WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hiawatha National Bank v. Martha Coe
Case No. D2018-1946
1. The Parties
The Complainant is Hiawatha National Bank of Hager City, Wisconsin, United States of America (“United States”), represented by Reinhart Boerner Van Deuren s.c., United States.
The Respondent is Martha Coe of Lekki Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <hnbwi.com> (“the Disputed Domain Name”) is registered with OwnRegistrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2018. On August 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 29, 2018, 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 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 the Respondent of the Complaint, and the proceedings commenced on September 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2018.
The Center appointed Pablo Palazzi as the sole panelist in this matter on October 1, 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 national banking association organized under the laws of the United States. The Complainant provides personal banking services such as checking, personal savings, and health saving account among others.
The Complainant has used HIAWATHA NATIONAL BANK as a trade name and trademark in connection with Hiawatha Bank Services since 1998 and uses since then the abbreviations “HNB” or “HN Bank” in connection with its Hiawatha Bank Services.
Furthermore, the Complainant is the owner of the domain name <hnbank.com> which was registered on January 10, 1999.
The Disputed Domain Name <hnbwi.com> was registered on June 22, 2018.
The Disputed Domain Name is currently inactive. However, the Complainant provided evidence that the Disputed Domain Name resolved to a website with the look and feel of the Complainant’s website available at “www.hnbank.com” with, inter alia, the contact information of the Complainant.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant states that it has rights over HNB and the HIAWATHA NATIONAL BANK trademarks. The Complainant states that from 1998 to the present the Complainant has used as a trademark and tradename the name HIAWATHA NATIONAL BANK and its abbreviation HNB to identify its business and to distinguish it from the businesses of others. In addition, the Complainant’s domain name was registered in 1999 and the Complainant has presence in social networks and an application at the Google Play store. As evidence the Complainant also attached to the Complaint printouts from “www.archive.org” dating from March 2014. In addition, the Complainant also attaches screen captures from the Complainant’s website evidencing use of the HNB trademark in the domain name.
The Complainant cites UDRP decisions that have allowed common law trademarks to be used in the UDRP to prove its trademarks rights.
The Disputed Domain Name uses the Complainant’s trademark abbreviation HNB in its entirety with the addition of the term “wi”.
The Complainant alleges that the additional element “WI” clearly refers to the abbreviation for Wisconsin, the state in which the Complainant’s bank branches are primarily located. The combination of the Complainant’s trademark abbreviation with generic term “wi” will confuse Internet users when looking for the Complainant’s legitimate website which is available at “www.hnbank.com”.
Furthermore, the addition of the generic Top-Level Domain “.com” at the end of the Disputed Domain Name does nothing to distinguish the Domain Name from Complainant’s HNB trademark.
Thus, the Disputed Domain Name is confusingly similar to the Complainant´s trademark.
Rights or legitimate interests
The Complainant has not authorized the Respondent’s use of the Complainant’s HIAWATHA NATIONAL BANK and HNB trademarks. The Complainant submits that the Respondent is not affiliated or related to the company in any way, nor has the Complainant granted any licenses or other rights to use the trademark HIAWATHA NATIONAL BANK and HNB in the Disputed Domain Name or to register any domain name which incorporates the Complainant’s trademarks.
The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name.
Furthermore, the Respondent is not using the Disputed Domain Name with a bona fide offering of goods or services and is not known by the Disputed Domain Name. The Respondent’s use of the Disputed Domain Name clearly intents to confuse consumers into mistakenly believing that the Respondent and the Disputed Domain Name are associated, sponsored or authorized by the Complainant.
Finally, the Complainant states that the Disputed Domain Name is designed to confuse users who are looking for the Complainant´s legitimate website and deceive into divulging sensitive information, such as bank account and password information. These illegitimate activities, such as phishing, the sale of counterfeit goods, or collection of personal and financially sensitive data, can never confer any rights or legitimate interests in the Disputed Domain Name.
Registration and use in bad faith
The Complainant alleges that the Respondent has intentionally registered and is using the Disputed Domain Name in bad faith. Furthermore, the Respondent is using the Disputed Domain Name to confuse consumers when searching for the Complainant’s legitimate website.
Furthermore, the Complainant alleges that the Respondent is using the Disputed Domain Name for illegitimate purposes, particularly for a phishing scam to deceive consumers into divulging personal and financially sensitive information.
The Complainant began using the HIAWATHA NATIONAL BANK and the HNB trademark on its website “www.hnbank.com” since March, 2014 and February 2015, these dates are prior to the Respondent’s registration and use of the Disputed Domain Name. This particular conduct evidences the bad faith of the Respondent.
Moreover, the fact that the Respondent created a website which resembles to the Complainant’s website with, the contact information of the Complainant, layout, graphics and logo, among other things, underlines the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which 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.
A. Identical or Confusingly Similar
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys (see section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Based on the evidence submitted by the Complainant, the Panel finds that, for the purposes of the Policy, the Complainant has been using the HIAWATHA NATIONAL BANK and its acronym HNB as unregistered trademarks to identify its banking services online. The Complainant has provided evidence of offer of its services online in the domain name <hnbank.com> and also on social networks and the Google Play store.
The Panel finds that the Disputed Domain Name <hnbwi.com> is confusingly similar to the Complaint’s trademark HNB. The Disputed Domain Name fully incorporates the Complainant’s HNB unregistered trademark. The Panel also notes that the disputed domain name could arguably be considered confusingly similar to the Complaint’s trademark HIAWATHA NATIONAL BANK as it is partially reproduced.
This is also reaffirmed by the fact that the Respondent chose the term “HNB” with the addition of “wi” to create the Disputed Domain Name, resolving to a website which previously contained identical content to Complainant’s website (see section 1.15 of the WIPO Overview 3.0).
Furthermore, the addition of the term “wi” does not prevent a finding of confusing similarity. It can be inferred as an abbreviation for Wisconsin, where the Company has its primary branches.
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
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 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name.
In addition, the Panel notes that the use of the Disputed Domain Name to resolve to a website nearly identical to the Complainant’s website at <hnbank.com> is a use that cannot arise rights or legitimate interests to the Respondent in the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The fact the Disputed Domain Name fully incorporated the Complainant’s HNB unregistered trademark and also that the Disputed Domain Name redirected to a website with the unregistered trademarks and logo of the Complainant, being the website nearly identical to the Complainant’s website available at “www.hnbank.com”. This is clear evidence of bad faith registration and use.
Moreover, the contact information on the Respondent´s website is the same of the Complainant’s.
This clearly shows that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the Disputed Domain Name, and that the Respondent registered and used the Disputed Domain Name in bad faith.
Finally, the Panel also notes that phishing’ is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user ids, passwords, etc. A fake website is usually created that is similar to that of a legitimate organization, for example a financial institution such as a bank or insurance company and this information is used for identity theft and other nefarious activities (see Halifax plc v. Sontaja Sanduc, WIPO Case No. D2004-0237 and also CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251). The Panel considers that, when domain names are identical or confusingly similar to the trademarks of banks or other financial institutions, and especially when the mentioned domain names resolve to websites almost identical to the official websites of the trademark owners, the potential risks posed by phishing could be considered as an additional circumstance to infer a finding of bad faith, since phishing emails received from email accounts based on such domain names are even more misleading to recipients and the appearance of the website would not alleviate either the likelihood of confusion.
The Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith.
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, <hnbwi.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: October 16, 2018