WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prime Meridian Bank v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Charles Evwiayibu, Chaliz System Nig. Coy.
Case No. D2021-3265
1. The Parties
The Complainant is Prime Meridian Bank, United States of America (the “United States” or “U.S.”), represented by Hollimon, P.A., the United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf. Iceland / Charles Evwiayibu, Chaliz System Nig. Coy., Nigeria.
2. The Domain Name and Registrar
The disputed domain name <primemeridianbk.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2021. On October 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 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 October 7, 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 October 7, 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 October 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 14, 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 in this administrative proceeding is a corporation based in Florida, U.S.
The Complainant hosts its main website at the domain name <primemeridianbank.com>, created in 2007.
The Complainant is inter alia the owner of Florida State trademark registration for PRIME MERIDIAN BANK Reg. No. T15000000428, registered on April 21, 2015, for banking services (first use in commerce May 22, 2008) and U.S. trademark registration No. 5090090 for a stylized globe design, registered on November 29, 2016, for banking services (first use in commerce December 15, 2007).
The Complainant has also filed U.S. trademark application for PRIME MERIDIAN BANK and design, No. 90503796, on February 2, 2021 (first use in commerce May 22, 2008).
On the Respondent’s website, the trademark and logo of the Complainant are displayed. In addition, it appears from the content published on several pages of this website that the Respondent is presenting itself as the Complainant.
The disputed domain name was registered on March 31, 2021.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
Specifically, the Complainant has asserted that the Respondent is using the disputed domain name for a website designed to mimic the Complainant’s website in an effort to confuse the Complainant’s customers and pass itself off as the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(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 Complainant has established unregistered trademark rights in the PRIME MERIDIAN BANK mark by virtue of its long-standing use evidenced in the Complaint. For purposes of the Policy, the Complainant’s pending U.S. trademark application would not by itself establish trademark rights. Similarly, the Complainant’s trademark in the state of Florida, U.S., may not on its own satisfy the Policy’s standing test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.1.4 and 1.2.2.
The disputed domain name combines the first two words of the Complainant’s trademark, i.e. “prime” and “meridian” with the letters “bk” (instead of “bank”). This Panel agrees with the Complainant’s assertion that this difference does not prevent the confusing similarity between the Complainant’s PRIME MERIDIAN BANK trademark and the disputed domain name.
In fact, this Panel believes that this is a clear case of typo-squatting, where the Respondent has purposely registered a slight variation of the Complainant’s trademark in order to confuse Internet users and particularly the Complainant’s (current and/or potential) customers. This finding is reinforced given the Complainant’s use of the domain name <primemeridianbank.com> and the targeting nature of the content at the Respondent’s website. See section 1.15 of the WIPO Overview 3.0, which states in relevant part, “[i]n some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears [prima facie] that the respondent seeks to target a trademark through the disputed domain name”.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the PRIME MERIDIAN BANK trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “Primary meridian bk” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark.
Furthermore, the Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent is in fact using the disputed domain name for a website designed to mimic the Complainant’s website, and where the Complainant’s trademarks and logo are also displayed. Panels have categorically held that the use of a domain name for illegal activity, such as this instance of impersonation, can never confer rights or legitimate interests on a respondent. See section 2.13 of the WIPO Overview 3.0. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not formally replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
The Complainant has documented that the Respondent, in particular by displaying the Complainant’s trademark and logo, as well as by providing the Complainant’s PO box mailing address on the website corresponding to the disputed domain name, has tried to mimic the Complainant’s website and to pass itself off as the Complainant. Exercising its general powers under paragraphs 10 and 12 of the Rules, the Panel has used the “Internet Archive Wayback Machine”, which demonstrates that the Complainant’s domain name <primemeridianbank.com> hosted an active website featuring its PRIME MERIDIAN BANK trademark and stylized glob design at least 13 years prior to the registration of the disputed domain name.
These elements are, in the Panel’s view, sufficient to show that the Respondent knew of the Complainant and of the PRIME MERIDIAN BANK mark and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name.
The Panel finds that the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under the Policy.
The Panel has also noted that as pointed out by the Complainant the same individual identified as the Respondent’s “Chief Executive Officer/Managing Director” appears to have the same capacity on another 59 bank websites. According to the assertions made by the Complainant and not refuted by the Respondent, all of these 59 bank websites are functionally identical, using the same photographs and text, just changing a few details such as location address and contact phone number.
The Panel on the basis of the above shares the same view as the Complainant, that the Respondent is engaged in a pattern of bad faith registrations characterized by systematic typo-squatting.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
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 <primemeridianbk.com> be transferred to the Complainant.
Date: November 28, 2021