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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Compass Bancshares, Inc. & Compass Bank v. Domain Administration Limited

Case No. D2006-1259

 

1. The Parties

The Complainants are Compass Bancshares, Inc. & Compass Bank, Alabama, United States of America, represented by Welsh & Katz, Ltd, United States of America.

The Respondent is Domain Administration Limited, Auckland, New Zealand.

 

2. The Domain Name and Registrar

The disputed domain name <compasbank.com> is registered with Fabulous.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2006. On September 29, 2006, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On October 3, 2006, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2006.

The Center appointed David Taylor as the sole panelist in this matter on November 16, 2006. 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 first Complainant, Compass Bancshares, Inc, is a financial holding company with US$33.6 billion in assets, making it one of the top 30 bank holding companies by asset size in the United States. The second Complainant, Compass Bank, is its principal subsidiary and currently operates over 400 banking offices in Alabama, Arizona, Colorado, Florida, New Mexico and Texas.

The Complainants own and use more than 45 United States federally registered trademarks containing the term COMPASS, including COMPASS BANK, Registration Number 1,894,329, issued June 26, 1990.

The Complainants also offer online banking services using the domain names <compassweb.com> and <compassbank.com>, registered in 1995 and 1996 respectively.

The Respondent registered the disputed domain name <compasbank.com> on March 3, 2003.

 

5. Parties’ Contentions

A. Complainants

The Complainants contend that:

(i) The disputed domain name is identical or confusingly similar to a trademark in which they have rights.

The Complainants successfully recovered <compasweb.com> in 2003 as a result of a Complaint filed in accordance with the Policy (see Compass Bancshares, Inc., Compass Bank v. toptarget.com BV, WIPO Case No. D2003-0387). In that particular case they argued that the simple deletion of the letter “s” from the Complainants’ domain name was an insufficient alteration to avoid confusion and the Panel agreed, pointing out that this was a typical “typo-squatting” situation.

The Complainants assert that the present case involves a domain name with the exact same alteration and is thus virtually indistinguishable from the previous case decided in the Complainants’ favor.

The Complainants also point out that the substance of the Respondent’s website is likely to further confuse Internet users as to its sponsorship and ownership. This is particularly true given the extensive use of the COMPASS BANK trademark on the Respondent’s website and the untrue indication that the Complainants are sponsoring various hyperlinks.

(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name.

The Complainants point out that the Respondent registered the disputed domain name 7 years after the Complainants registered <compassbank.com>. According to the Complainants, the burden is therefore on the Respondent to demonstrate its rights or legitimate interests.

Upon the Complainants’ information and belief, the Respondent has no rights or legitimate interests in the disputed domain name, nor in any trademarks consisting of the term COMPASBANK in the United States, New Zealand, Australia or any other country. The Respondent is not commonly known by the disputed domain name and apparently offers no goods or services of its own at the website to which the disputed domain name resolves.

Instead the Complainant alleges that the Respondent is using the disputed domain name to divert customers to other websites and mislead the Complainants’ potential and current customers as to the sponsorship and ownership of the Respondent’s website. Previous Panels have found that such activities are sufficient to prove that a Respondent has no rights or legitimate interests in a domain name.

(iii) The domain name has been registered and used in bad faith.

The Complainants underline that paragraph 4(b)(iv) of the Policy states that bad faith is shown where a Respondent attempts to attract and confuse consumers as to the source and sponsorship of their website for commercial gain.

The Complainants assert that internet users who have inadvertently omitted the second “s” in attempting to reach the Complainants’ website will be initially confused as to why they have reached the Respondent’s website. Not only does the Respondent fail to place a disclaimer on its website stating that it is not affiliated with the Complainants, it indicates on the website that certain hyperlinks are sponsored by the Complainants. Furthermore, the Complainants’ COMPASS BANK trademark is prominently displayed upon the website. The Complainants point out that customers are unlikely to be aware that they have made a typographical error and may consequently believe that they have reached a website that is affiliated, sponsored or endorsed by the Complainants.

The Complainant states that the fact that the Respondent is using the website exclusively to redirect customers to other commercial websites, including competitors of the Complainants, suggests that the Respondent is doing so for some commercial benefit. Previous Panels have held that such use is evidence of bad faith registration and use.

The Complainants also put forward the view that an alternative explanation for the Respondent’s activities is that the Respondent is hoping in bad faith to extract an economic benefit in excess of its registration fee by selling the disputed domain name to the Complainants or to the Complainants’ competitors. The Complainant states that this is further evidence of bad faith registration and use according to paragraph 4(b)(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

 

6. Discussion and Findings

Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In the case of default by a Party, Rule 14 states that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainants. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainants to support its contentions.

Paragraph 4(a) of the Policy directs that a Complainant must prove each of the following:

(i) the domain name registered by the Respondent 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 the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

Based on the evidence put forward by the Complainants, the Panel finds that the Complainants have rights in the trademark COMPASS BANK.

The Panel considers that, as previously held in numerous Panel decisions, the generic top level domain suffix “.com” is without legal significance and has no effect on the issue of similarity. Numerous prior Panels have also held that confusing similarity is established by registrants who try to capitalise on common misspellings made by internet users, and the Panel finds that this is the case here as far as the missing “s” is concerned.

On the basis of these considerations, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.

As an aside, the Panel would also add that the Complainants’ assertion that the substance of the Respondent’s website is also likely to confuse internet users is not relevant for the purposes of determining whether the disputed domain name is confusingly similar to a trademark in which the Complainants have rights. The Panel is of the view, as held by the majority of Panels, that the test for confusing similarity should be limited to a comparison of the domain name and the trademark, and whether or not the content of the website is confusing should not be taken into consideration. A user may be confused by the domain name alone and subsequently go to the Respondent’s website, at which point the damage is done and the user may be inadvertently exposed to offensive or commercial content. Therefore the content of a Respondent’s website is of more relevance when it comes to a consideration of the Respondent’s bad faith under paragraph 4(a)(iii) of the Policy, rather than confusing similarity under paragraph 4(a)(i).

B. Rights or Legitimate Interests

The second element that the Complainants must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy). Paragraph 4(c) of the Policy sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name, as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 are making a legitimate non-commercial 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 has considered the evidence put forward by the Complainants and considers that the Complainants have presented a clear prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. As a result of its default, the Respondent has failed to rebut that showing.

In particular the Panel is of the view that redirecting internet users to a website offering various hyperlinks linking to services that are competitive with the Complainants’ services using a confusingly similar domain name to the Complainants’ trademark cannot be considered to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above. Nor can such use be said to be a legitimate non-commercial or fair use of the domain name within the meaning of paragraph 4(c)(iii), as, in the Panel’s opinion, the Respondent is likely earning revenue via “click-through” links and pop-up advertisements.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third element that the Complainants must prove is that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

It should be noted at this point that although paragraphs (i) to (iii) above refer primarily to the act of registration of a domain name and paragraph (iv) refers to use, according to the wording of the Policy, conduct falling into any one of these four circumstances is evidence of bad faith registration and use.

The Complainants make reference to paragraph 4(b)(i) but do not produce any evidence to this effect, only supposition. However, on the basis of the evidence actually put forward by the Complainants, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website, by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

The Panel, therefore, concludes that the Complainants have succeeded in proving that the disputed domain name has been registered and is being used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <compasbank.com> be transferred to the Complainants.


David Taylor
Sole Panelist

Dated: November 24, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1259.html

 

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