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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pinnacle Bancorp, Inc. v. Contact Privacy Inc. Customer 12410527874 / Jason Gibson

Case No. D2021-3641

1. The Parties

Complainant is Pinnacle Bancorp, Inc., United States of America (“United States” or “U.S.”), represented by Baird Holm LLP, United States.

Respondent is Contact Privacy Inc. Customer 12410527874, Canada / Jason Gibson, United States.

2. The Domain Name and Registrar

The disputed domain name <plnnbank.com> (the “Domain Name”) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email to Complainant on November 5, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 10, 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 Respondent of the Complaint, and the proceedings commenced on November 11, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was December 1, 2021. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on December 6, 2021.

The Center appointed Robert A. Badgley as the sole panelist in this matter on December 28, 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

Complainant is a bank based in the state of Nebraska, United States, and has provided banking services in several states since 1999. Today, Complainant operates in eight states.

Since 1999, Complainant has operated a commercial website at the domain name <pinnbank.com> to offer its banking services. Complainant makes no reference to a registered trademark, but asserts that, given its ongoing operation of a commercial banking website at the domain name <pinnbank.com> for 20 years, Complainant has acquired common law trademark rights in PINNBANK.

The Domain Name was registered on June 29, 2021. The Domain Name does not resolve to an active website. Complainant alleges as follows:

“Respondent has conducted fraudulent and unlawful activities using the Domain Name by impersonating Complainant on at least three occasions. For example, Respondent has contacted at least one customer of Complainant, posing as an officer of the Complainant and seeking to obtain the customer’s confidential personal identification number (PIN), through an email address hosted at the Domain Name.”

Complainant also alleges that the contact information provided by Respondent in the WhoIs database is inaccurate, inasmuch as Respondent’s name does not correspond to the given street address, and other information provided by Respondent is identical to information associated with previous Internet scams.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has proven all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has common law rights in the unregistered trademark PINNBANK through its undisputed but plausible assertion of continual use of that mark for more than 20 years (this is corroborated by the “About Us” section on Complainant’s website). The Panel also notes the undisputed assertion that Respondent registered the Domain Name – with the letter “i” replaced by the letter “l” – and used the Domain Name to target specific Complainant customers to perpetrate a fraud scam. As such, the Panel finds that Respondent is in no position to deny that PINNBANK serves at some level as a source identifier for Complainant and its banking services. Respondent registered this Domain Name for precisely that reason.

The Panel notes further that, but for this unintended help from Respondent discussed in the preceding paragraph, the Panel could well have rejected Complainant’s claim to common law trademark rights. The Complaint lacks adequate evidence of use of the alleged mark, even as expressed as part of Complainant’s domain name. The Complaint lacks adequate evidence of the extent of Complainant’s use of that alleged mark, or its degree of recognition as a source identifier among the relevant consuming public. In short, Complainant’s paucity of evidence to support its claimed rights in an alleged trademark nearly fell short of the already low threshold required to satisfy the first element of a claim under the UDRP.

The Panel finds that the Domain Name is confusingly similar to the PINNBANK mark. Again, given the one-letter difference between the PINNBANK mark and the Domain Name, and the fact that a lower-case “i” and a lower-case “I” look very similar (not to mention the fraud perpetuated based on a source-identifying capacity in the claimed mark), the Panel concludes that the Domain Name is confusingly similar to the mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes on this thin, but undisputed and not implausible, record that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not come forward to articulate or prove some bona fide reason for registering the Domain Name. It is undisputed that Respondent has no authority from Complainant to register the Domain Name. It is also undisputed that Respondent provided false contact information in the WhoIs database. Finally, the use of the Domain Name asserted here is Respondent’s use of the confusingly similar Domain Name to send emails to customers of Complainant, wherein Respondent fraudulently tried to impersonate an officer of Complainant and seek personal information from the customers. That is clearly not legitimate.

Complainant has established Policy paragraph 4(a)(iii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The undisputed record here indicates that Respondent registered (under false contact information) the Domain Name, which closely resembles the domain name that Complainant has used for its commercial website for some 20 years, and has used the Domain Name to attempt to impersonate Complainant and perpetrate a fraud on some of Complainant’s customers. That conduct falls within the prohibition of the above-quoted Policy paragraph 4(b)(iv) and thus constitutes bad faith registration and use of the Domain Name.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <plnnbank.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: January 11, 2022

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