WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Evergreen Federal Bank v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Oga TcN

Case No. D2021-2961

1. The Parties

The Complainant is Evergreen Federal Bank, United States of America (“United States”), represented by 101domain.com, United States.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Oga TcN, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <evergreenfb.online> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 September 14, 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 amendment to the Complaint on September 21, 2021.

The Center verified that the Complaint together with the amendment to 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 September 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2021.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 4, 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 is a mutual financial institution with a place of business in Grants Pass, Oregon, United States. Originally established in 1934, the Complainant has built its brand around its EVERGREEN trademark, including promoting several of its online banking services under this term. The Complainant maintains several “.bank” domain names, including <evergreen.bank>.

The Complainant owns Oregon State Trademarks no. 43016 for the word mark EVERGREEN, no. 43017 for the word mark EVERGREEN FEDERAL BANK, and no. 43018 for the stylized word mark EVERGREEN FEDERAL BANK, with the word EVERGREEN in larger size font above the words FEDERAL BANK and with the bottom portion of the first letter “R” of EVERGREEN extending below the rest of the word in the shape of a branch of a pine tree. Each of said marks was filed on November 29, 2013.

The Complainant asserts that it has established common law trademark rights in the EVERGREEN trademark since 1976.

The disputed domain name was registered on January 8, 2021. According to screenshots produced by the Complainant, the website associated with the disputed domain name originally featured a cloned copy of the Complainant’s website, which reproduced the name of the Complainant’s president, along with his personal message. The Complainant’s representative made a copyright complaint to the Registrar and to a web hosting company concerning the website at the disputed domain name on July 22, 2021. Following such complaint, the website associated with the disputed domain name was taken down and no longer resolves.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

Identical or confusingly similar

The disputed domain name is identical or confusingly similar to the Complainant’s EVERGREEN registered trademark. The Complainant has added “fb” to EVERGREEN as a short form for “Federal Bank”. The first use date of the Complainant’s EVERGREEN Oregon State trademark is 1976. The Complainant has consistently used the EVERGREEN mark since 1976, establishing unregistered trademark rights in addition to its Oregon State trademarks. The Complainant has multiple banking products devoted to the trademark and maintains relevant domain name variations upon the EVERGREEN mark.

The Respondent has actively sought to cause confusion in the online banking marketplace by displaying a website directly copied from the Complainant’s main website, including the name and image of the Complainant’s president. Said website was published for nefarious financial purposes. The Respondent is aware of the Complainant’s company, brand and services. The attempt to impersonate these demonstrates an intention to create confusion.

Rights or legitimate interests

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or allowed the Respondent to use its EVERGREEN trademark for any purpose. The Complainant has made a copyright complaint to the Registrar of record and to the hosting provider. The content of the Respondent’s website was removed shortly thereafter. The Complainant believes that the Respondent has no registered trademarks corresponding to the term EVERGREEN and was trading on the Complainant’s goodwill for wrongful profit or collection of sensitive consumer information. The Respondent is not commonly known by the disputed domain name, nor is it making a legitimate noncommercial or fair use thereof. The disputed domain name was registered primarily to disrupt the Complainant’s business in an intentional imitation of the Complainant’s website. There is no evidence of the Respondent’s use, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

Registered and used in bad faith

The Respondent has fraudulently registered and used the disputed domain name to confuse customers who associate the EVERGREEN brand with the Complainant. Such registration and use of the disputed domain name comes decades after the Complainant’s first use of its mark and continuously prevents the Complainant from reflecting its mark in the corresponding domain name. The disputed domain name misleads the Complainant’s customers into believing that the banking products and services displayed on the associated website are associated with the Complainant and disrupts the Complainant’s business. Given the Respondent’s blatant knowledge of the Complainant’s products and brand, it is clear that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first element analysis under the Policy has two main steps. First, the Complainant must demonstrate that it has UDRP-relevant rights in a trademark. Secondly, the disputed domain name is compared with such trademark, typically on a straightforward side-by-side basis, in which the generic Top-Level Domain (“gTLD”) of the disputed domain name concerned (in this case “.online”) is usually disregarded as being required for technical reasons only. Confusing similarity may be found if the trademark is recognizable within the disputed domain name concerned, whether or not accompanied by other terms.

In the present case, the Complainant has put forward its Oregon State registered trademarks along with a claim to unregistered trademark rights in support of its submission that it has UDRP-relevant rights in a trademark. On the subject of State registered trademarks, section 1.2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes: “When considering UDRP standing, panels tend to carefully review certain types of automatic/unexamined registered trademarks such as US state registrations (as opposed to US federal registrations); these are not accorded the same deference and may not on their own satisfy the UDRP’s “rights in a mark” standing test”.

As far as the Panel can tell, the Complainant’s trademarks were granted on their original date of application and were subject to no substantive examination. This would suggest that they may not on their own satisfy the UDRP’s standing test. The approach taken by previous panels under the Policy in this particular situation is to consider whether or not a complainant may be able to support a claim to unregistered trademark rights in order to supplement the State registered trademark(s) which it has put forward (see, for example, the panel’s discussion on the first element test in Mark Guagliardo v. Eric Wu a/k/a “Mark Guagliardo”, WIPO Case No. D2017-2089).

With regard to the Complainant’s claim to unregistered trademark rights in the present case, the Panel notes that very limited supporting evidence has been provided in the Complaint (see, for example, section 1.3 of the WIPO Overview 3.0 for the types of evidence generally required to establish an unregistered mark for the purposes of the Policy). The Complaint consists of conclusory allegations of unregistered rights, which, even if undisputed here, would not normally suffice to show secondary meaning on their own. Nevertheless, the Panel considers that the Complainant has managed to establish unregistered rights in its EVERGREEN mark, if only just passing the requisite threshold, on the following basis. First, the Complainant notes that it is a financial institution which was originally established in 1934. This suggests a business of a longstanding nature. Secondly, the Complainant places the content of its website into evidence, from which it may be seen that, at least according to its own self-published material, the Complainant is a financial institution of some substance, with assets of more than USD 579 million and over USD 127 million in mortgage lending. From said website, the Complainant appears to the Panel to maintain all the typical features of a bank, such as branches, business and personal services, and a United States routing number. If the Complainant has traded to this extent as a bank under the name “Evergreen” in one form or another over a reasonably lengthy period, it is reasonable to infer that it has established a secondary meaning in that term.

With a view to assessing whether there would be publicly available independent support for the Complainant’s evidence, the Panel determined to carry out limited factual research by visiting the public database of the Federal Deposit Insurance Corporation (“FDIC”), an independent agency established by the United States Congress with the mandate to examine and supervise United States financial institutions and to insure their deposits. Not only does the Complainant appear on the FDIC’s public database, but the relevant entries also confirm that the Complainant was established as “Evergreen Federal Savings and Loan Association” on June 1, 1934 and changed its name to “Evergreen Federal Bank” on July 21, 2011. The site specifies that the Complainant has been FDIC insured since November 5, 1934. Additionally, the public database featured a link to the website for the Federal Financial Institutions Examination Council (“FFIEC”) which itself confirmed the Complainant’s status and date of establishment within its own database, albeit with a different date for its change of name, being January 16, 2008. With regard to the Panel conducting limited factual research into matters of public record, such as consulting online public databases, see section 4.8 of the WIPO Overview 3.0. Finally, the Complainant demonstrates that it is the registrant of various “.bank” domain names and the Panel is aware from its own knowledge that such registrations undergo a validation process whereby the registry requires to be satisfied as to the nature of the applicant institution on the basis of the registry’s eligibility criteria.

On the basis of the above, the Panel finds that the mark EVERGREEN has become, through long use and official recognition in the field of regulated financial services in the United States, a distinctive identifier which consumers are likely to associate with the Complainant’s services. For completeness, the Panel notes that the Complainant provides evidence indicating that the Respondent has used the disputed domain name to pass itself off as the Complainant, by way of a cloned website, and that common law protection generally is recognized in connection with the tort of passing off (see Mark Guagliardo v. Eric Wu a/k/a “Mark Guagliardo”, supra, and section 1.3 of the WIPO Overview 3.0). While the Panel has reached its finding on the Complainant’s rights in its trademark partly on the basis of the Complainant’s website and partly on the strength of its own research, the Complainant should bear in mind that not all panels would have undertaken the additional research which the Panel determined to carry out in this case. Without this, the Complainant came close to a failure to prove its case on the basis of the threshold element. The Complainant would do well to provide fuller evidence along the lines indicated by section 1.3 of the WIPO Overview 3.0, without relying predominantly on conclusory allegations of unregistered rights, in any future proceedings under the Policy.

Turning briefly to the comparison process, the Panel notes that the Second-Level of the disputed domain name is alphabetically identical to the Complainant’s EVERGREEN mark together with the letters “fb”. These letters are of no distinguishing value, and the Complainant’s mark remains fully recognizable in the disputed domain name, whether or not the value of the additional letters as a short form of “Federal Bank” is factored into the equation. In failing to file a Response, the Respondent has not opposed the Complainant’s case as regards the first element assessment.

In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and therefore that the Complainant has carried its burden in respect of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in each disputed 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Complainant has not licensed or permitted the Respondent to use its EVERGREEN trademark, that the Respondent is believed to have no corresponding registered trademarks, that the Respondent is not commonly known by the disputed domain name, nor is it making a legitimate noncommercial or fair use thereof. Furthermore, the Complainant provides evidence indicating that the disputed domain name was used for a website which cloned the Complainant’s site, presumably with a view to unlawfully obtaining the credentials of the Complainant’s customers or otherwise confusing such customers into believing that such site was owned or operated by the Complainant. Either the Registrar, or the hosting company, or both have accepted the Complainant’s copyright claim in this regard and have disabled the disputed domain name. Use of the disputed domain name in the manner adopted by the Respondent would not confer any rights or legitimate interests upon it.

In the above circumstances, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might have in the disputed domain names. The Respondent has remained silent and has not engaged with the present proceeding. There are no submissions or evidence available which might have supported any claim of rights or legitimate interests in respect of the disputed domain names. Furthermore, the Panel has not been able to determine any likely rights or legitimate interests which the Respondent might have claimed had it participated in the administrative proceeding.

In all of these circumstances, the Panel finds that the Complainant has carried its burden in terms of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 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.”

In the present case, the Complainant’s submissions largely focus on paragraph 4(b)(iv) of the Policy. The Complainant notes that the Respondent reproduced a copy of the Complainant’s website at the disputed domain name which misleads the Complainant’s customers into believing that the banking products and services displayed there are associated with the Complainant. It is clear from the evidence on the record that the Respondent was aware of the Complainant’s longstanding rights in the EVERGREEN mark and was intent upon deliberately targeting these for its own commercial gain when it registered and used the disputed domain name.

The disputed domain name appears to have been registered and used in connection with the creation of a copy of the Complainant’s website in order to cause the Complainant’s customers to believe that they were dealing with the Complainant when they were not. Registration and use of a domain name for the purpose of cloning an authorized financial services firm for fraudulent purposes is manifestly considered evidence of bad faith under the Policy (see, for example, N. M. Rothschild & Sons Limited v. Kevin Sweeney, Kevin Sweeney Design, WIPO Case No. D2020-1248 and Comerica Bank v. Abdul Bhuiyan, ABD, WIPO Case No. D2021-1208).

Despite the fact that serious allegations of illegal conduct have been levelled at the Respondent in this particular case, it has decided not to engage with the administrative proceeding. It has therefore provided no evidence of any good faith motivation in connection with the registration and use of the disputed domain name nor any other explanation for its conduct. The Respondent’s failure to answer such allegations can be considered as an indication of registration and use in bad faith in its own right (see, for example, Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007).

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <evergreenfb.online> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: November 18, 2021