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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Community Trust Bancorp, Inc. v. Privacy Protect LLC / Kalejaiye Rafiu, rafTechsolutions

Case No. D2021-0397

1. The Parties

The Complainant is Community Trust Bancorp, Inc., United States of America (“United States”), represented by KING & SCHICKLI, PLLC, United States.

The Respondent is Privacy Protect LLC, United States / Kalejaiye Rafiu, rafTechsolutions, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <communitytrustbanking.com> 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 February 9, 2021. On February 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2021, 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. The Center sent an email communication to the Complainant on February 12, 2021 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 February 14, 2021.

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 February 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2021.

The Center appointed Knud Wallberg as the sole panelist in this matter on April 19, 2021. 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 has been providing banking and financial services since 1903 and has used the mark COMMUNITY TRUST to promote its banking and financial services since at least as early as 1995. The Complainant owns various United States registrations for the COMMUNITY TRUST trademark, including registration No. 1,946,537, filed on September 30, 1994, and registered on January 9, 1996 for banking and trust management services and investment and financial management advisory services in International Class 36.

The disputed domain name was registered on December 1, 2019.

The website to which the disputed domain name resolves, is a website that prominently displays the Complainant’s mark throughout the site and a copy of Complainant’s logo and which purports to provide identical banking services.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

The Complainant alleges that the disputed domain name is confusingly similar to the COMMUNITY TRUST mark because it reproduces the mark in its entirety and that the addition of the generic or descriptive term “banking” is insufficient to distinguish the disputed domain name from the COMMUNITY TRUST trademark.

The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s COMMUNITY TRUST mark in any domain name or the registration of a domain name. Furthermore, there is no connection between the parties just as there is no evidence to suggest that the Respondent might be commonly known by the disputed domain name <communitytrustbanking.com>. Also, the Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but rather is attempting to divert the Complainant’s customers or consumers who are seeking the Complainant’s services for the Respondent’s own commercial gain whether through actual services or for nefarious purposes.

The Complainant finally alleges that the Respondent has registered and used the disputed domain name in bad faith. The Complainant thus contends that the Respondent had the Complainant or its mark in mind at the time of registration of the disputed domain name <communitytrustbanking.com> and deliberately registered it in bad faith to take advantage of the Complainant’s rights including the goodwill in the COMMUNITY TRUST mark or for nefarious purpose. Furthermore, the website to which the disputed domain name resolves, is a website that prominently displays the Complainant’s mark throughout the site and a copy of Complainant’s logo and which purports to provide identical banking services, but appears to be used as a phishing site to gather personal and/or proprietary information from the Complainant’s customers by requesting information that could be used to breach the Complainant’s customer’s accounts, including their name, email address, password, phone number and country.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark COMMUNITY TRUST, since the disputed domain name contains this mark in its entirety together with the words “banking”. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and as such they are generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.

B. Rights or Legitimate Interests

It is obvious from the Complaint, that the Complainant has not licensed or otherwise permitted the Respondent to use the trademark COMMUNITY TRUST.

Further, given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this. Furthermore, the way the Respondent is using the disputed domain name, supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name.

Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s 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 trademark 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 the respondent’s 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 holder’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.

Given the circumstances of the case, including the evidence on record of the long time use and of the reputation of the Complainant’s trademark COMMUNITY TRUST and the way the disputed domain name is used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain name in bad faith.

The disputed domain name is used for a website, which, inter alia by reproducing the Complainant’s logo, clearly gives the Internet user the impression that the website is an official website of the Complainant, which is not the case. As indicated by the Complainant it seems more likely than not, that the purpose of the website is to gather personal and/or proprietary information from the Complainant’s customers by requesting information that could be used to breach the Complainant’s customer’s accounts. The Panel therefore finds that the disputed domain name has been and still is used in bad faith to intentionally attempt “to attract, for commercial gain, Internet users to the Respondent’s 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”.

Noting that the disputed domain name incorporates the Complainant’s distinctive and reputed trademark COMMUNITY TRUST and the gTLD “.com”; that the Respondent has not replied to the Complainant’s contentions; and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

7. Decision

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 <communitytrustbanking.com> be transferred to the Complainant.

Knud Wallberg
Sole Panelist
Date: May 6, 2021

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