WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Texas Capital Bank N.A. v. WhoisGuard, Inc. / Aleksandr Osipov, Private
Case No. D2018-1040
1. The Parties
The Complainant is Texas Capital Bank N.A. of Dallas, Texas, United States of America (“United States”), represented by Bracewell L.L.P., United States.
The Respondent is WhoisGuard, Inc. of Panama City, Panama / Aleksandr Osipov, Private of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <bankdirect.online> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 11, 2018, 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 May 15, 2018 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 May 20, 2018.
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 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 13, 2018. 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 commercial bank based in Texas, United States, that has operated its Internet-only banking division under the name BANKDIRECT to customers throughout the United States since 1999. It does so via its website at “www.bankdirect.com”. It provides checking, savings, and money market accounts as well as certificates of deposit and bill pay service to customers on the web. Through its “no-branch” model, it says it offers competitive rates and convenient online banking.
The Complainant is the owner of United States trademark registration No. 3,972,515 for BANKDIRECT, registered on June 7, 2011, for use in connection with banking services (the “BANKDIRECT Mark”).
The Respondent registered the Disputed Domain Name on August 29, 2017.
The Disputed Domain Name resolved, at the time of filing the Complaint, to a simple “parking page” with automatically generated links which would appear to lead ultimately to third party sites. The Disputed Domain Name currently resolves to an inactive page.
5. Parties’ Contentions
The Complainant’s case is in summary as follows:
a) The Disputed Domain Name is identical to its BANKDIRECT trademark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Name in bad faith as it is not linked to any bona fide website. The Complainant relies on various UDRP cases as to the passive holding of domain names that correspond to well-known trademarks. The Complainant also says that the Respondent has a pattern of targeting marks related to the financial services industry, and, in particular, the online financial services industry and refers to Experian Limited, Experian Information Solutions, Inc. vs. WhoisGuard Protected, WhoisGuard, Inc. / Alexandr Osipov, Private, WIPO Case No. D2017-2009.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one of the named Respondents (WhoisGuard Protected, WhoisGuard, Inc.) appears to be a privacy or proxy registration service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.
In the present case the Panel finds the substantive Respondent to be Mr. Osipov – and references to the Respondent should be understood as being to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the BANKDIRECT trademark.
The Disputed Domain Name is identical to the BANKDIRECT trademark. It is not necessary in this case to have regard to the use of the generic Top-Level Domain (“gTLD”) “.online” in assessing identity or confusing similarity (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206). In any event the gTLD is clearly directly relevant to the Complainant’s field of activity and cannot provide any basis for suggesting the Disputed Domain Name is not identical to the Complainant’s trademark.
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the BANKDIRECT trademark. The Complainant has clear rights in the BANKDIRECT trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the BANKDIRECT trademark comprises a combination of two ordinary English words, “bank” and “direct”, which are individually descriptive. However in combination they form a term which the Panel considers is capable of being distinctive and which has been used by the Complainant for many years. There is no evidence before the Panel of anyone else using that term, nor has the Respondent advanced a claim to having used them for their descriptive meaning. Those facts are sufficient in the Panel’s opinion to at least raise an inference that the Respondent knew of the Complainant and/or its BANKDIRECT trademark when registering the Disputed Domain Name and intended in some way to take improper advantage of the Complainant.
The website linked to the Disputed Domain Name has comprised a simple “parking page” which is presumably automatically generated, but is now inactive. In the circumstances of this case the Panel adopts the approach set out in the WIPO Overview 3.0 at section 3.3 as follows:
“Can the “passive holding” or non-use of a domain name support a finding of bad faith?
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or coming soon page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Overall it does not generally matter that the Respondent is not presently using the Disputed Domain Name. “Passive holding” can itself amount to bad faith registration and use where the holding involves a domain name deliberately chosen because of its association with the Complainant. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.
The Panel considers the circumstances of this case at least give rise to an inference of bad faith registration and use. The Panel also accepts the Complainant’s submission that a previous UDRP case the Respondent has been found to have registered a financial services related domain name in bad faith (see Experian Limited, Experian Information Solutions, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Alexandr Osipov, Private, WIPO Case No. D2017-2009).
Accordingly in the present case, the Panel concludes the Complainant has established a prima facie case that the Respondent registered and has used the Disputed Domain Name in bad faith. Based on the evidence provided by the Complainant, the Panel considers the burden of production is shifted to the Respondent to provide any legitimate explanation it may have as to its activities. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration or use of the Disputed Domain Name.
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <bankdirect.online> be transferred to the Complainant.
Nick J. Gardner
Date: June 19, 2018