ESQwire wins ClearBank .com #UDRP

ESQwire, a professional, domainer-friendly law firm, has won the UDRP filed against their client, owners of the domain ClearBank.com.

Note: Although ESQwire is a premium sponsor of DomainGang, the following information was retrieved from public sources and it’s not promotional.

The 2003 registration was contested by ClearBank Limited of London, United Kingdom, asserting rights to the CLEARBANK since 2016.

ClearBank.com was sold for $2,600 in 2014, according to NameBio.

Its registrant and Respondent in this UDRP, sought $300,000 dollars for it, according to the Complainant.

The Respondent outlined the facts that the domain’s ownership predates the registration of the bank, and the generic nature of the keywords:

“The Respondent submits that he has purchased the Disputed Domain Name at a public auction well before the Complainant and his trademark rights even existed.

The Respondent contends that he does have rights and a legitimate interest in the Disputed Domain Name. The Respondent claims that he had chosen to acquire the Disputed Domain Name because the term “clear bank” is a combination of two common dictionary words and that he had aimed to profit from the generic value of the words without targeting or intending to take advantage of the Complainant’s (then non-existing) rights in those words. The Respondent also attests that he is the owner of many other similar domain names that include a combination of common descriptive words, including the word “bank”.”

A three member panel at the WIPO delivered a decision favoring the Respondent. Full details follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ClearBank Limited v. Privacydotlink Customer 2450865 / Kwangpyo Kim, Mediablue Inc.
Case No. D2018-2481

1. The Parties

The Complainant is ClearBank Limited of London, United Kingdom, represented by Lawdit Solicitors Limited, United Kingdom.

The Respondent is Privacydotlink Customer 2450865 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom / Kwangpyo Kim, Mediablue Inc. of Gwang-Ju, Republic of Korea, represented by ESQwire.com, P.C., United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <clearbank.com> is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2018. On October 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 31, 2018, 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 November 2, 2018, 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 November 12, 2018.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2018. Upon request of the Respondent, the due date for Response was automatically extended to December 7, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center December 7, 2018.

The Center appointed Flip Jan Claude Petillion, The Hon Neil Brown Q.C., and Thomas Hoeren as panelists in this matter on January 11, 2019. The Panel finds that it was properly constituted. Each member of 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, ClearBank Limited, is a financial institution offering clearing and other banking services to financial service providers. The Complainant was established on August 7, 2015 and is based in London, United Kingdom.

The Complainant is the holder of a multitude of trade- and service mark registrations for and relating to the mark CLEARBANK, which it uses in connection with its banking and financial services. The Complainant’s trademark portfolio includes, inter alia, the following trade- and service mark registrations:

– CLEARBANK, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 015011141 on May 30, 2016 in classes 35, 36, 38, 42 and 45;

– CLEARBANK, word mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 5174439 on April 4, 2017 in classes 35, 36, 38, 42 and 45;

– CLEARBANK, international word mark registered with the World Intellectual Property Office (“WIPO”) under No. 1392668 on September 15, 2017 in classes 9, 35, 36, 38, 42 and 45, with designations in various countries, including the Republic of Korea, where the Respondent is residing.

The Disputed Domain Name <clearbank.com> was created on October 16, 2003 and was acquired by the Respondent on February 2, 2014 at a public auction following the expiry of the registration of the Disputed Domain Name. The Disputed Domain Name resolves to a standard parking page displaying pay-per-click (“PPC”) links related to banking and other financial services.

Before initiating UDRP proceedings, the Complainant attempted to purchase the Disputed Domain Name from the Respondent. The Respondent, claiming that he was unaware of the identity of the Complainant, responded to multiple inquiries regarding the sale of the Disputed Domain Name, with one offer from the Respondent amounting to 300,000 USD.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks in which it claims to have rights. The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used, or has not prepared to use the Disputed Domain Name in connection with a legitimate noncommercial or fair use. In addition, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant asserts that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name. According to the Complainant, the underlying purpose of the Respondent’s website is to park the Disputed Domain Name until it can be sold for an inflated amount exceeding the Respondent’s out-of-pocket expenses directly related to the registration of the Disputed Domain Name and, pending that event, obtain some measure of financial compensation through confusion of Internet visitors caused by the sponsored third-party links. Furthermore, the Complainant claims that the Respondent has engaged in a pattern of registering domain names comprising well‑known trade marks in which he has no obvious rights or legitimate interests.

B. Respondent

The Respondent submits that he has purchased the Disputed Domain Name at a public auction well before the Complainant and his trademark rights even existed.

The Respondent contends that he does have rights and a legitimate interest in the Disputed Domain Name. The Respondent claims that he had chosen to acquire the Disputed Domain Name because the term “clear bank” is a combination of two common dictionary words and that he had aimed to profit from the generic value of the words without targeting or intending to take advantage of the Complainant’s (then non-existing) rights in those words. The Respondent also attests that he is the owner of many other similar domain names that include a combination of common descriptive words, including the word “bank”.

The Respondent further contends that he has not registered nor used the Disputed Domain Name in bad faith. The Respondent claims that he has used the Disputed Domain Name for the purpose of PPC advertising relating to the dictionary meaning of the words “clear” and “bank”, and that such advertising is a common industry practice. The Respondent argues that it registered the Disputed Domain Name in December 2014 and that he could have had no knowledge of the Complainant or its registered trademarks at the time of registration, since the Complainant and its trademark rights did not exist at that time. According to the Respondent, the Respondent did not acquire the Disputed Domain Name solely to sell it to the Complainant, but is willing to sell the Disputed Domain Name to any willing purchaser because of the inherent value in a generic or descriptive word domain name. The Respondent continues that the presented offer of 300,000 USD to sell the Disputed Domain Name resulted from a fair valuation in a free domain name market.

Finally, the Respondent argues that the Complainant knew or should have known that he would be unable to prove a lack of rights or legitimate interest by the Respondent, or that the Respondent has registered or used the Disputed Domain Name in bad faith. The Respondent asserts that the Complainant has initiated the present UDRP proceedings solely as a “Plan B” after the Complainant was unable to purchase the Disputed Domain Name from the Respondent. The Complainant is therefore guilty of Reverse Domain Name Hijacking (“RDNH”) and abuse of the administrative process, according to the Respondent.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the 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.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, 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 has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements.
A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark in which it has rights. The Complainant has established that there are CLEARBANK trademarks in which it has rights.

The Panel notes that the Disputed Domain Name <clearbank.com> incorporates the Complainant’s CLEARBANK trademark in its entirety.

The Panel is of the opinion that it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. Therefore, the gTLD can be disregarded and the Panel considers the Disputed Domain Name to be identical to the Complainant’s CLEARBANK trademark.

Accordingly, the Complainant has made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Complainant considers that the Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and/or services and that the Respondent has not made a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In response, the Respondent submits that he has registered and used the Disputed Domain Name purely to profit from the generic value of the descriptive words “clear” and “bank” without intending to take advantage of the Complainant’s then non-existing rights in those words. The Respondent considers PPC advertising relating to the dictionary meaning of common words to be a standard industry practice and thus a legitimate business use of the Disputed Domain Name.

The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Under paragraph 4(c)(i) of the Policy, the Respondent will have rights to or legitimate interests in the Disputed Domain Name if, before any notice of the dispute, he had used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.

Using a domain name to host a page comprising PPC links constitutes a very minimal use of the Disputed Domain Name. Nevertheless, Panels have recognised that “the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”. (See section 2.9, WIPO Overview 3.0).

In the case at hand, there is no evidence that the Respondent is trying to trade off the Complainant’s (or any of its competitors’) trademarks. The PPC links on the website associated with the Disputed Domain Name appear to be genuinely related to the dictionary meaning of the words comprising the Disputed Domain Name.

The Panel therefore concludes that, on the basis of the evidentiary record in this proceeding, the Complainant has failed to prove the absence of rights or legitimate interests on the part of the Respondent.

Accordingly, the Complainant has not established the second requirement under the Policy and the Complaint must be dismissed.

C. Registered and Used in Bad Faith

In view of the Panel’s findings under the second limb of the Policy, there is no need for the Panel to consider the third requirement under the Policy as all three requirements of paragraph 4(a) of the Policy must be met for a complainant to prevail.

In any event, the Panel considers that the Complainant has not shown, on the balance of probabilities, that the Disputed Domain Name was registered and is being used in bad faith. Surely, the Disputed Domain Name appears to be registered primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name. However, no evidence suggests that the Respondent had the Complainant or its trademarks in mind when registering the Disputed Domain Name, as neither the Complainant nor his trademark rights existed at the time the Respondent obtained the Disputed Domain Name at a public domain name auction. The value the Respondent attaches to the Disputed Domain Name appears to be inspired by the dictionary meaning of the generic words in the Disputed Domain Name, and not by the identity of the parties that may be interested in acquiring the Disputed Domain Name.

D. Reverse Domain Name Hijacking

The Respondent requests that the Complainant be found guilty of reverse domain name hijacking.

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.

For this purpose, paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH.

In the case at hand, the Panel finds no evidence that the Complaint was brought in bad faith. The Complainant seems to have been convinced that, while it has registered trademark rights in the CLEARBANK sign, the Respondent is only using the Disputed Domain Name for PPC purposes, and is offering it for sale at an amount which is clearly in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name.

The Complainant may have erroneously believed that the use of the Disputed Domain Name for a PPC website was an unconditionally strong argument in support of bad faith together with the fact that the Respondent acts as a domainer.

The file does not show that the Complainant knew or should have clearly known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint. The Complainant is not unreasonably ignoring established Policy precedent. In many cases, the use for PPC purposes of a domain name which is identical to a trademark, combined with an offer to sell the domain name for valuable consideration will satisfy the requirements of the Policy. Those precedents might have led the Complainant to believe that domaining is not admissible under any circumstances. As a result, the Panel finds there to be no evidence of Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Flip Jan Claude Petillion
Presiding Panelist

The Hon Neil Brown Q.C.
Panelist

Thomas Hoeren
Panelist
Date: January 15, 2019

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