Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Household International, Inc., Prospect Heights, IL, USA ("Complainant") represented by Sean Swidler, LAFF, Whitesel & Saret, Ltd. The Respondent is Cyntom Enterprises, Austell, GA, USA ("Respondent") represented by Charles Black.

The domain name at issue is "householdbank.com", registered with Network Solutions.

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

Honorable Roger Philip Kerans (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 10, 2000; The Forum received a hard copy of the Complaint on October 10, 2000.

On 10/11/00, Network Solutions confirmed by e-mail to The Forum that the domain name "householdbank.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 13, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 2000 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@householdbank.com by e-mail.

On November 3, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Roger Philip Kerans as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant:

The complaint is based on the service mark HOUSEHOLD BANK, which is the subject of U.S. Service Mark Reg. Nos. 1,357,180 and 2,020,861, and on the numerous service marks which include the word HOUSEHOLD. The marks are used in connection with banking and various other financial services.

Complainant is an $82 billion provider of financial services and is a leading provider of consumer loans and credit cards in the United States, Canada and the United Kingdom.

Complainant and its predecessor-in-interest, Household Finance Corporation, have been in the business of providing financial services since at least as early as 1878, and have done business under the HOUSEHOLD BANK service mark since at least as early as 1983. Among other businesses, Complainant operates a credit card business and issues credit cards under the name Household Bank. Complainant and its predecessor-in-interest have been in the business of providing financial services under the HOUSEHOLD Marks since at least as early as March 1935.

Complainant’s services identified by its HOUSEHOLD Marks have been extensively marketed throughout the United States and in foreign countries, and Complainant has expended substantial time, effort and money in advertising, promoting and marketing its services sold under its HOUSEHOLD Marks. For example, Complainant has mailed millions of copies of hundreds of different promotional and advertising pieces featuring its services under its HOUSEHOLD Marks to customers and potential customers, and it advertises and promotes its services nationally through television, radio, magazine, newspaper and other national media. In addition, Complainant’s services under the HOUSEHOLD Marks are advertised and sold through Complainant’s various websites on the Internet, including under the domain name "household.com." .

As a result of Complainant’s substantial and extensive advertising and sales, it has acquired valuable goodwill in the HOUSEHOLD Marks, including the HOUSEHOLD BANK service mark, and the HOUSEHOLD Marks have become widely and favorably known throughout the United States and elsewhere throughout the world.

Respondent registered the householdbank.com domain name on March 8, 1999.

Respondent does not provide banking services or have any business relating to banking or credit cards.

Before Respondent posted its website, Complainant’s attorney contacted Respondent and requested that Respondent voluntarily transfer the disputed domain name. Respondent has refused to do so and instead offered to sell the domain name to Complainant for in excess of $25,000.

Since negotiations terminated, Respondent posted a website at the subject web address containing only: (1) the term HOUSEHOLDBANK.COM in bold, conspicuous letters; (2) the tag line "A Vault Full of Savings," which includes the words "Vault" and "Savings," terms commonly associated with the banking industry; (3) images of coins, which are also consistent with a banking business; (4) contact information consisting of Respondent’s e-mail address; (5) a link to two third parties unrelated to Complainant; and (6) a sentence indicating the website "will be open soon". Thus, Respondent is not only using Complainant’s service mark as a domain name, but is also using Complainant’s service mark within Respondent’s website in a manner likely to indicate that the site is Complainant’s site.

Actual confusion among the public has already resulted in dozens of e-mail messages concerning Complainant’s financial services and intended for Complainant being mistakenly sent to Respondent at the e-mail address displayed on the www.householdbank.com website. Many of these e-mails concern payment of credit card bills, credit report information and other personal finance issues.

After seeing how much confusion the domain name and website are causing, Respondent recently added to its website the phrase "This site is not affiliated with House Hold Bank Credit Cards".

Since the Complaint was filed, the Respondent modified the website to include a webpage which "frames" an unrelated third party website. The third party is a competitor of the Complainant who also issues credit cards. Also, within the website, there is now a hyperlink ("apply for a Credit Card’) which takes the viewer to the competitor’s website.

B. Respondent:

The Respondent registered the domain name March 8, 1999. Then they began plans to sell household goods, supplies and appliances over the Internet with a sells slogan of "a vault full of savings."

The marketing plan was to have a web page with a picture of the inside of a bank, featuring a vault with safety deposit boxes. Boxes would be labeled with household goods such as stoves and refrigerators. When a customer clicked on a box it would send them to an order page for the item. The slogans for the pages would be "For real savings come see our vault", "You can bank on our savings", "Our bank of household products will keep more in your bank", and a "vault full of savings".

The Respondents' proposed use of "householdbank.com" is in a business entirely unconnected with that of the Complainant.

The owner of a mark may preclude others from using a similar mark only if such use is likely to cause confusion in the minds of purchasers. Determining whether two marks are so similar as to be confusing usually involves a multi-factor analysis that compares the parties marks, their goods or services, their advertising and trade channels, the defendant's intent in choosing its mark, and the presence or absence of actual confusion.

"Household" and "bank" are such generic terms and are not protected.

The Complainant's trademark registration made "No claim. . . To the exclusive right to use "bank" apart from the mark as shown" according to their registration.

Complainant’s written negotiations were not cordial commercial negotiation, but the threats of a "bully". Confronted by costly litigation with a corporate giant with seeming unlimited resources, the Respondent made a business decision to try negotiation with the Complainant. When negotiations failed, the Respondent resumed his plan to sell household goods over the Internet.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:

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

(2) the 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.

The domain name "householdbank.com" registered by the Respondent is confusingly similar to a trademark in which the Complainant has rights, namely "Household Bank". The elimination of the space between the words, and the addition of the term ".com" in no way lessen the likelihood of confusion because neither carry any meaning that qualifies the meaning of the term "Household Bank" in any way. In this regard, this case cannot be distinguished from similar domain-dispute decisions. See, for example, Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165 (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); and Internet Security Systems, Inc. v HLC Enterprises, FA 95493 (Nat. Arb. Forum Oct. 11, 2000) (finding that the domain names internetsecuritysystems.com and internetsecuritysystems.net are identical to the Complainant’s mark).

I take comfort in this view from the admitted fact that confusion actually occurred.

The Respondent argues that "Household" and "bank" are generic terms and are not protected. This is correct only if the two words are not employed together. When used together they can and do create a unique identity that deserves protection.

Respondent does not claim that the term "householdbank" had been used by him in connection with any existing business or pursuit so that it could be said he has some existing business interests to protect. Nor has he demonstrated any significant time or effort or expenditure in connection with the development or promotion of this site. I do not consider the vague and unsupported assertion of "plans to sell household goods, supplies and appliances over the Internet" to be proof of a legitimate business plan as put before the panel in SFX Entertainment, Inc. v. Phillip Cushway, D2000-0356 (WIPO July 10, 2000). Even if he had a legitimate business plan, the use of the word "bank" in connection with an attempt to sell furniture is merely an advertising gimmick, and a very dubious one in light of the fact that, in many jurisdictions, the Respondent has no right to use the word "bank" in any way to describe his business unless he has lawful banking powers, which he does not claim.

Moreover, the Complainant firm has for many decades conducted its financial business under the name Household or Household Bank. It is a very well-known business name. It is inconceivable that the existence of this prominent firm was not present in the mind of the Respondent when he chose his domain name. The only reasonable inference is that he knew perfectly well that he would create confusion, or was wilfully blind to this fact. In this regard, I am well-guided by the decisions in Geoffrey, Inc., v. S Rus WIPO Case No. D2000-1008 (holding that the prominence of the business name "Toys ‘R Us" undermined any legitimate interest in a web-site called toysrus.com.).,

I therefore conclude that the Respondent has no right or legitimate interest in this domain name.

The ICANN Policy offers four examples of what is called bad faith in the creation of a domain name. The first is to do so "for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant . . . for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name". The second involves a pattern of registrations to thwart registrations by legitimate owners of names. The third deals with deliberate attempts to disrupt a competitor. The fourth is about attempts to attract, for commercial gain, Internet users to a site by leaving the impression the site is somehow connected with the another business.

In this case, the Complainant says that the first, third, and fourth apply. It argues that the lack of a serious business plan and the long delay in attempting any organization of the site together with the unjustifiedly high price claimed by the Respondent for the site offers an easy inference of cybersquatting. The Respondent offers no support for his claim that his first-year earnings would have been $25,000. Instead, he accuses the Complainant of being a corporate bully. Whether the complainant is a bully is immaterial. People say silly things in negotiations, so the high price alone is not convincing. But I admit the circumstances are very suspicious.

The Complainant also relies on the later addition of a hyperlink to a competing credit-card issuer after the Complainant protested about possible confusion. Even if the Respondent gained no profit from this connection, I can only infer that this was a spiteful attempt to divert business away from the Complainant and an act of bad faith. However, I cannot conclude, as I must to invoke Policy 4(b)(iii), that this was the primary purpose of the site.

But there is more. Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner. Woolworths plc. -v- David Anderson WIPO Case No. D2000-1113 (dealing with the prominence of the business name Woolworths against a website called woolworthsdirect.com). I must infer in all the circumstances here that the Respondent, if he ever was serious in the registration of this domain name, must have relied on the good chance he would attract Household customers - as indeed he did.

In the end I am unsure only whether the Respondent intended harassment or exploitation. He certainly intended one or the other. And both are acts of bad faith under the Policy.

For these reasons, I conclude that the domain name "householdbank.com" will be transferred to the Complainant.