WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Helm Bank USA v. Domain Administrator, See PrivacyGuardian.org / Techie Enterprise
Case No. D2019-1723
1. The Parties
The Complainant is Helm Bank USA, United States of America (“United States”), represented internally.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Techie Enterprise, United States.
2. The Domain Name and Registrar
The disputed domain name <helmbankingusa.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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.1 The Center sent an email communication to the Complainant on July 29, 2019, 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 August 16, 2019, deleting the <helmbankusaonline.com> domain name and adding the name of the Respondent provided by the Registrar.
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 August 21, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2019.
The Center appointed Lynda M. Braun, Brian J. Winterfeldt and Frederick M. Abbott as panelists in this matter on October 11, 2019. The Panel finds that it was properly constituted. Each member of 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 Florida chartered full-service bank supervised by the State of Florida and insured by the Federal Deposit Insurance Corporation. The Complainant has provided personalized services to its customers in both the United States and throughout Latin America for the past 25 years. The Complainant has offices located in Colombia and Venezuela that provide clients living outside of the United States with integrated solutions for their personal and corporate banking needs.
The Complainant owns the following federally registered trademarks: HELM BANK USA (word mark), United States Registration No. 4224430, registered on October 16, 2012, in international class 36; and HELM BANK USA (word and design mark), United States Registration No. 4224429, registered on October 16, 2012, in international class 36 (hereinafter collectively referred to as the “HELM BANK USA Mark”). The Complainant operates its official website at “www.helmbankusa.com” through which it describes and promotes its banking services.
The Disputed Domain Name was registered on June 12, 2019, nearly seven years after the Complainant first received its trademark registrations for the HELM BANK USA Mark in 2012. The Complainant used the trademarks in interstate commerce beginning in May 20, 2009. According to a screenshot provided by the Complainant as an annex to the Complaint, the Disputed Domain Name initially resolved to a website at “www.helmbankingusa.com” that was a replica of the Complainant’s website, including use of the Complainant’s HELM BANK USA Mark, its website designs and photos. As of the writing of this Decision, the website is no longer available online. Instead, the Disputed Domain Name currently resolves to a landing page which states: “Sorry... “helmbankingusa.com” could not be found”. Directly beneath that message, it states “Search results for “helmbankingusa.com””. The results include a list of pay-per-click (“PPC”) hyperlinks containing information about banking in general and about the Complainant specifically.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith as part of a spoofing scheme in which the Respondent first replicated the Complainant’s website to mislead customers as to the source and affiliation of the website.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred from the Respondent to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. Ownership of a federally registered trademark constitutes prima facie evidence that the Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Here, it is uncontroverted that the Complainant has established rights in the HELM BANK USA Mark based on its federally registered trademarks for the HELM BANK USA Mark and its several years of use of this mark.
The Disputed Domain Name <helmbankingusa.com> consists of a variation of the HELM BANK USA Mark, i.e., with the use of the word “banking” instead of “bank”, and followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name:
(i) before any notice of the dispute, the respondent’s 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 (as an individual, business or other organization) has been commonly known by the domain name, even if it 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.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s contention that it has given no authorization, license or permission to the Respondent to use the HELM BANK USA Mark in any way, the Respondent does not operate any business under the name “Helm Banking USA,” the Respondent is not using the Disputed Domain Name in connection with any bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. The only use that the Respondent has made of the Disputed Domain Name is to create a website that mimics the Complainant’s website in text and design and later to host a website that contains hyperlinks to third party sponsored ads.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
First, the Complainant’s trademark is wholly contained in the Disputed Domain Name. The use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location for commercial gain demonstrates registration and use in bad faith.
Second, the Respondent’s creation and use of an unauthorized website identical to that of the Complainant indicates that the Respondent was acting in bad faith. In particular, the Respondent replicated the Complainant’s website to intentionally mislead customers into thinking that the website belonged to the Complainant. After taking down the identical website and as of the writing of this Decision, the Disputed Domain Name resolves to a PPC page with links to sponsored ads, another example of bad faith. The website to which the Disputed Domain Name currently resolves contains hyperlinks that are PPC sponsored ads that promote, among other things, banking services, including those of the Complainant. As such, the Respondent is not only trading on consumer interest in the Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the website, but the Respondent may also derive commercial advantage in the form of referral fees. In the Panel’s view, this constitutes bad faith. See Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006‑1128. Further, when the links on PPC pages are based on the trademark value of a complainant’s domain name, the trend in UDRP decisions is to recognize that such practices constitute bad faith. See Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name); see also WIPO Overview 3.0, section 3.5.
Finally, the Disputed Domain Name was registered several years after the registration of the Complainant’s HELM BANK USA Mark and a decade after the Complainant first began to use the trademark in commerce. The Panel finds that the Respondent had the Complainant’s HELM BANK USA Mark in mind when registering the Disputed Domain Name. Bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the HELM BANK USA Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. The Respondent registered the Disputed Domain Name after the Complainant obtained its trademark registrations for the HELM BANK USA Mark in the United States. The Respondent’s reproduction of the Complainant’s website (and later redirection of the Disputed Domain Name to a PPC page with links to the Complainant) makes it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademarks). Therefore, the Panel concludes that the Respondent is using the Disputed Domain Name for an illegitimate purpose that demonstrates prior knowledge of the Complainant’s HELM BANK USA Mark and a bad faith intent to register and use the Disputed Domain Name.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <helmbankingusa.com> be transferred to the Complainant.
Lynda M. Braun
Brian J. Winterfeldt
Frederick M. Abbott
Date: October 19, 2019
1 The Complainant included two domain names in the original Complaint: <helmbankingusa.com> and <helmbankusaonline.com>. The Registrar’s verification response disclosed that the registrants of the two domain names were not the same.