Emigrant Bank v. Ryan G Foo, PPA Media Services / Whois Privacy Corp.
Case No. D2015-1226
1. The Parties
The Complainant is Emigrant Bank of New York, New York, United States of America, represented by Dorsey & Whitney, LLP, United States of America.
The Respondent is Ryan G Foo, PPA Media Services of Santiago, Chile / Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2015. On July 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 2015, 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 July 22, 2015 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 July 24, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on August 26, 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 is a bank organized and existing under the laws of the State of New York, United States. The Complainant is one of the largest savings banks in the United States. Founded in 1850 by Irish emigrants, the Complainant has approximately $6.2 billion in assets and nearly $1.1 billion in equity capital as of March 31, 2015.
The Complainant is the owner of a number of trademarks registered on the principal register of the United States Patent and Trademark Office (“USPTO”). Those registrations include a mark for EMIGRANT BANK, registered in January 29, 2008. The Complainant’s other marks were variously registered between 2006 and 2009.
The Complainant also owns and operates websites associated with the domain names and which incorporate the EMIGRANT mark. The Complainant uses those domain names to host websites that offer online banking services and related information.
As noted in the Complaint (and set out further below), the Respondent has been a serially unsuccessful respondent in disputes under the Policy.
The Registrar, in its confirmation of the registration details, notified that it was not able to confirm when then disputed domain name was first registered by the Respondent. Evidence attached to the Complaint indicated that the disputed domain name has a “creation date” of September 19, 2002.
5. Parties’ Contentions
The Complainant provides evidence of its registered marks. The Complainant also claims to own common law rights in a number of other marks, such as EMIGRANT ONLINE, EMIGRANT CAPITAL, and EMIGRANT FINANCIAL SERVICES. The Complainant says that it has used at least one of the EMIGRANT marks since as early as 1850.
The Complainant claims that the disputed domain name is relevantly identical to its EMIGRANT BANK mark.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no authorized the Respondent to use its mark. The Respondent has made no bona fide use of, and is not commonly known by, the disputed domain name.
Secondly, the Complainant claims that the Respondent currently uses the disputed domain name as part of a scheme to deceive users into believing that their systems are infected to sell those users unneeded products or services. When users try to access the disputed domain name, they are routed to a webpage that sounds a loud alarm and displays a warning purporting to be from Norton Antivirus regarding infection of the users’ system. When users try to navigate away from such page, persistent pop-up windows appear directing them to call a phone number to address the problem. When users call the provided phone number, they are offered unnecessary products or services, ostensibly to fix the purported infection detected by Norton Antivirus. The Complainant provides supporting evidence of a copy of the Respondents’ website at the disputed domain name. The Complainant says that such use is commercial, and it does not constitute fair use or any bona fide offering of services.
The Complainant says that the Respondent has registered the disputed domain name without any bona fide basis for such registration in an attempt to unfairly trade on the goodwill of the Complainant’s well-known EMIGRANT Marks. It is inconceivable that the Respondent registered a domain name containing the Complainant’s EMIGRANT BANK mark without the intent of capitalizing on the goodwill the Complainant owns in that mark. The scheme deployed at the Respondent’s website bears no relationship to anything communicated by the disputed domain name itself. As such, the only plausible explanation for the Respondent’s selection of the disputed domain name is that the vast goodwill associated with the Complainant’s marks would drive traffic to the Respondent’s scheme.
The Respondent (Ryan G Foo) is a frequent and pervasive cybersquatter who has a pattern of abusive domain name registrations. The Respondent has been the subject of numerous UDRP complaints, both before WIPO and the National Arbitration Forum (the “Forum”). Panels have found that evidence of previous UDRP cases ordering the transfer of a disputed domain name away from the stated respondent indicates bad faith use and registration under paragraph 4(b)(ii) of the Policy. The Complainant provides evidence from WIPO’s website showing 30 UDRP decisions in which the Respondent has been involved. In each of the 30 cases, the Respondent was ordered to transfer the disputed domain names at issue to the respective complainant. The Complainant also provides evidence of 112 Forum decisions in which the Respondent has been involved. In 110 of the 112 cases, the Respondent was ordered to transfer the disputed domain names at issue to the respective complainants. The two cases decided in the Respondent’s favor were based on (i) a complainant’s lack of trademark rights and (ii) a failure to allege that the Respondent was generating revenue by creating confusion in the marketplace. Neither of these circumstances applies to the present case, as the Complainant has demonstrated trademark rights in its EMIGRANT marks and the Respondent’s registration and use of the disputed domain name to generate revenue based on confusion with the Complainant’s EMIGRANT marks.
Thirdly, the Complainant says that the Respondent registered and has used the disputed domain name in bad faith. The Respondents use the website “www.emigrantbank.com” solely to deploy a scheme directing users to purchase unneeded products and services. Under these circumstances, there can be no question that the primary reason the Respondent registered and use the disputed domain name is to free ride on the vast goodwill associated with the Complainant’s well-known EMIGRANT marks and divert Internet traffic intended for the Complainant’s websites. Further, the Respondent’s bad faith registration and use of the disputed domain name is demonstrated by his use of a proxy service to conceal his identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove 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 was registered and is being used in bad faith.
These elements are discussed as follows.
A. Identical or Confusingly Similar
Rights in a mark
Under paragraph 4(a)(i) of the Policy, the first thing a complainant must show is that it has rights in a trademark. The Complainant has provided evidence of its registered rights in EMIGRANT BANK and so has established that it has rights for the purpose of paragraph 4(a)(i) of the Policy. The Complainant’s registration for that mark refers to a claimed first use in commerce from apparently 1850.
The Complainant also makes claims of common law rights in other marks such as EMIGRANT ONLINE, EMIGRANT CAPITAL, and EMIGRANT FINANCIAL SERVICES. The Complainant makes no explicit claim to having common law rights in the mark EMIGRANT BANK. The Complainant also vaguely refers to having used “at least one” of its marks since 1850 – although it does not specify which one. While these various claims are not relevant to the issue of whether the Complainant has rights in a mark, they relate directly to the Complainant’s claims of bad faith (discussed further below).
Despite saying it has been in business since 1850, the Complainant provides no direct evidence of its claimed common law rights, beyond referring to some limited information on its own website.
The overall consensus of UDRP panel opinion on what needs to be shown for the complainant to successfully assert common law or unregistered trademark rights is summarized in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition…However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required...”
The Complainant provided little evidence of this kind.
Given the limitations of the Complainant’s evidence, a key issue in this case is whether the Complainant has common law rights in its EMIGRANT BANK mark. The Complainant has made a borderline case. But on balance the Panel is prepared to accept that the Complainant has the common law rights its claims. This is for the following reasons:
Firstly, the Complainant has averred that it has a long history of using its EMIGRANT BANK mark, and other marks including the “emigrant” term, in connection with a substantial financial services business. These claims have not been disputed by the Respondent.
Secondly, a simple Google search for “Emigrant Bank” provides substantial references to the Complainant’s long standing business (However there is some ambiguity about when the Complainant first started using the EMIGRANT BANK mark. The Complainant’s own evidence suggests that it uses various marks, and was known as the Emigrant Savings Bank.) .
Thirdly, the Respondent has a substantial history of targeting trademark owners. The attractiveness of the Complainant’s mark in this connection itself suggests it has a significant commercial reputation that has some value as a target for cybersquatting.
For these reasons, the Panel finds that the Complainant has established both registered and unregistered rights in its EMIGRANT BANK mark.
Identical or confusingly similar
Having established that it has rights in a mark, the next question is whether the disputed domain name is identical or confusingly similar to that mark. In deciding whether the disputed domain name is identical or confusingly similar to this mark, it is well-established that the generic Top-Level Domain (“gTLD”) “.com” extension may be disregarded. If that extension is disregarded, the disputed domain name is relevantly identical to the Complainant’s EMIGRANT BANK mark.
For these reasons, the Panel finds that the Complainant has established that the disputed domain name is identical to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The next issue which the Complainant must establish is that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has established a prima facie case against the Respondent. The Respondent has a substantial history of cybersquatting.
Paragraph 4(c) of the Policy sets out defenses which may provide evidence of a right or legitimate interest. The Respondent provided no evidence of having such rights or legitimate interests in the disputed domain name. Neither was there evidence in the case file to suggest such a right or legitimate interest. For these reasons, the Panel finds that the Complainant has established its case under this element of the Policy.
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s registered trademark rights and reputation. See e.g., SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734.
At this point, the Complaint faces a difficulty. The nature of this difficulty is relevantly described in the WIPO Overview 2.0 as follows:
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
What this means is that, normally speaking, bad faith cannot be found where a domain name is registered before a mark.
The Complainant’s evidence is that the earliest of its registered marks date from 2006. The WhoIs details for the disputed domain name (including those details as attached to the Complaint) indicate that the disputed domain name was created in 2002. The case file, including the WhoIs details confirmed by the concerned Registrar, does not clearly indicate when the disputed domain name was registered by the Respondent. However the creation date indicates that it is plausible that the Respondent registered the disputed domain name as early as 2002 – before the Complainant’s registered its marks with the USPTO. This means that the Complainant has provided insufficient evidence to establish bad faith based on the Complainant’s registered trademarks.
This case therefore turns on the question of whether the Complainant can rely on its unregistered marks. As noted above, the Panel considers there is sufficient (albeit borderline) evidence that the Complainant has unregistered rights in its EMIGRANT BANK trademark. However the Complainant’s evidence is vague as to when these rights arose. The Complainant refers to having being in business since 1850, but does not articulate which of its current marks (if any) were used from that time. Despite this, the Panel considers that there is sufficient evidence that the disputed domain name was registered, and has subsequently been used, in bad faith.
The evidence strongly suggests that the Respondent was motivated to register the disputed domain name because of its association with the Complainant, and to divert Internet users to a website advertising antivirus products unrelated to the Complainant or banking services. The Complainant appears to be a well-known commercial entity. There is no apparent explanation for the Respondent to choose the disputed domain name other than because of its obvious association with the Complainant. Necessarily, that association must have pre-dated the Respondent’s registration of the disputed domain name for it to have been a motivating factor. The Respondent does not appear to be known by the disputed domain name, or otherwise have some legitimate connection with the EMIGRANT BANK mark. Rather, the Respondent has a long history of cybersquatting and targeting pre-existing trademarks for that purpose.
In these circumstances, the Respondent’s use of a privacy service reinforces a conclusion of bad faith. The Respondent is a serial cybersquatter. Having regard to this, and the nature of the Respondent’s website, the Panel considers there is a reasonable inference that the Respondent has sought to conceal his identity to shield or delay proceedings against him under the Policy.
For these reasons, the Panel finds that the disputed domain name was registered and has been 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, , be transferred to the Complainant.
James A. Barker
Date: September 8, 2015