WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FineMark Holdings, Inc. v. Tanner Mayo
Case No. D2021-3724
1. The Parties
The Complainant is FineMark Holdings, Inc., United States of America (“United States”), represented by Hahn Loeser & Parks LLP, United States of America.
The Respondent is Tanner Mayo, United States of America.
2. The Domain Name and Registrar
The disputed domain name <finemarkbanks.com> (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 9, 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 communication to the Complainant on November 15, 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 November 29, 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 December 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.
The Center appointed Ellen B Shankman as the sole panelist in this matter on January 14, 2022. 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 date of the Domain Name registration is February 8, 2018.
The Complainant claims that it has made extensive use of its Marks since at least March 1, 2007 in connection with, among other things, banking, financial, investment, and trust services. Additionally, since at least February 16, 2007, the Complainant has advertised its goods and services offered under the FINEMARK mark on its website at “www.finemarkbank.com”.
The Complainant is the owner of numerous United States trademark registrations, including for FINEMARK, FINEMARK FINANCIAL SERVICES and FINEMARK NATIONAL BANK & TRUST. The Panel notes the relatively bare bones information provided and would prefer to see a more robust Complaint and evidence provided. Notwithstanding, the Panel was able to ascertain that the trademarks were registered as follows: United States Registration No. 5, 279, 470 for FINEMARK, registered on September 5, 2017 and United States Registration No. 3, 570, 323 for FINEMARK NATIONAL BANK & TRUST, registered on February 3, 2009.
The Panel’s independent review confirmed that the Domain Name resolves to a parking page with “Pay-Per-Click” (“PPC”) links, inter alia, to on-line banking and business loans – that are within the business purview of the Complainant.
5. Parties’ Contentions
The Complaint alleges that the Complainant's services are well known throughout the United States as the Complainant offers a comprehensive array of banking, trust, and investment offerings. The first FineMark National Bank & Trust was opened in Fort Myers, Florida, United States, in 2007, and, since that time, the Complainant has opened offices throughout Florida, Arizona, and South Carolina.
The Complainant argues that the Domain Name is confusingly similar to the Complainant's trademark and is nearly identical to the Complainant's domain name. The Domain Name registered by the Respondent, uses the Complainant's identical FINEMARK mark in the Domain Name in association with the word “banks” which directly relates to the Complainant's services. Additionally, the registration of the Domain Name is a clear case of typosquatting, in that the Respondent is attempting to capitalize upon an Internet user's typographical error in adding an “s” to the Complainant's domain name. This is evidence that the Respondent's registration of the Domain Name is designed to confuse.
The Complainant contends that when attempting to visit the website located at the Domain Name, a message appears that the Domain Name is parked, and a variety of links are shown. The practice of parking a domain name does not, in itself, establish any right or legitimate interest in the Domain Name by the Respondent. Additionally, as this case involves typosquatting, this is further evidence of the Respondent lacking any rights or legitimate interests in the Domain Name. The Respondent has registered and is using the Domain Name in bad faith, in order to intentionally attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and of content represented on or through the Respondent's website. At the time the Domain Name was registered, the Respondent had constructive knowledge of the Complainant's trademark registrations under United States trademark law. Additionally, as this is a typosquatting case, this is per se evidence of the Respondent's bad faith.
To summarize the Complaint, the Complainant is the owner of registrations for the trademark FINEMARK, in respect of financial and banking services. The Domain Name is confusingly similar to the trademark owned by the Complainant. By registering the Domain Name that incorporates the trademark in its entirety with the the addition of the word “banks” or arguably just the letter “s” and the “.com” generic Top-Level Domain (“gTLD”), the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, and shows that the Respondent was familiar with the Complainant’s mark and goods and services. The slight changes do not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(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;
(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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the supported facts regarding the use and reputation of the Complainant’s mark taken from the Complaint are generally accepted as true in the circumstances of this case.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has proven that it has registered trademark rights for FINEMARK.
Further, the Panel finds that the Domain Name integrates the Complainant’s mark and that the Domain Name is confusingly similar to the Complainant’s trademark. The Panel finds that the addition of the term “banks” or alternatively the addition of the letter “s” alone in the Domain Name does not change the overall impression that the trademark of the Complainant is recognizable, and it does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.
The Panel agrees with the Complainant’s contention that the Domain Name is a prototypical example of typosquatting – which intentionally takes advantage of Internet users that inadvertently type an incorrect address – often a misspelling of the complainant’s trademark – when seeking to access the trademark owner’s website. This means that a deliberate misspelling of a trademark registered as a domain name, which is intended to confuse Internet users, must be confusingly similar by design. This is consistent with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, whichstates that “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not commonly known by the Domain Name, does not have permission to use the Complainant’s mark, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent knew about the Complainant in choosing the Domain Name. The Panel is persuaded that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand. In light of and on balance of the facts set forth within this Complaint, the Panel finds that it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel agrees with the Complainant’s contention that indeed, the Respondent’s purpose in registering the Domain Name was probably to capitalize on the reputation of the Complainant’s trademark.
WIPO Overview 3.0, section 3.1.4 states “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.
Although not prepared to declare the Complainant’s trademark as “famous” or “widely-known” in the absence of evidence as such, the Panel’s view is that, when considering the balance of probabilities, it is more likely than not that the Respondent not only had actual knowledge of the Complainant’s trademarks and that registration of the Domain Name would be confusingly similar to the Complainant’s trademarks, but that the use was intended to take advantage of the reputation of the Complainant.
In addition, the Panel believes that the Respondent’s website featuring links to third-party websites that appear to create revenue for the Respondent (PPC links) using a confusingly similar domain name is also evidence of and supports a finding of registration and use in bad faith. See WIPO Overview 3.0, section 3.5 (“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”). See also PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162 (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith”).
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the use of the Domain Name for commercial gain, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) of the Policy.
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 <finemarkbanks.com> be transferred to the Complainant.
Ellen B Shankman
Date: January 28, 2022