WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SouthCrest Bank, N.A. v. VistaPrint Technologies Ltd.
Case No. DCO2015-0009
1. The Parties
The Complainant is SouthCrest Bank, N.A., of Tyrone, Georgia, United States of America ("U.S."), internally represented.
The Respondent is VistaPrint Technologies Ltd., of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <southcrestbank.co> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 2, 2015.
The Center appointed Charles Gielen as the sole panelist in this matter on April 20, 2015. 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 owns rights to the trademarks SOUTHCREST BANK and SOUTHCREST; the latter mark was registered in 2005 with the U.S. Patent and Trademark Office under registration number 3,023,335. The disputed domain name <southcrestbank.co> was created on February 26, 2015.
5. Parties' Contentions
The Complainant contends that it is a well-established financial institution with over 100 years' experience providing commercial, personal, and mortgage banking services to residents of Georgia and Alabama in the U.S. Such services include the provision of checking and savings accounts; offering of commercial and personal consumer loans as well as mortgages; and offering credit and debit card services, investment and other financial services. SouthCrest Financial Group, Inc., parent company of the Complainant, registered and owns trademark rights to SOUTHCREST BANK in the U.S. to identify its banking services, including credit and debit card services, credit and lending services (namely, providing loans and mortgages), and online banking and bill payment services. The Complainant has used the SOUTHCREST trademark continuously for over ten years, well prior to the registration of the disputed domain name.
The disputed domain name resolves to the website "www.southcrestbank.co" which has no active content.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark. Furthermore the Complainant states that the Respondent for a number of reasons does not have any rights or legitimate interests in the name "SouthCrest Bank" that forms the dominant element in the disputed domain name; the Respondent is not known under this name, the Respondent does not own any trademark or other rights in that name and the lack of legitimate interests also follows from that fact that the Respondent hid its real identity when registering the disputed domain name. Finally, the Complainant states that the Respondent registered and uses the disputed domain name in bad faith. Bad faith registration follows from the fact that registration took place a decade after the Complainant first started to use the trademark SOUTHCREST, showing awareness of that mark, and also from the fact that the disputed domain name is almost identical to the domain name of the main business website of the Complainant, "www.southcrestbank.com". Bad faith use follows from the fact that the identity of the Respondent remains unknown and also that the day after the Respondent registered the disputed domain name, it sent an email to an employee of the Complainant, posing as its Chief Financial Officer, requesting the transfer by wire of USD 149,833.00 to an account at a bank in Hong Kong, China.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Panel is of the opinion that the Complainant's contentions are justified and that the disputed domain name should be transferred to the Complainant. The Panel gives the following reasons for its decision, corresponding to the showing the Complainant is required to make under paragraphs 4(a)(i)-(iii) of the Policy.
A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark SOUTHCREST based on a U.S. trademark registration. This trademark is a strong and very distinctive mark; it certainly is not a common term. The disputed domain name contains this trademark as the most dominant part, since the word "bank" is entirely descriptive. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain ("gTLD") suffix ".com" and the country code Top-Level Domain ("ccTLD"), such as ".co", are usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name should be considered confusingly similar to the trademark, in particular also in view of the fact that ".com" is very close to ".co".
B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the distinctive name "South Crest Bank" is not a name one would legitimately choose as a domain name without having specific rights to such a name. The Panel has not been given evidence that the Respondent owns any such rights, so it must be held that such rights do not exist. This name certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the Panel notes that the Respondent has not been granted any rights to use the Complainant's mark as part of the disputed domain name. The fact presented by the Complainant as an indication of lack of rights or legitimate interests, namely that the Respondent tried to hide its real identity by using the services of a privacy shield, is not de facto evidence of a lack of rights or legitimate interests. Although in a number of UDRP cases such private registration services have been held to have been used by bad faith registrants, it does not necessarily mean that the person using a private registration service will lack any rights or legitimate interests in all cases.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith. The Panel recalls first of all that the trademark SOUTHCREST has a strong distinctive character. The trademark was used and registered before the disputed domain name was registered. It must be held that the Respondent knew of the existence of the trademark at the time of its registration, which is reflected by the fact that the disputed domain name contains the full name of the Complainant "SouthCrest Bank." So, the Panel is of the opinion that the registration by the Respondent was made in bad faith.
Also the use of the disputed domain name is bad faith use, which clearly follows from a fraudulent attempt to use the disputed domain name in order to prompt an employee of the Complainant to transfer a significant sum of money by sending an email under the name of the Chief Financial Officer of the Complainant. Bad faith use also follows from the fact that the website associated with the disputed domain name does not show any legitimate offering of goods or services and does not present any other serious activity. Finally, the use of the disputed domain name could result in consumers being deceived or confused as to the origin of the website associated with the disputed domain name.
The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.
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 <southcrestbank.co> be transferred to the Complainant.
Date: April 23, 2015