WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amalgamated Bank v. Muslum Degin
Case No. D2018-2875
1. The Parties
The Complainant is Amalgamated Bank of New York, New York, United States of America (“United States”), represented by Boies, Schiller & Flexner LLP, United States.
The Respondent is Muslum Degin of Bursa, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <amalgamatedbank.org> 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 December 18, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 December 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2019. The Respondent submitted several informal email communications between December 19 and 25, 2018, and again on January 19, 2019 but did not submit any response. The Complainant submitted a supplemental filing on January 17, 2019. The Center notified the Parties on January 18, 2019 that it would proceed to panel appointment.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on January 30, 2019. 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 disputed domain name was registered on November 9, 2018.
The Complainant is a chartered bank and trust company located in New York. It was founded in 1923 by a labour union, the Amalgamated Clothing Workers of America. It operates through 14 branches across the United States. It holds United States Registration No. 4575332, a logo including the words “Amalgamated Bank” and No. 3852482 the words “AMALGAMATED BANK”, dating respectively from July 29, 2014 and September 28, 2010. The Complainant claims use of the mark “AMALGAMATED BANK” in commerce since April 1, 1923. The Complainant claims to have tens of thousands of customers including more than 1,000 US labour organisations. It is the owner of the domain name <amalgamatedbank.com> which it registered in January, 1999 and through which it has promoted and conducted its business in banking and financial services. In August, 2018 the Complainant made an Initial Public Offering and was listed on NASDAQ following what it describes as a “highly publicised offering”.
According to the WhoIs for the disputed domain name, it was registered at 23:45 on November 9, 2018. At 2:07 on November 10, 2018 the Complainant received from the Respondent an email stating that he had bought the domain name “a while ago” and was planning to use it to earn to earn foreign exchange. He did not know about the Complainant but having encountered it on the Internet, he decided not to use the disputed domain name but was planning to sell it. He was communicating with the Complainant first “because the future staining of your company’s business reputation can create huge problems” and that “it may be dangerous for any foreign company to use the name of your company’s trade name”. These assertions were repeated in a further email on November 12, 2018.
The disputed domain name currently resolves to the Registrar’s free parking page which includes links to a number of sites offering car insurance. According to evidence provided by the Complainant, on December 11, 2018 the disputed domain name then resolved to a web page which mirrored the landing page of an unrelated third party, American Bank, at <am-bank.com>, including click-on links “Online Banking”, “Apply Online” and “Account Access”.
5. Parties’ Contentions
The Complainant’s contentions may be summarised as follows:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s name and registered trade mark AMALGAMATED BANK. The addition of the generic Top-Level Domain (“gTLD”) is to be disregarded when comparing the disputed domain name with the Complainant’s trade mark for the purposes of paragraph 4(a)(i) of the Policy.
(ii) The Complainant has not licensed or permitted the Respondent to use its name or trade mark and there is no evidence that the Respondent has ever used or operated under the name “Amalgated Bank”. The Respondent has attempted to sell the disputed domain name to the Complainant by making threats as to the consequences of the disputed domain name falling into foreign hands.
(iii) The Respondent’s unauthorised copying of the website of the American Bank does not establish any right or legitimate interest in the disputed domain name.
(iv) The Respondent’s action in attempting to sell the disputed domain name to the Complainant the day after it was registered indicates that the domain name was registered for the purpose of selling to the Complainant.
(v) The Respondent’s contention that it registered the disputed domain name with the intention to install a system to earn forex money is not credible. Searches conducted by the Complainant found no evidence of any connection between the Respondent and any foreign exchange business.
(vi) There is ample evidence that the Respondent intended to use the disputed domain name for illicit purposes unless the Complainant purchases it at an extortionate price.
(vii) The Respondent used the disputed domain name to mirror the website of the American Bank with the probable intention of stealing login information from unsuspecting customers.
The Respondent did not formally reply to the Complainant’s contentions but in correspondence with the Center repeated the contentions contained in its emails to the Complainant of November 10 and November 12, 2018.
6. Discussion and Findings
To succeed in its Complainant, the Complainant must show, on the balance of probabilities, that each of the requirements of paragraph 4(a) of the Policy have been met.
A. Complainant’s Supplemental Filing
On January 17, 2019, the Complainant made a supplemental filing regarding the Respondent’s submissions with a request that it be considered. The Panel, having considered that there are no exceptional circumstances in the case, declines to consider the Complainant’s supplemental filing but notes in any event should such filing had been considered, it would not have impacted the substance of the Panel’s findings below.
B. Identical or Confusingly Similar
The Complainant has provided documentary evidence of its United States Trade Mark Registration for the trade mark AMALGAMATED BANK. The disputed domain name wholly contains the Complainant’s trade mark and differs from it only by the addition of the gTLD “.org”. It is well recognized that for the purposes of the comparison under paragraph 4(b)(i) of the Policy, the designation of the gTLD is generally to be disregarded. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to the trade mark AMALGAMATED BANK in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant asserts that it has not licensed or permitted the Respondent to use its name and trade mark in the disputed domain name. There is no suggestion that the Respondent is commonly known by the disputed domain name or that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use. The Respondent’s unauthorised mirroring of the website of an unrelated third party, American Bank, is neither legitimate nor fair, nor is it use in the bona fide offering of goods or services. To the contrary, it appears more likely to be use as part of a phishing action to harvest banking data from consumers who have been misled by the disputed domain name, and/or to place an undue threat on the Complainant’s reputation and activities in connection with the Respondent’s threat that the disputed domain name may fall into foreign hands. The Respondent has not formally attempted to rebut the Complainant’s contentions in this regard and, for the reasons discussed more fully in Section C below, the Respondent’s purported explanation of its reasons for adopting the disputed domain name is not credible.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
D. Registered and Used in Bad Faith
The Complainant is based in the United States and its physical presence and activities appear to be confined to that country. The Respondent, on the other hand, appears to be located in Turkey and prima face it might have been difficult initially to demonstrate that the Respondent registered the disputed domain name with the Complainant in mind. In this case, however, it is the Respondent’s own actions which, in the opinion of the Panel, lead to the conclusion that the disputed domain name was registered for the purpose of targeting the Complainant and selling the disputed domain name to the Complainant or, failing that, using it, or selling it to some other person or organisation to use it, in a way which would be damaging to the Complainant. The Respondent’s veiled threats to do so in its communications to the Complainant are borne out by the Respondent’s subsequent actions of using the disputed domain name, which differs from the Complainant’s domain name only by the gTLD in which it is registered, to mirror the website of a third party bank and included in it an invitation to log into “Online Banking”, “Apply Online”, and “Account Access”; links which appear to be designed to harvest banking information from a user accessing the website in the mistaken belief they were dealing with the Complainant and/or the American Bank. These actions, respectively, fall within paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name was registered and is being used 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 <amalgamatedbank.org> be transferred to the Complainant.
Desmond J. Ryan AM
Date: February 13, 2019