Simple Finance Technology Corp (“Complainant”), just won control of the domain name SimpleBank.com which is owned by CDN Properties Incorporated.
Simple alleged that it had a common law trademark to the term “Simple” however the case seemed to turn on that the domain name in question SimpleBank.com which was first registered in 2003 is the reverse of the company’s website at BankSimple.com, the domain went to a parked page with links to other banks, and the domain holder could not proof to the panel satisfaction that the the trust which currently owns the domain was controlled by the Michele Dinoia the domainer who registered the domain back in 2003.
Moreover other UDRP loses by the domain holder did not help.
Here are the relevant facts and findings by the sole panelist Dr. Reinhard Schanda:
“Complainant uses the SIMPLE mark in furtherance of an online banking company providing consumers with a suite of all-electronic banking services. Complainant does not own any trademark registrations for the SIMPLE mark, but has amassed common law rights.
Complainant was incorporated in Delaware in November 2009 under the name “Simple Finance Technology Corp.”
Complainant launched its online banking platform in January 2010 using the domain name .
In 2013, the company had 20,000 customers and had processed more than $200 million in transactions. At the date of this Complaint, Complainant has gained well over 120,000 customers and is on track to process over $2 billion in transactions in 2014. C¶ 4(b)(iii) as the disputed domain name resolves to a website promoting links to third-party businesses that compete with Complainant. Respondent’s use of the disputed domain name in connection with click-through fees is a further indication of bad faith under Policy ¶ 4(b)(iv). Finally, Respondent was aware of Complainant’s SIMPLE mark when it chose to register the disputed domain name based on the notoriety and reputation of the mark.
The Panel agrees that even though Complainant does not provide evidence of a registration for the SIMPLE mark with a national trademark registrar, such evidence is not necessary if it can show clear secondary meaning in the mark.
In order to proceed with common law rights, the complainant is required to show secondary meaning in the mark at issue. In AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009), the panel explained, “‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’” In considering whether a mark has achieved secondary meaning, prior panels have looked to sales figures, the nature and extent of advertising, and customer and media recognition.
In arguing that its SIMPLE mark has acquired the requisite secondary meaning to justify this proceeding, Complainant recites its business efforts with emphasize on such factors espoused in Gourmet Depot.
To start, Complainant provides that it uses the SIMPLE mark in furtherance of an online banking company providing consumers with a suite of all-electronic banking services.
Complainant was incorporated in Delaware in November 2009 under the name “Simple Finance Technology Corp.” Complainant explains that it launched its online banking platform in January 2010 using the domain name .
Complainant emphasizes that it has been the subject of significant press reviews and media coverage.
In 2013, the company had 20,000 customers and had processed more than $200 million in transactions.
At the date of this Complaint, Complainant has gained well over 120,000 customers and is on track to process over $2 billion in transactions in 2014.
Complainant further notes it has spent considerable time and resources in promoting the SIMPLE mark.
Considering this evidence, the Panel agrees that the SIMPLE mark has garnered secondary meaning. Therefore the Panels finds Complainant has demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant claims the domain name is confusingly similar to the SIMPLE mark as the added term “bank” has an obvious relation to Complainant. The Panel agrees that the additions of a descriptive term and a generic top-level domain are insufficient to distinguish the domain name from the incorporated SIMPLE mark, and therefore find Policy ¶ 4(a)(i) confusing similarity.
The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue.
Complainant argues that Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS record. The Panel observes that the WHOIS record identifies “CDN Properties Incorporated CDN Properties Incorporated” as registrant of the domain name.
As Respondent fails to contest that it is not commonly known by the domain name, the Panel agrees that Complainant has satisfied its Policy ¶ 4(c)(ii) burden.
Further, Complainant argues that Respondent is using the disputed domain name in connection with a parked website that promotes links relating to banking services. Complainant contends these sponsored links offer banking and financial services that compete with Complainant, and Respondent likely generates click-through fees from the linked pages.
Complainant directs the Panel to see that the resolving page promotes links to competitors such as PNC, Chase, and HSBC. Prior panels have concluded that the promoting of competing links is not a use protected under Policy ¶ 4(c)(i) and (iii).
Accordingly, the Panel agrees that Respondent has not operated the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues Respondent’s current bad faith is evidenced by a history of cybersquatting.
Complainant directs the Panel to three previous UDRP decisions adverse to Respondent: Possis Medical, Inc. v. CDN Properties Incorporated, FA 964416 (Nat. Arb. Forum June 5, 2007); Guitar Center, Inc. v. CDN Properties Incorporated, FA 1510604 (Nat. Arb. Forum September 3, 2013); Yahoo! Inc. v. CDN Properties Incorporated, FA 1560952 (Nat. Arb. Forum July 7, 2014). As prior panels have considered prior findings of bad faith, the Panel here also agrees that Respondent has shown the requisite pattern of bad faith to warrant a finding under Policy ¶ 4(b)(ii).
Complainant next argues that Respondent’s use of the disputed domain name in connection with click-through fees tied to competing hyperlinks is a further indication of bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent was aware of Complainant’s SIMPLE mark when it chose to register the disputed domain name based on the notoriety and reputation of the mark. In so arguing, Complainant asserts Respondent must have acquired or registered the disputed domain name at some point between May 19 and August 7, 2012.
According to the Registrar’s Verification the domain name at dispute was created on May 21, 2003.
Complainant has submitted clear and comprehensible evidence, that the domain name was originally registered by Michele Dinoia/SZK.com based in Pineto, Italy. Furthermore Complainant could demonstrate that the disputed domain name was registered to Michele Dinoia for approximately nine years from May 2003 through the summer of 2012.
These allegations were not contested by Respondent. According to the presented documents there is no doubt for the Panel that the actual Respondent, CDN Properties Incorporated, based in Panama City, must have acquired or registered the disputed domain name at some point between May 19 and August 7, 2012. However, Respondent claims to have acquired the disputed domain name in 2003, which is prior to Complainant’s incorporation in 2009. Respondent contends that Michele Dinoia, was not a “party” who sold the domain to another undertaking, but rather is the settlor/trustee of CDN Properties Incorporated, the actual registrant. According to Respondent the change of the registrant from Michele Dinoia to CDN Properties Incorporated was not a substantial change of ownership, but rather a formal change in registration data.
The Panel is aware that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate. However, the Panel is not convinced that the evidence presented by the Respondent is appropriate to clearly establish an unbroken chain of ownership. As support for this claim Respondent submits only the first page of a General Power of Attorney purporting to empower Mr. Dinoia to act as a trustee for the benefit of the Respondent. The Panel finds that this partial document is not proof enough for the alleged unbroken chain of ownership.
For the Panel it is not really logical to declare that CDN Properties is the “actual registrant” when Annex 5 states that CDN Properties was not even incorporated as a company until September 2006, more than 3 years after Mr. Dinoia first registered the Disputed Domain Name in May 2003.
Furthermore the Panel finds that Respondent has failed to submit any documentation evidencing the identity of the trust allegedly established for CDN Properties’ benefit; the nature of the assets allegedly included within that trust; whether such assets included the Disputed Domain Name; and whether, assuming the Disputed Domain Name was included within the assets, such assets were actually transferred into CDN Properties’ possession. Nor has Respondent submitted any of the telltale documents one would expect to support this claim, such as a trust agreement or written assignment from the trust to CDN Properties. The complete absence of such evidence is highly suspicious. The only reasonable inference to be drawn is that it simply does not exist. The Panel therefore rejects Respondent’s unsupported claims of an unbroken chain of ownership.
