Verabank, National Association v DNS Admin, Buntai Ltd

WIPO Case No. D2024-0289

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Verabank, National Association v. DNS Admin, Buntai LTD

Case No. D2024-0289

1. The Parties

The Complainant is Verabank, National Association, United States of America (“United States”), represented by ZeroFox, United States.

The Respondent is DNS Admin, Buntai LTD, Switzerland, represented by Yarden Shaul, United States.

2. The Domain Name and Registrar

The disputed domain name <verrabank.com> is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2024. On January 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 25, 2024, 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 amendment to the Complaint on February 7, 2024.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on February 9, 2024. In accordance with the Rules, paragraph
5, the due date for Response was initially February 29, 2024. On February 29, 2024, the Respondent
requested the extension of the deadline to file the Response under paragraph 5(b) of the Rules and the
Center confirmed the extension until March 4, 2024. The Respondent did not submit any further response.

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The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 11, 2024. 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

The Complainant is privately owned community bank serving 16 counties in Texas in the United States. It has approximately 500 employees operating from a network of 40 local branches and has USD 3.9 billion in assets. The Complainant also manages USD 950 million in trust assets.

According to the Complaint, the Complainant has been operating for 90 years although its trademark registration details discussed below stated that the Complainant’s first use of the mark VERABANK in commerce commenced on January14, 2019.

The Complaint also claims that the Complainant’s brand is recognized nationally. This may be the case, but
the Complaint does not include any particular information to support that claim. See WIPO Overview of

WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3.

The Complainant is the owner of United States Registered Trademark No 5,765,752, VERABANK, which
was registered on May 28, 2019, in the Principal Register in respect of banking services in International
Class 36.

According to the WhoIs record, the disputed domain name was registered on August 10, 2023. It does not and, so far as the record in this proceeding shows, has not resolved to an active website. There is no evidence of any other type of use either.

As there has not been a substantive response, all that is known about the Respondent is that it has been the respondent in 11 previous disputes in 2023, ranging across a range of industries; the first being Moderna, Inc. and ModernaTX, Inc. v. DNS Admin, Buntai LTD, WIPO Case No. D2023-0161 (pharmaceuticals); another relating to hotels and accommodation, B&B Hotels v DNS Admin, Buntai LTD, WIPO Case No D2023-0325 and others relating to insurance, finance, credit reporting, elevators and food services, and facilities management.

5. Discussion and Findings

No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights; and

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(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.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has proven ownership of the registered trademark VERABANK.

Disregarding the “.com” generic Top-Level-Domain (“gTLD”) as a functional requirement of the domain name system (WIPO Overview 3.0, section 1.11), the disputed domain name consists of the Complainant’s registered trademark with a double “rr” instead of a single “r”. This is an obvious misspelling of the Complainant’s trademark of the kind often seen in cases of so-called “typosquatting”. WIPO Overview 3.0, section 1.9. In any event, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides examples of circumstances which can be situations in which the Respondent has rights or legitimate interests in a disputed domain name. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that
proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible
task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to
come forward with such relevant evidence, the complainant is deemed to have satisfied the second
element. WIPO Overview 3.0, section 2.1.

The Respondent registered the disputed domain name after the Complainant had registered its trademark and also, it appears, after the Complainant began using its trademark.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.

The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of
some other name by which the Respondent is commonly known from which the disputed domain name could
be derived. From the available record, the Respondent does not appear to hold any trademarks for the
disputed domain name.

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There appears to have been no use made of the disputed domain name. Nor is there any evidence of demonstrable preparations to use the disputed domain name. Thus, the circumstances mentioned in paragraph 4(c)(i) – use or demonstrable preparations to use in connection with a good faith offering of goods

or services – or paragraph 4(c)(iii) – legitimate noncommercial or fair use – cannot apply.

These matters, taken together, are sufficient to establish a prima facie case under the Policy that the
Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the
Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The
Respondent, however, has not sought to rebut that prima facie case nor to advance any claimed entitlement.

Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

The trademark VERABANK appears to be a coined or invented term which, apart from its adoption as the name and trademark of the Complainant, does not have any commonly understood meaning or use.

In addition, as discussed in section 5B, there is no obvious connection between the term VERABANK and the Respondent.

Further, in the absence of a substantive response from the Respondent, all that is known about the industries including the trademarks of persons operating in the financial services industry.

In these circumstances, the Panel infers that the Respondent was aware of the Complainant’s trademark when the disputed domain name was registered and did so to target the Complainant and its trademark.

Accordingly, it appears that the Respondent has adopted the disputed domain name because of its trademark significance. Given this, and the Respondent’s history of registering domain names corresponding to third parties’ trademarks, the Panel finds that the circumstances at the least fall within those described in paragraph 4(b)(i) of the Policy:

“circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the
[disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed]
domain name registration to the Complainant who is the owner of the trademark or service mark or to a
competitor of that Complainant, for valuable consideration in excess of [the Respondent’s] documented out-
of-pocket costs directly related to the [disputed] domain name”.

In circumstances where the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used it in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <verrabank.com> be transferred to the Complainant.

/Warwick A. Rothnie/
Warwick A. Rothnie
Sole Panelist
Date: March 25, 2024