WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Branch Banking and Trust Co. v. BB&T BB&T
Case No. D2019-0089
1. The Parties
Complainant is Branch Banking and Trust Co. of Winston-Salem, North Carolina, United States of America (“United States” or “US”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is BB&T BB&T of Raleigh, North Carolina, United States.
2. The Domain Name and Registrar
The disputed domain name <bbandtwealths.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2019. On January 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 18, 2019, 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 January 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 11, 2019.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 19, 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
Complainant is a financial services holding company based in Winston-Salem, North Carolina and founded in 1872. Complainant operates over 2,100 financial centers in 15 states and Washington, DC, offering consumer and commercial banking, securities brokerage, asset management, mortgage and insurance products and services. As of September 30, 2017, Complainant is a Fortune 500 company reporting USD 220.3 billion in assets and a market capitalization of USD 37.0 billion. Complainant employs more than 37,000 people and ranks number 14 on the list of the largest banks in the United States.
Some of Complainant’s most recent awards include:
- In 2017, Keynote ranked Complainant first for overall customer experience among US retail banking websites for the third straight year, placing first in all four customer experience categories.
- For the third year in a row, BB&T Wealth was named in Barron’s “Top 40 Wealth Managers” list, which ranks US wealth managers by client assets in accounts of USD 5 million or more.
- Forbes ranked Complainant as the top large bank among America’s Best Large Employers for 2017.
- Complainant has one of the top five mobile bank apps in the 2017 S&P Global Market Intelligence Mobile Bank App ranking.
Complainant maintains its primary website at the domain name <bbt.com>. Alexa.com ranks <bbt.com> as the 3,796th most popular website globally and the 761st most popular website in the United States. According to Similarweb.com, Complainant’s website had 13.6 million total visits in November 2017.
Complainant owns a number of trademarks registered with the United States Patent & Trademark
Office (“USPTO”), including the following marks registered in class 36 (the “BB&T” mark):
- BB&T, registration no. 1382662, dated February 11, 1986
- BB&T, registration no. 4189770, dated August 14, 2012
- BB&T, registration no. 4583618, dated August 12, 2014
- BBT.COM, registration no. 2895994, dated 19-10-2004
- BB&T WEALTH VANTAGE, registration no. 4151318, dated May 29, 2012
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states that the registration with the USPTO of its trademarks is prima facie evidence of the validity of its BB&T trademarks, of Complainant’s ownership of these marks, and of Complainant’s exclusive right to use these marks in commerce on or in connection with the goods and services specified in the registration certificates.
Further, Complainant states that in creating the Domain Name, Respondent has added the generic, descriptive term “wealths” to Complainant’s BB&T trademark, thereby making the Domain Name confusingly similar to Complainant’s mark. The fact that the “wealths” term is closely associated with Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the Domain Name and Complainant’s mark. Not only is this term associated with the financial services industry in which Complainant operates, but it also – with the addition of the letter “s” – forms part of one of Complainant’s registered trademarks. Complainant contends that past UDRP panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks.
Further, Complainant contends that Respondent’s replacement of the ampersand, present in Complainant’s BB&T mark, with the term “and” in the Domain Name does nothing to distinguish the Domain Name from Complainant’s BB&T mark. In other words, the use of the term “and” instead of the ampersand, and indeed the absence of the ampersand, does not diminish the confusing similarity between the Domain Name and Complainant’s trademarks.
(ii) Rights or legitimate interests
Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. Although the WHOIS database on DomainTools.com for the Domain Name indicates that Respondent is called “BB&T BB&T,” Complainant claims that Respondent has falsely identified itself as being associated with Complainant. Furthermore, Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark.
Complainant states that in creating the impression that Respondent’s website is one that is authorized and administered by Complainant, Respondent’s purpose is to fool unsuspecting visitors into divulging their personal information by posing as a Senior Executive Vice President & Enterprise Risk Manager of Complainant, and requesting money be transferred. Thus, the website at which the Domain Name resolves seeks to take advantage of the fame of Complainant’s trademarks and the trust and goodwill that Complainant has fostered among consumers to, at minimum, illegitimately increase traffic to Respondent’s website for personal gain, and at worst, phish personal information from Complainant’s customers (i.e., in the event that Respondent seeks to obtain visitors’ personal information as part of a larger scheme to perpetrate fraud by exploiting the fraudulently acquired personal information to, perhaps, acquire sensitive financial information). This use of the Domain Name, presumably for commercial gain, and with devious, nefarious motives, clearly fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Furthermore, as part of Respondent’s attempts to phish personal information from visitors, Respondent has sent emails from the Domain Name to numerous people, fraudulently attempting to create the impression that these emails originate from Complainant. In the emails, Respondent poses as Senior Executive Vice President & Enterprise Risk Manager of Complainant, and requests money be transferred. By sending emails from the Domain Name, Respondent is attempting to pass itself off as Complainant, which provides additional evidence of Respondent’s lack of rights or legitimate interests in the Domain Name.
Complainant states that Respondent registered the Domain Name on September 18, 2018, which is significantly after Complainant filed for registration of its trademarks, significantly after Complainant’s first use of its BB&T mark in commerce in 1970, and significantly after Complainant’s registration of its <bbt.com> domain name on January 24, 1991.
(iii) Registered and Used in Bad Faith
Complainant states that its trademarks are known internationally, with registrations in the United States. Complainant has marketed and sold its goods and services using its BB&T mark since 1970, which is well before Respondent’s registration of the Domain Name on September 18, 2018. Complainant further asserts that by registering the Domain Name that has added the generic, descriptive term “wealths” to Complainant’s BB&T mark, Respondent has created a domain name that is confusingly similar to Complainant’s marks, as well as to its <bbt.com> domain name. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of these circumstances, Complainant contends that it is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant’s brands at the time the Domain Name was registered. Stated differently, Complainant’s BB&T marks are so closely linked and associated with Complainant that Respondent’s use of these marks, or any minor variation of them, strongly implies bad faith. Further, where the Domain Name has added the generic, descriptive term “wealths” to Complainant’s BB&T mark, it defies common sense to believe that Respondent coincidentally selected the Domain Name without any knowledge of Complainant and its marks.
Complainant further argues that at the time of registration of the Domain Name, Respondent knew, or at least should have known, of the existence of Complainant's trademarks and that registration of a domain name containing a well-known trademark constitutes bad faith per se. In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the Domain Name in September 2018, Complainant is one of the largest financial services holding companies in the United States, which demonstrates Complainant’s fame. Further, performing searches across a number of Internet search engines for “bb and t wealths” returns multiple links referencing Complainant and its business.
Complainant also states that the details provided by Respondent in the WhoIs database for the Domain Name are blatantly false. Respondent has registered the Domain Name utilizing Complainant’s BB&T trademark in the registrant name field, which is listed as “BB&T BB&T”. Prior panels have held that using false contact information in the WhoIs shows evidence of bad faith registration.
Complainant alleges that Respondent has registered and used the Domain Name for purposes of launching a phishing attack, which is evidence of bad faith registration and use. After first creating a strong likelihood of confusion by misappropriating Complainant’s trademarks in the Domain Name, Respondent has posed as a Senior Executive Vice President & Enterprise Risk Manager of Complainant, and requested that money be transferred. Respondent’s efforts to masquerade as Complainant in an attempt to solicit sensitive, financial information from unsuspecting people constitutes fraud, which must be considered bad faith registration and use of the Domain Name.
The Domain Name currently resolves to an inactive site and is not being used, though past UDRP panels have noted that the word bad faith "use" in the context of the Policy, paragraph 4(a)(iii) does not require a positive act on the part of the respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy. In this case, the Domain Name is confusingly similar to Complainant’s trademarks, and Respondent has made no use of the Domain Name, factors which should be duly considered in assessing bad faith registration and use.
The Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Domain Name, and thus, the Domain Name must be considered as having been registered and used in bad faith pursuant to Policy, paragraph 4(b)(iv), with no good faith use possible. More specifically, where the Domain Name has added the generic, descriptive term “wealths” to Complainant’s BB&T trademark, there is no plausible good-faith reason or logic for Respondent to have registered the Domain Name. Rather it is indicative of an intention to hold it for some future active use in a way which would be competitive with or otherwise detrimental to Complainant. Further, considering these circumstances, any use of the Domain Name whatsoever, whether actual or theoretical, would have to be in bad faith because it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant’s rights under trademark law.
Complainant claims that in addition to the Domain Name, Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses, including:
- <caixafinservices.com> (Caixa Econômica Federal – CAIXA)
- <exxonmobilmalaysian.com> (Exxon Mobil Corporation – EXXONMOBIL)
- <rogersbk.com> (Rogers Bank – ROGERS)
According to Complainant, this demonstrates that Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Domain Name.
Finally, on balance of the facts set forth above, Complainant contends that it is more likely than not that Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its BB&T trademarks, based on its USPTO trademark registrations.
The Panel also determines that the Domain Name is identical or confusingly similar to Complainant’s BB&T marks, as the Domain Name incorporates the mark in its entirety, while adding the descriptive word “wealths”. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
In addition, the use of the term “and” instead of the ampersand “&” does not prevent the confusing similarity between the Domain Name and Complainant’s BB&T mark. See e.g., Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (“the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”).
Accordingly, the Panel finds that that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its BB&T marks; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, Respondent has used the Domain Name to send emails to numerous people, fraudulently attempting to create the impression that these emails originate from Complainant. In the emails, Respondent poses as a Senior Executive Vice President & Enterprise Risk Manager of Complainant, and requests money be transferred. The evidence indicates that this has likely been done so that Respondent can perpetrate a scam. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it. See WIPO Overview 3.0, Section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”); see also Syngenta Participations AG v. Guillaume Texier, Gobain ltd, WIPO Case No. D2017-1147 (“A registrant cannot acquire rights or legitimate interests by the use of a domain name as an email address from which to send phishing emails”).
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. First, based on the evidence, the Panel finds that Respondent was undoubtedly aware of Complainant and its BB&T marks, and targeted those marks when registering the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates these marks in their entirety, along with the word “wealths”, while also replacing the ampersand with the word “and”. Given the established use and fame of the BB&T marks and the fact that the Domain Name is so obviously connected with Complainant’s marks and business, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its BB&T marks when registering the Domain Name.
In addition, Complainant submitted evidence to show that the Domain Name has been used to send emails to people, fraudulently attempting to create the impression that these emails originate from Complainant. In the emails, Respondent poses as a Senior Executive Vice President & Enterprise Risk Manager of Complainant, and requests money be transferred. As noted above, this is evidence that Respondent is likely perpetrating a scam. Moreover, Respondent has registered the Domain Name using false contact details, where “BB&T BB&T” is listed in the field where a registrant’s name should be listed. In the context of this case, this use of false contact information in the WhoIs record is evidence of bad faith. See The Prudential Assurance Company Limited v. Osaro Godwin, WIPO Case No. D2005-0934 (“The use of false contact information in the Respondent’s initial registration application is evidence that the Respondent registered the domain name in bad faith”). Finally, Complainant has also provided evidence to show that Respondent currently holds registrations for several other domain names that correspond to trademarks of well-known brands and businesses, which shows a potential pattern of cybersquatting or typosquatting.
Thus, in this case where Respondent registered the Domain Name while using false contact details and targeting Complainant’s BB&T marks, where the Domain Name is used in what appears to be a phishing attempt, and where Respondent failed to submit a response to the Complaint, these circumstances, when considered in context with all of the other circumstances of the case, support the Panel’s finding of bad faith registration and use. Accordingly, Complainant has satisfied the third element 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 Domain Name <bbandtwealths.com> be transferred to Complainant.
Christopher S. Gibson
Date: March 14, 2019