DECISION

BB&T Corporation v. Henry Chan

Claim Number:  FA0403000245924

PARTIES

Complainant is BB&T Corporation (“Complainant”), represented by Larry C. Jones, of Alston & Bird, LLP, Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC 28280-4000.  Respondent is Henry Chan (“Respondent”), P.O. Box SS-6348/A124, Nassau, Bahamas.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <onlinebbt.com>, <bankbbandt.com>, <bbandtbanking.com>, and <bbtandt.com>, registered with Iholdings.com, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 15, 2004; the Forum received a hard copy of the Complaint on March 17, 2004.

On March 19, 2004, Iholdings.com, Inc. confirmed by e-mail to the Forum that the domain names <onlinebbt.com>, <bankbbandt.com>, <bbandtbanking.com>, and <bbtandt.com> are registered with Iholdings.com, Inc. and that Respondent is the current registrant of the names. Iholdings.com, Inc. has verified that Respondent is bound by the Iholdings.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 19, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 8, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@onlinebbt.com, postmaster@bankbbandt.com, postmaster@bbandtbanking.com, and postmaster@bbtandt.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <onlinebbt.com>, <bankbbandt.com>, <bbandtbanking.com>, and <bbtandt.com> domain names are confusingly similar to Complainant’s BBANDT.COM and BB&T ONLINE marks.

2. Respondent does not have any rights or legitimate interests in the <onlinebbt.com>, <bankbbandt.com>, <bbandtbanking.com>, and <bbtandt.com> domain names.

3. Respondent registered and used the <onlinebbt.com>, <bankbbandt.com>, <bbandtbanking.com>, and <bbtandt.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a well-known financial institution in the United States that has provided a wide range of banking and financial services in the U.S.  In so doing, Complainant has used extensively the service mark BB&T, variations thereof such as BBANDT.COM, and BB&T ONLINE.

Complainant owns several registrations for its BB&T mark and the variations thereof with the United States Patent and Trademark Office (“USPTO”), including U.S. Service Mark Registration Nos. 1,382,662 (for BB&T, issued Feb. 11, 1986), 2,614,387 (for BBANDT.COM, issued Sept. 3, 2002), and 2,424,464 (for BB&T ONLINE, issued Jan. 30, 2001).

Complainant has spent millions of dollars annually in advertising and promoting its services under its various marks.  Complainant, through affiliated entities, also owns and uses the domain names <bbandt.com> and <bbt.com> to promote Complainant’s wide variety of financial services.

Respondent registered the domain name <onlinebbt.com> on October 31, 2002.  Respondent registered the domain name <bankbbandt.com> on November 21, 2002.  Respondent registered the domain name <bbandtbanking.com> on November 18, 2003. Respondent registered the domain name <bbtandt.com> on December 4, 2003.  Each domain name links to a website that contains the respective domain name at the top of the page. These websites all provide links to third-party businesses that provide financial services.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

Registering a mark with a governmental authority confers rights in the mark to the registrant under the Policy.  Complainant registered the BB&T, BBANDT.COM, and BB&T ONLINE marks with the USPTO, the governing authority within the U.S.  Thus, Complainant has established rights in the BB&T, BBANDT.COM, and BB&T ONLINE marks. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

A domain name that incorporates a third-party’s mark and merely adds a generic or descriptive term that describes the owner of the mark fails to sufficiently distinguish a domain name from the mark under Policy ¶ 4(a)(i).  In this case, the disputed domain names <bankbbandt.com> and <bbandtbanking.com> each contain Complainant’s BBANDT.COM mark. Respondent has merely added the words “bank” and “banking,” which relate to Complainant’s services offered under its mark, to Complainant’s BBANDT.COM mark. Such additions render the domain names confusingly similar to Complainant’s mark under the Policy.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Likewise, a domain name that incorporates a third-party’s mark and merely adds a single letter to the mark fails to sufficiently distinguish the domain name from the mark under the Policy.  Here, the domain name <bbtandt.com> contains Complainant’s BBANDT.COM mark in its entirety.  However, Respondent has inserted the letter “t” between the second letter “b” and the third letter “a” in Complainant’s mark.  Such an addition renders the domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to Complainant’s famous AMERICA ONLINE mark); see also Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that Respondent’s domain name <eebay.com> is confusingly similar to Complainant’s registered EBAY trademark).

Domain name registrants sometimes own marks that contain the ampersand symbol and desire a corresponding domain name.  However, domain names are incapable of reproducing the ampersand symbol.  As a result, registrants of such names often substitute the word “and” for the ampersand, which is identical in meaning.  Alternatively, registrants may choose to simply register names that leave out the ampersand symbol from their desired mark. Thus, previous decisions under the Policy have found that such substitutions or omissions of ampersands render a domain name confusingly similar to a third-party’s mark. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”).

In conjunction with the foregoing, Respondent has incorporated Complainant’s BB&T ONLINE mark in the <onlinebbt.com> domain name. Respondnet has merely inverted the words “online” and “bbt” in the domain name. Inverting the words of a third-party’s mark in a domain name fails to sufficiently distinguish the domain name from the mark under Policy ¶ 4(a)(i). Furthermore, the addition of a generic top-level domain is irrelevant under the Policy. See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . .is in insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also Toronto Convention & Visitors Ass’n v. This Domain is For Sale, D2001-1463 (WIPO Feb. 25, 2002) (finding that there would be no reason to distinguish between <tourismtoronto.com> and TORONTO TOURISM); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Complainant has established that the disputed domain names <onlinebbt.com>, <bankbbandt.com>, <bbandtbanking.com>, and <bbtandt.com> are confusingly similar to Complainant’s BBANDT.COM and BB&T ONLINE marks.  Therefore, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  Such a failure has been construed in previous Policy decisions as being an implicit admission that a respondent lacks rights and legitimate interests in a domain name.  Therefore, the Panel presumes that the Respondent in this case lacks rights to and legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

There is nothing in the record that indicates Respondent is commonly known by the disputed domain names <onlinebbt.com>, <bankbbandt.com>, <bbandtbanking.com>, and <bbtandt.com> pursuant to Policy ¶ 4(c)(ii).  Thus, the Panel accepts Complainant’s assertion that Respondent is not commonly known by the disputed domain names. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Respondent’s use of domain names that are confusingly similar to Complainant’s mark to market services that compete with the services offered by Complainant under its mark does not equate to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Bad faith registration and use is established under Policy ¶ 4(b)(iii) when a respondent registers a domain name primarily for the purpose of disrupting a competitor’s business.  In this case, each of the disputed domain names are used to host websites that link to competitors of Complainant.  Previous decisions under the Policy have found that in cases such as this, Respondent may be considered a competitor of Complainant.  The primary effect of Respondent’s registration and use of the disputed domain names is to divert Internet users who are seeking Complainant to businesses that provide services that compete with Complainant.  Therefore, Respondent registered the domain names primarily for the purpose of disrupting Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

Likewise, under Policy ¶ 4(b)(iv), bad faith registration and use is established when a respondent uses a domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark.  In this case, Respondent chose to register four domain names that are confusingly similar to Complainant’s marks.  Respondent then proceeded to use these confusingly similar domain names to divert Internet users to competitors of Complainant’s business.  These two activities, taken in conjunction, evidence that Respondent was attempting to attract and confuse Internet users, presumably for revenue generated by each misdirected user. Thus, Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <onlinebbt.com>, <bankbbandt.com>, <bbandtbanking.com>, and <bbtandt.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  April 27, 2004

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