WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Signature Bank v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2020-1081
1. The Parties
The Complainant is Signature Bank, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and Registrar
The disputed domain names <signaturenu.com> and <signaturenybank.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2020. On May 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2020 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 May 11, 2020.
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 May 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2020.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 17, 2020. 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 States private commercial bank founded in 2001 with 31 private client offices throughout the New York area. It also has an office in San Francisco. The scale of its operations includes the achievement of over USD 50 billion in assets in 2019. The Complainant has a primary website located at the domain name <signatureny.com>, registered on September 25, 2000, which has been receiving more than 90,000 visits per month recently.
The Complainant holds various trademarks including the following:
SIGNATURE BANK, United States Patent and Trademark Office (“USPTO”), principal register, registered April 24, 2012, registration number 4132120, in class 36; and,
SIGNATURE BANK, USPTO, principal register, filed December 17, 2015, registered June 6, 2017, registration number 5216114, in class 36.
Nothing of significance is known about the Respondent except for the contact details submitted to the Registrar in order to register the disputed domain names, which were registered on May 6, 2020 (<signaturenu.com>) and December 13, 2019 (<signaturenybank.com>). The disputed domain names have resolved to apparent parking pages populated with external links. The Complainant sent cease and desist letters to the Respondent dated March 9, March 19, and March 30, 2020, in respect of the disputed domain name <signaturenybank.com>.
5. Parties’ Contentions
The Complainant contends that it owns and has right in the registered trademark SIGNATURE BANK. The trademark is well recognised and the Complainant has been the recipient of a number of industry awards. For example, the Complainant appeared in Forbes' Best Banks in America list for the ninth consecutive year in 2019.
The Complainant says the disputed domain names are confusingly similar to the registered trademark in which it has rights. The geographical descriptor “ny”, commonly meaning New York, where the Complainant is principally located, has been inserted into the Complainant’s trademark to create the disputed domain name <signaturenybank.com>. The disputed domain name <signaturenu.com> comprises the dominant element SIGNATURE of the Complainant’s trademark, and “nu”, which the Complainant says is a typographical misspelling of “ny”. The generic Top-Level Domain (“gTLD”) may be disregarded in the determination of confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has the exclusive right to use its trademark in the relevant commercial context and has not authorised the Respondent to use it. There can be no actual or contemplated bona fide use by the Respondent of the disputed domain names, which have been used to redirect visitors by means of links to third parties. There is no evidence the Respondent has been commonly known by the disputed domain names, and they have not been used for any noncommercial or fair purpose.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant’s trademarks are known internationally and predate the registration of the disputed domain names. The Respondent ought to have known of the Complainant’s trademarks, and must have known so when the disputed domain name <signaturenu.com> was registered in May, 2020, since cease and desist letters had been sent to the Respondent in respect of the disputed domain name <signaturenybank.com> on different dates during March 2020.
The Complainant says the disputed domain names have resolved to websites carrying links to advertisers for commercial gain. It is of no consequence if the advertising links are placed by an automatic service, and the Respondent cannot disclaim responsibility for them. The Respondent relies on unsuspecting Internet users confusing the disputed domain names, incorporating the geographical term “ny” or the typographical error “nu”, with the Complainant’s trademark, and believing them to be associated with the Complainant. The Respondent is thereby capitalising on the goodwill attaching to the Complainant’s trademark in order to derive revenue.
Furthermore, the Complainants says, there can be no plausible good faith reason for the Respondent to have registered the disputed domain names.
The Complainant says the Respondent has engaged in a prior pattern of the registration of domain names that have been the subject of adverse findings in disputes under the Policy, and has annexed a list of 198 cases, some concerning multiple domain names, brought by other complainants against the Respondent, that is says are evidence of the Respondent’s history as a cybersquatter.
The Complainant says the Respondent’s use of a privacy service to hide its identity is further evidence of registration and use of the disputed domain names in bad faith. The Respondent’s failure to reply to the Complainant’s cease and desist letters is also a factor pertaining to a finding of bad faith.
The Complainant has cited a number of previous decisions under the Policy that it considers to be supportive of the Complaint.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied by the documentary evidence produced that the Complainant has the requisite rights under the Policy in the trademark SIGNATURE BANK.
Disregarding the gTLD “.com”, the disputed domain name <signaturenybank.com> incorporates the entirety of the Complainant’s trademark with the element “ny” intercalated. The element “ny” is a common abbreviation for New York and the Respondent has not made any submission to the contrary. The Panel does not find the additional element “ny” avoids a finding of confusing similarity, and accordingly finds the disputed domain name to be confusingly similar to the Complainant’s trademark.
The prominent component of the Complainant’s trademark is SIGNATURE; as stated on the relevant trademark registration document, “no claim is made to the exclusive right to use "bank" apart from the mark as shown”. The disputed domain name <signaturenu.com> is found by the Panel to comprise the principal element SIGNATURE of the Complainant’s trademark, followed by a typographical error for the abbreviation “ny” for New York, namely “nu” (“u” being next to “y” on a QWERTY or AZERTY keyboard), and is found to be confusingly similar to the Complainant’s trademark.
The Panel finds the disputed domain names to be confusingly similar to the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that it has exclusive rights to use its trademark in the appropriate context and that the Respondent has not been authorised to use it or to register any domain name reflecting the trademark.
It is open to the Respondent to contest the prima facie case made out by the Complainant and to establish rights or legitimate interests in each disputed domain name by demonstrating under paragraph 4(c) of the Policy:
“(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 provisions of paragraph 4(c) of the Policy are without limitation.
The Respondent has not replied and, on the available evidence, the Panel cannot conceive of any way in which the Respondent could have rights or legitimate interests in the disputed domain names that could fulfil the provisions of paragraph 4(c) of the Policy. Accordingly the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that each disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent:
“(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 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 your website or location or of a product or service on your website or location”.
According to the screen captures produced, the disputed domain names have resolved to websites having the appearance of parking pages monetised with links to third party advertisers. The website to which the disputed domain name <signaturenu.com> resolved on April 20, 2020, displayed what were stated to be “related links” in categories such as credit cards and bank loans. On May 8, 2020, the disputed domain name <signaturenybank.com> resolved to a similar website with link headings relating to “photos” and “guitars”.
On the evidence, and in the absence of any alternative explanation from the Respondent, it may reasonably be concluded that the Respondent has been operating a pay-per-click business, in which visitors to the websites of the disputed domain names who click on a link, taking them to an advertiser’s website, thereby generate a fee paid by the advertiser that accrues partly to the Respondent. Since the disputed domain names are derived from the Complainant’s trademark, the likelihood is that at least some visitors would be confused into expecting they would to be taken to the Complainant’s online presence. Regardless that they may soon realise they have been misled, initial interest confusion would already have occurred. Supportive of this conclusion as to the Respondent’s mode of operation is the list of 198 previous cases brought against the same Respondent, involving a larger number of domain names, many being derived from well‑known trademarks. On the balance of probabilities, the Respondent is found to have registered and used the disputed domain names in order to attract Internet users intentionally by confusion with the Complainant’s trademark for the Respondent’s commercial gain, constituting registration and use in bad faith in the terms of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
The Respondent’s failure to reply to the Complainant’s three cease and desist letters and the present proceeding is further supportive of the finding of registration and use of the disputed domain names in bad faith ( WIPO Case No. D2000-1632, Ebay, Inc. v. Ebay4sex.com and Tony Caranci).
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 names <signaturenu.com> and <signaturenybank.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: July 1, 2020