WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dollar Bank, Federal Savings Bank v. I S, ICS, Inc.
Case No. D2017-1939
1. The Parties
The Complainant is Dollar Bank, Federal Savings Bank of Pittsburgh, Pennsylvania, United States of America ("United States" or "US"), represented by Metz Lewis Brodman Must O'Keefe LLC, United States.
The Respondent is I S, ICS, Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <dollarbamkonlinelogin.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 October 4, 2017. On October 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on October 9, 2017, to correct an administrative formality.
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 October 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 1, 2017.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on November 7, 2017. 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
It results from the Complainant's undisputed allegations that the Complainant is the owner of the trademark rights to the following registered trademarks and all other intellectual property rights associated with the use of DOLLAR BANK and DOLLARBANK.COM trademarks:
(1) US service mark 3,539,973 for DOLLAR BANK registered on December 2, 2008, with first use November 10, 1987, covering "banking services" in class 36;
(2) US service mark 3,562,865 for DOLLARBANK.COM registered on January 20, 2009, with first use January 10, 1999, covering "banking services via global computer network" in class 36;
(3) US service mark 5,046,785 for DOLLAR.BANK registered on September 20, 2016, with first use July 13, 2016, covering "banking services" in class 36.
The Complainant has used these in the field of banking.
According to the Registrar's verification response, the disputed domain name was registered to the Respondent on September 25, 2017. The website to which the disputed domain name resolves contains a list of sponsored links. The disputed domain name is offered for sale at a price of USD 799.
Finally, the Complainant informs that it has filed a similar UDRP Complaint with the Center relating to the domain name <dollarbank-onlinebanking.com> against this same Registrant.
5. Parties' Contentions
The Complainant asserts that the disputed domain name <dollarbamkonlinelogin.com> is confusingly similar to its marks. Simply adding the term "onlinelogin" and substituting the "n" in the term "bank" by an "m" is not sufficient to exclude similarity. A domain name which contains misspelling of a trademark will rather be found to be confusingly similar to such trademark where the misspelled trademark remains the dominant or principal component of the domain name which is the case in the issue at hand.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Complainant has not granted any permission for the 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". Furthermore, to the best of the Complainant's knowledge, the Respondent has not been "commonly known by" a name consisting in whole or in part of the wording "dollar bank" or its substantial equivalent.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. According to the Complainant, the Respondent registered the disputed domain name to intentionally attempt to attract for commercial gain, Internet visitors to the Respondent's website, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location. Additionally, the Respondent is attempting to attract users to the website and it is not immediately apparent to Internet users visiting the disputed domain name that it is not operated by the Complainant. Finally, the Respondent's bad faith is allegedly demonstrated by its attempt to sell the disputed domain name for USD 799.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "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". Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of a service mark registration consisting of or containing the verbal elements "DOLLAR BANK", e.g., US service mark registration No. 3,539,973 DOLLAR BANK and US service mark registration No. 3,562,865 DOLLARBANK.COM, which both predate the creation date of the disputed domain name, which is September 25, 2017.
As noted by many prior UDRP panels, the applicable generic Top-Level Domain ("gTLD") suffix ".com" in the disputed domain name is normally to be disregarded under the identity/confusing similarity test.
Furthermore, the disputed domain name is almost a reproduction of the trademark DOLLAR BANK in its entirety. The only difference between this mark and the elements "dollarbamk" contained in the disputed domain name is that the ninth letter of the mark (i.e., "n") has been replaced in the disputed domain name by the letter "m". This single-letter difference does not avoid a finding of confusing similarity between the disputed domain name and the Complainant's trademark, in particular regarding its wording and pronunciation. Moreover, this Panel emphasizes that the case at hand is a typical case of "typosquatting", which occurs when one letter is replaced by another in a domain name. It is also noteworthy that the placement of the letter "n" is adjacent to the letter "m" on standard computer keyboards, what may result in confusion and unwanted access to the Respondent's website linked to the disputed domain name by Internet users in case of misspelling of the Complainant's trademark. As noted in previous UDRP decisions, a domain name which contains a common or obvious misspelling of a trademark normally is found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (see Accenture Global Services Limited v. Tulip Trading Company, WIPO Case No. D2015-1520 with further references).
Finally, the disputed domain name combines the Complainant's registered trademark DOLLAR BANK as its distinctive element with the terms "online" and "login", which are applicable as a descriptive term of the Complainant and its services/business. The addition of these two descriptive terms to the trademark does not serve to distinguish the disputed domain name from the trademark (see e.g., for the term "login", eBay Inc. and Facebook Inc. v. Santosh Ghimire, Do Surf In P. Ltd. and Babin Manandhar, WIPO Case No. D2014-1629).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name. In the Panel's view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complaint's allegations, which have remained unchallenged, the Complainant has not authorized the Respondent's use of the trademark DOLLAR BANK through the registration of the disputed domain name consisting of a near reproduction of the trademark DOLLAR BANK in its entirety combined with two descriptive terms ("online" and "login"). In addition, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.
In addition, according to the printouts submitted by the Complainant, the website to which the disputed domain name resolves, offers sponsored or pay-per-click ("PPC") links amongst others to alleged online banking websites (not connected to the Complainant). Furthermore, the disputed domain name is offered for sale for USD 799. UDRP panels have found that in such cases where PPC links on the respondent's website compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users, the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 2.9 with further references).
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
Generally speaking, UDRP panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor). Circumstances indicating that a domain name was actually registered for the bad-faith purpose of selling it to a trademark owner can be highly fact-specific, see WIPO Overview 3.0 at section 3.1.1.
However, in the case at hand, this Panel finds that the circumstances surrounding the registration are clear evidence demonstrating that the Respondent has registered or acquired the disputed domain name primarily to sell the disputed domain name to the Complainant (or its competitor) for valuable consideration in excess of the Respondent's costs related to the domain name (pursuant to paragraph 4(b)(i)). These circumstances are (1) offering for sale the disputed domain name at a price of USD 799 which clearly exceeds the out-of-pocket costs directly related to the disputed domain name, (2) registration of a domain name including the Complainant's trademark spelled with a typo, (3) further combination of that misspelled trademark with two descriptive terms which are applicable as descriptive terms of the Complainant and its services/business, (4) offering of PPC links on the website to which the disputed domain name resolves, in particular to websites with alleged banking login pages, and finally (5) the fact the same Respondent apparently registered another domain name including the Complainant's service mark DOLLAR BANK (namely <dollarbank-onlinebanking.com>).
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant is therefore deemed to also have satisfied the third element, 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 <dollarbamkonlinelogin.com> be transferred to the Complainant.
Tobias Malte Müller
Date: November 21, 2017