent or licensee of Complainant.

Complainant further alleges that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain, due to the misleading nature of the Disputed Domain Name, without the intent to deceive consumers. At the present time, the Disputed Domain Name is not pointed to an operative web page. Respondent, may, however, use the Disputed Domain Name to potentially create a website which misleads consumers into believing they are dealing with a reputable bank, Complainant.

Complainant submits that Respondent registered the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a potential website of Respondent, by creating a likelihood of confusion with Complainant’s DOLLAR BANK Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location. Complainant further submits that neither Complainant nor any agent of Complainant has authorized the use of this Disputed Domain Name by Respondent, leading to Respondent’s potential use of an identical name to attract users and generate business.

Complainant avers that Respondent’s bad faith is also demonstrated by his attempt to sell the Disputed Domain Name on Go Daddy Auctions. Although Respondent has no legitimate rights or interests in this Disputed Domain Name, he intentionally listed the Disputed Domain Name in an auction in an attempt to profit financially.

B. Respondent

Respondent has contested whether “bit” or “dollar” can afford trademark protection, because they are generic. No proper Response has been filed contesting other arguments by Complainant.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in a domain name dispute proceeding, but if he fails to do so, asserted facts that are not unreasonable would be taken as true and Respondent would be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a formal Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify if the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the DOLLAR BANK Mark which serve as prima facie evidence of its ownership and the validity of the trademark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent contests whether the DOLLAR BANK Mark is enforceable in this proceeding because the elements “bit” and “dollar” are generic.

The Panel finds Respondent’s arguments not to be sufficient to overcome the prima facie showing of registration by Complainant. Therefore, the Panel finds that Complainant has enforceable trademark rights for purposes of this proceeding.

Complainant further contends that the Disputed Domain Name is confusingly similar to the DOLLAR BANK Mark pursuant to the Policy paragraph 4(a)(i). Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that the Disputed Domain Name is confusingly similar to the DOLLAR BANK Mark. See Rapidshare AG and Christian Schmid v. Majeed Randi, WIPO Case No. D2010-1089.

The Panel notes that the entirety of the DOLLAR BANK Mark is incorporated in the Disputed Domain Name.

Therefore, the Panel finds that Complainant has established the elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed 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 Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant has alleged that the Disputed Domain Name is not pointed at any operative web page and has no “connection with a bona fide offering of goods or services.” Complainant further alleges that, Respondent has not been “commonly known by” the Disputed Domain Name. In addition, Complainant alleges that is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has failed to come forward with evidence to refute this prima facie showing.

Therefore, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the DOLLAR BANK Mark to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the DOLLAR BANK Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the DOLLAR BANK Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. See Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003 (“Telstra”). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One such factor is that Respondent has made no use of the Disputed Domain Name. Complainant alleges that Respondent has not developed any active website to which the Disputed Domain Name resolves or made any other use of the Disputed Domain Name. See Telstra, supra.

In Telstra it was established that registration together with “inaction” or “passive use” and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent UDRP panels. Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Company Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Strålfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.

A second factor found to support a finding of bad faith is Respondent’s knowledge of Complainant’s mark when Respondent registered the Disputed Domain Name. Constructive knowledge exists if the circumstances demonstrate Respondent should have been aware from Complainant’s trademark registrations of Complainant’s rights in DOLLAR BANK Mark. Constructive knowledge of Complainant’s rights in the DOLLAR BANK Mark is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

A third factor is the use of Complainant’s entire mark in the Disputed Domain Name, thus making it difficult to infer a legitimate use of the Disputed Domain Name by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, complainant filed a UDRP complaint against the registrant of domain name <cellularonechina.com>. The panel agreed with complainant, based on facts essentially that the registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the panel inferred bad faith use of <cellularonechina.com>, because the domain name included complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, “it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name.” See also, Telstra, supra.

The Panel finds that the evidence in this proceeding establishes: (i) inaction or passive use by Respondent in regards to the Disputed Domain Name by failing to post any content on the Internet or for any other legitimate purpose; (ii) constructive knowledge by Respondent of Complainant’s rights in the DOLLAR BANK Mark based upon the registrations of the trademark; and (iii) the use of Complainant’s entire DOLLAR BANK Mark creating an absence of any plausible use of the Disputed Domain Names that would constitute good faith.

Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that the Disputed Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

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 <bitdollarbank.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: September 7, 2016