WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ClearBank Limited v. Sam Paul
Case No. D2019-1531
1. The Parties
The Complainant is ClearBank Limited, United Kingdom, represented by Lawdit Solicitors, United Kingdom.
The Respondent is Sam Paul, United States of America (the “United States”).
2. The Domain Name and Registrar
The disputed domain name <clear-bank.com> (the “Domain Name”) is registered with Shinjiru Technology Sdn Bhd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2019. On July 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 5, 2019, 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 July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on August 9, 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 Complainant is a United Kingdom company founded in 2015 that provides clearing bank services. The Complainant is the owner of trademark registrations for marks consisting of the words “clear bank” (the “CLEAR BANK Mark”) in various jurisdictions including in the United States applied for on August 9, 2016 and registered on June 27, 2017 (registration number 5231287) for various goods in class 9 relating to electronic banking.
The Domain Name <clear-bank.com> was registered on November 5, 2018. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (“the Respondent’s Website”) that purported to offer banking services under the CLEAR BANK Mark. The Respondent’s Website contained a number of striking similarities with the Complainant’s official website at “www.clear.bank”, including reproducing the Complainant’s logo, which features the words “clear bank” in blue on a white background with a light blue period (punctuation mark) in between. The Respondent’s Website purports to give the impression of an enterprise providing services in the United Kingdom with a United Kingdom contact number and a prominent photo of Big Ben.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s CLEAR BANK Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the CLEAR BANK Mark, having registered the CLEAR BANK Mark in the United States and other jurisdictions. The Domain Name is identical to the CLEAR BANK Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that sells banking services competing with the Complainant under the same mark as the Complainant, which may amount to a fraud on the Complainant’s customers.
The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing services, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the CLEAR BANK Mark, having a registration for the CLEAR BANK Mark as a trademark in the United States. Disregarding the “.com” generic Top-Level Domain as an essential element of any domain name and the absence of the space between “clear” and “bank” (spaces not being allowed in the Domain Name System), the Domain Name is practically identical to the CLEAR BANK Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the CLEAR BANK Mark or a mark similar to the CLEAR BANK Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.
The Respondent has used the Domain Name to operate a website that clearly impersonates the Complainant’s website at “www.clear.bank”, purporting to offer banking services in the United Kingdom (the location of the Complainant) under the Complainant’s CLEAR BANK Mark. Such conduct does not, on its face, amount to the use of the Domain Name for a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the CLEAR BANK Mark at the time the Domain Name was registered. The Respondent’s Website purported to offer services in direct competition with the Complainant and reproduced the Complainant’s logo. The registration of the Domain Name in awareness of the CLEAR BANK Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent has used the Domain Name, being identical to the CLEAR BANK Mark, to offer services, be they genuine or otherwise, in competition with the Complainant and in the Complainant’s jurisdiction. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website by creating a likelihood of confusion with the Complainant and the Complainant’s CLEAR BANK Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi).
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name <clear-bank.com> be transferred to the Complainant.
Date: August 11, 2019