WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

First Citizens Bancshares, Inc. v. Richard Davis

Case No. D2010-0013

1. The Parties

Complainant is First Citizens Bancshares, Inc. of, Raleigh, North Carolina, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

Respondent is Richard Davis of Dyersburg, Tennessee, United States of America.

2. The Domain Names and Registrar

The disputed domain names <firstcitizens-financialplus.com> and <firstcitizenstrust.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 5, 2010. On January 6, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On January 7, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Richard Davis, and not Domains by Proxy, Inc., is the registrant of the disputed domain names. (Therefore, the Panel refers throughout this decision to Respondent in the singular, although Domains by Proxy, Inc was indicated as Respondent in the Complaint, as well as Richard Davis.). That email further provided contact details for Respondent. Thereafter, the Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 29, 2010.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 9, 2010. 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

Complainant, First Citizens Bancshares, Inc., is an American bank holding company. Complainant was established in 1898. It offers an array of wealth management services to customers today, including personal and business financial services. In addition to its banking locations, Complainant offers online banking via its website, as described below.

Complainant holds several trademark registrations for FIRST CITIZENS, including in the United States, where Respondent is located. Complainant secured a trademark registration for FIRST CITIZENS as a stand-alone mark in 1992. Complainant also holds registrations for FIRST CITIZENS with additional descriptive or generic terms. For example, FIRST CITIZENS BANK (registered 2000); FIRSTCITIZENS.COM (registered 2001); FIRST CITIZENS DIRECT (registered 2008); and FIRST CITIZENS INVESTOR SERVICES (registered 2009).

In addition to its trademark registrations, Complainant, through its wholly-owned subsidiary First-Citizens Bank & Trust Company, owns several domain name registrations consisting of its FIRST CITIZENS mark. These include <firstcitizens.com>, (registered on July 28, 1995); <firstcitizens.info>, (registered September 13, 2001); <firstcitizens.co.uk>, (registered November 13, 2007); and <firstcitizens.biz>, (registered March 27, 2002). Complainant further operates a website at the address “www.firstcitizens.com”.

Respondent registered the disputed domain names on August 1, 2009, listing as Registrant, Administrative, and Technical Contact, “Domains by Proxy, Inc.”. Respondent has no affiliation with Complainant. Respondent has linked the disputed domain names to websites that describe or advertise goods or services that are unaffiliated, and in competition with Complainant or Complainant's services. Screenshots for both websites referred to various financial and banking services. Complainant has not authorized these links, nor the use of its trademarks therewith.

5. Parties' Contentions

A. Complainant

Complainant contends that (i) the disputed domain names are identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interest in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

Respondent did not reply to Complainant's contentions in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain names are “identical or confusingly similar to a trademark or service mark in which the Complainant has rights” in accordance with paragraph (4)(a)(i) of the Policy. The Panel finds that both of the disputed domain names meet that standard. The disputed domain names are <firstcitizens-financialplus.com> and <firstcitizenstrust.com>. Both of them directly incorporate a trademark owned by Complainant, FIRST CITIZENS, and merely add a word or words at the end. The panel finds that the added terms “-financialplus” and “trust” are descriptive of Complainant's banking services. Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; and Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500. This is particularly relevant since Complainant itself uses descriptive terms with its FIRST CITIZENS mark, and has even registered several. In short, potential consumers encountering the disputed domain names would likely expect that the “-financialplus” and “trust” were merely describing the services offered by Complainant under its FIRST CITIZEN's trademark.

This panel therefore finds that both of the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to Respondents on how to demonstrate rights or legitimate interest in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interest in a domain name. These examples include: (i) use of the domain name or a name corresponding to it “in connection with a bona fide offering of goods or services” before Respondent received any notice of the dispute; (ii) demonstration that the Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial 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.”

Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent's rights or legitimate interest in the disputed domain names. Rather, as mentioned in Section 4 of this Panel's decision, Respondent has used the disputed domain name to divert Internet users to websites that are unaffiliated, and in competition with Complainant or Complainant's services. Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent's lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a Complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] website or location or of a product or service on [the] web site or location.” As noted in Section 4 of this Panel's decision, Respondent has linked the disputed domain names to websites that describe or advertise goods or services that are unaffiliated, and in competition with Complainant or Complainant's services. In so doing, Respondent is trading on the goodwill of Complainant's trademarks to attract Internet users, presumably for Respondent's own commercial gain. This evidences bad faith by Respondent.

In particular, Respondent has linked both of the disputed domain names to active websites that advertise financial and banking services in competition with those offered by Complainant. Thus web users who visit the website associated with <firstcitizenstrust.com> would be exposed to potential competitors of Complainant via links to websites such as “www.barclayhedge.com”; “www.moneyweek.com”; and “www.trust-deeds.co.uk”. Meanwhile, web users who visit the website associated with <firstcitizens-financialplus.com> will encounter links to potential competitors of Complainant such as “www.sanzarsolutions.com”; “www.reedbusinessschool.com”; and “www.financethefuture.co.uk”. Complainant has not authorized these links, nor the use of its trademarks therewith.

Therefore, this Panel finds that Respondent registered and used the disputed domain names in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.

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 disputed domain names <firstcitizens-financialplus.com> and <firstcitizenstrust.com> be transferred to the Complainant.

Lorelei Ritchie
Sole Panelist

Dated: February 16, 2010