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September 28, 2016 / Nate Harris

Dollar Bank recovers BITDOLLARBANK.COM

Summary of Dollar Bank, Federal Savings Bank v. Thomas Pillsworth, BTCNYEX

(WIPO Case No. D2016-1403)

Filed: July 8, 2016; Decided: September 7, 2016 (Panelist: Richard W. Page)

Disputed domain name: <bitdollarbank.com>

screen-shot-2016-09-25-at-8-28-54-pm

Screentshot of <bitdollarbank.com> as of Sept. 25, 2016

The Parties

Complainant Dollar Bank, Federal Savings Bank (“Dollar Bank”) is a U.S.-based bank that owns federal trademark registrations for DOLLAR BANK and DOLLARBANK.COM, registered in in 2008 and 2009, respectively. [The DOLLAR BANK registration disclaims the exclusive use of the word “BANK” apart from the mark as shown.]

Respondent Thomas Pillsworth, BTCNYEX (“Pillsworth”) registered the disputed domain on March 13, 2015.  According to Dollar Bank, the disputed domain did not point to an operative website.

Pillsworth’s response to the Complaint was an email to WIPO–sent after WIPO notified the parties of Pillsworth’s default–contesting whether the “generic” terms “bit” or “dollar” could afford trademark protection.  [He didn’t question the distinctiveness of “bank.”]  The Panel considered this informal (and late) response.

Trademark Rights

The Panel finds that Dollar Bank’s trademark registrations are prima facie evidence of their validity of the marks, creating a rebuttable presumption that the marks are inherently distinctive. Pillsworth’s contentions regarding “bit” and “dollar” are found insufficient to overcome the presumption.  The Panel therefore finds that Dollar Bank has trademark rights for purposes of the proceeding.

Identical or Confusingly Similar

Citing the decision in Rapidshare AG v. Randi (WIPO Case No. D2010-1089), the Panel observes that “[n]umerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that the Disputed Domain Name is confusingly similar to the DOLLAR BANK Mark.”  Thus, the Panel finds the disputed domain to be confusingly similar to Dollar Bank’s marks.

Rights or Legitimate Interests

Dollar Bank alleged that the disputed domain is not pointed at an active webpage, and so is not part of a bona fide offering of goods or services; Dollar Bank also asserted that Pillsworth is not “commonly known by” the disputed domain, nor is he making a legitimate noncommercial or fair use of the domain.

Because Pillsworth did not respond to rebut this showing, the Panel finds that Dollar Bank has demonstrated Pillsworth’s lack of rights or legitimate interest in the domain.

Registered and Used in Bad Faith

The Panel finds bad faith by Pillsworth based on three factors.

First, it cites Telstra Corp. v. Nuclear Marshmallows (WIPO Case No. 2000-0003) for the proposition that “registration together with ‘inaction’ or ‘passive use’ and other facts can constitute bad faith use.”

Second, the Panel finds that Pillsworth had constructive knowledge of Dollar Bank’s trademark registrations and/or common law rights when registering his domain name.  According to the Panel, “[c]onstructive knowledge of Complainant’s rights in the DOLLAR BANK Mark is a factor supporting bad faith.”

Third, the Panel notes “the use of Complainant’s entire mark in the Disputed Domain Name, thus making it difficult to infer a legitimate use of the Disputed Domain Name by Respondent.”  The Panel cites Cellular One Group v. Paul Brien ( WIPO Case No. D2000-0028) for the proposition that wholly incorporating a mark in this manner is evidence of bad faith.

Thus, bad faith is found based on (i) Pillsworth’s “passive holding” of the domain by “failing to post any content on the Internet”; (ii) Pillsworth’s constructive knowledge of Dollar Bank’s trademark registrations; and (iii) the domain name’s incorporation of the entire DOLLAR BANK mark.

Decision
The Panel orders that the disputed domain name be transferred to Dollar Bank.

Commentary

The bad-faith analysis in this decision warrants a closer look.

First, while the Panel notes that passive holding “and other facts” can constitute bad faith use under Telstra and other decisions, it doesn’t say what those other facts are here.  In Telstra, the other facts included that the Complainant’s trademark had a “strong reputation” and was “widely known” as evidenced by “substantial use” in multiple countries, and that the Respondent (“Nuclear Marshmallows”) took active steps to conceal its true identity and provided false contact detail for the registration. Since Telstra, those factors have coalesced into the “consensus view” of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).  In short, passive holding can be evidence of bad faith where the complainant’s mark is well known and the respondent has concealed its identity.

Here, by contrast, the only evidence of Complainant’s trademark rights is its two registrations– there is no evidence regarding the reputation of the DOLLAR BANK mark or the extent to which it is used.  Respondent Thomas Pillsworth also apparently used his true identity to register the domain.

Second, the Panel finds bad faith in Pillsworth’s constructive knowledge of the DOLLAR BANK mark.  Yet as the WIPO Overview 2.0 summarizes, “[p]anels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP,” except where there are indicia of cybersquatting–again, not in evidence here.  The consensus by these panels makes sense, because constructive notice simply avoids the defense of lack of knowledge of trademark rights; it does nothing to show bad faith intent, which needs to be affirmatively shown by a UDRP complainant.

Third, the fact that the domain incorporates the complainant’s entire mark may be relevant or even noteworthy, but it’s certainly not dispositive in all cases– for example, BUDWEISER.COM incorporates the entire “W” mark of W Hotels, but that’s hardly evidence of bad faith by the beer company.  In the Cellular One Group decision cited by the Panel, bad faith registration of <cellularonechina.com> was found where the trademark was “a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well known mark” (emphasis added).  There is no evidence here that the mark is well-known, so one can’t assume that Pillsworth must have known about Dollar Bank’s mark.

The circumstances evidencing bad faith registration and/or use in Paragraph 4(b) of the Policy are just examples.  But a common theme emerges; bad faith is shown where the respondent has registered/acquired the domain name in order to (i) to sell it to the complainant or a competitor of the complainant for a profit; (ii) prevent the complainant from registering a domain incorporating the mark, as part of a pattern of conduct; (iii) to disrupt the business of a competitor; or (iv) attract visitors to a website associated with the domain name by creating a likelihood of confusion with the complainant’s mark.  Each of the four examples requires that the complainant demonstrate evidence of the respondent’s awareness of –and intent to profit from–the complainant’s mark.

There doesn’t seem to be any such awareness here.  The decision does not mention that “bit” in the context of currency most likely refers to bitcoins, but the respondent here is “Thomas Pillsworth, BTCNYEX”; the Twitter feed for user @btcnyex tweets about bitcoin-related news, and lists an associated website (bankblockchain.io) that is also registered to Mr. Pillsworth.  If I were to speculate, I would guess that Mr. Pillsworth registered <bitdollarbank.com> to evoke bitcoin banking, and had no awareness of the DOLLAR BANK marks–or at least was not trying to exploit their goodwill.  Though the Panel’s decision cites only decisions from 2000, more recent cases would suggest that this is not a situation the UDRP is intended to remedy.

 

 

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