WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amscot Corporation v. Li Jiang
Case No. DCO2018-0001
1. The Parties
The Complainant is Amscot Corporation of Tampa, Florida, United States of America (“United States”), represented by Trenam Kemker, United States.
The Respondent is Li Jiang of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <amscot.co> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2018. On January 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2018.
The Center appointed Alejandro Garcia as the sole panelist in this matter on February 16, 2018. 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
A. The Complainant
The Complainant is well-known player in the financial services sector, in particular in relation to its wire transfer and money order services, including in Europe and the United States.
B. The Complainant’s Trademarks
The Complainant owns several trademarks AMSCOT, including for example, the United States trademark No. 2889003 (registered on September 28, 2004), the Canadian trademark No. 1189840 (registered on October 24, 2005) and the European Union trademark No. 003389657 (registered on January 18, 2005) protecting, among others, services in classes 35 and 36 (including, inter alia, financial services). These registrations predate the registration of the disputed domain name.
C. The Complainant’s Domain Name
According to the WhoIs database, Amscot Financial, which the Panel assumes is related to Amscot Corporation, registered the domain name <amscot.com> on December 26, 1995, thus also predating the registration of the disputed domain name.
D. The Respondent
The Respondent did not participate in these proceedings. The disputed domain name was registered on July 23, 2017 and resolves to a website that contains pay-per-click (“PPC”) links relating to financial services.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant states that the disputed domain name is identical or confusingly similar to the trademark AMSCOT, in respect of which it has rights.
In addition, the Complainant argues that it uses its trademark AMSCOT internationally, especially in respect of class 36 services, those related to financial services.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Moreover, according to the Complainant, the Respondent does not have any kind of authorization from it to offer the same services offered by the Complainant under the trademark AMSCOT.
Registered and Used in Bad Faith
In this respect, the Complainant argues that the disputed domain name has been registered and is used in bad faith. In particular, it argues that the Respondent registered the disputed domain primarily for the purpose of attracting, for commercial gain, Internet users to the Respondent’s website by making them believe that this is related to the Complainant’s activities and services. In particular, the Complainant adds that the Respondent is funneling website visitors to direct competitors of the Complainant in the area of cash advances and pay day loans. Thus, the Complainant submits that the Respondent is “piggybacking” on the value of its brand and the consumer recognition of the trademark AMSCOT.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (in this case, the Complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the domain name holder 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
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided uncontested evidence to establish that he has rights over the trademark AMSCOT. The Panel also notes that the term “amscot” is contained in the trade name of the Complainant.
The disputed domain name consists of the whole of the Complainant’s trademark AMSCOT alongside the country code Top-Level Domain (“ccTLD”) “.co”. The ccTLD is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Panel therefore finds that paragraph 4(a)(i) has been satisfied based upon the disputed domain name being identical to the Complainant’s trademark AMSCOT.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name:
“(i) before any notice […] of the dispute, [the respondent’s] 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) [The respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [The respondent is] 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.”
In this case, the Complainant’s (uncontroverted) evidence shows that the disputed domain name has resolved to a website which apparently offers PPC links to the websites of companies who compete with the Complainant.
Furthermore, on the basis of the evidence before it, the Panel concludes that the Complainant has made a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and that none of the circumstances set out in paragraph 4(c) of the Policy apply. The Respondent has not rebutted the Complainant’s contentions. Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent] registered or […] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant [the owner of the trademark or service mark] or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [circumstances indicating that the respondent] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [circumstances indicating that the respondent] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) [circumstances indicating that the respondent is using the domain name to] intentionally attempt to attract, for commercial gain, Internet users to its 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 [the respondents’] web site or location or of a product or service on its website or location.”
On the basis of the evidence before it and in particular the fact that the disputed domain name resolved to a website that offered PPC links relating to financial services and redirecting users to competitors of the Complainant, the Panel finds that the Respondent has engaged in bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy. In turn, on the basis of this finding, the Panel concludes that the disputed domain name has been registered and is being used 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, <amscot.co>, be transferred to the Complainant.
Date: February 26, 2018