Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is First American Funds, Inc. of 601 Second Avenue South, MPFP 2801, Minneapolis, MN 55402, United States of America. Represented by: Fulbright & Jaworski, LLP of Minneapolis, United States of America.

The Respondent is Ult.Search, Inc, of 1601-1603 Kinwick Centre, 32 Hollywood Road, Central, Hong Kong, Korea.. Represented by: John B. Berryhill PhD, Esq., of Philadelphia, United States of America.

The domain name with which this dispute is concerned is <firstamerican.com>.

The Registrar with which the domain name is registered is Tucows.com, Inc of 96 Mount Avenue, Toronto, Canada.

3.1 A Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 29, 2000 and January 5, 2001 respectively.

3.2 On January 11, 2001 the Registrar verified:

(i) that domain name is registered with it;

(ii) that the current registrant of the domain name is the Respondent;

(iii) that the Policy applies to the domain name;

(iv) that the domain name is "on hold";

(v) that the Administrative Contact, the Technical Contract and the Billing Contact for the domain name is:

Support, DNS@ultsearch.com, 16^th Floor, Kinwick Centre, 32 Hollywood Road, Central, Hong Kong.

3.3 On January 12, 2001, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center and found to be in compliance with the applicable ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO’s Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding for the domain name as follows.

(i) by courier and by e-mail to Respondent, the Administrative Contact and the Technical Contact;

(ii) by e-mail to the postmaster at the domain name.

The Panel finds that the obligation imposed on the Center with respect to Notification of the Complaint and the Commencement of the Administrative Proceeding has been satisfied.

3.4 The Administrative Proceeding commenced on January 12, 2001 and the Response was due on January 31, 2001.

3.5 A Response was filed dated January 31, 2001. The Response was received by the WIPO Center by e-mail on February 1, 2001 and in hard copy on February 2, 2001. The Response is therefore formally out of time. Nevertheless, having regard to the time-zone differences between Geneva, Philadelphia and Hong Kong and the fact that Respondent has made a genuine attempt to respond to the Complaint, the Panel accepts the Response in the exercise of the discretion conferred by Rule 10(c) of the Rules.

3.6 espondent requested the appointment of a three member Panel, and Panelists Kathryn A. Kleiman and M. Scott Donahey, and Presiding Panelist Desmond Ryan, having filed the Statements of Acceptance and Declarations of Impartiality and Independence, the Panel was appointed on March 7, 2001.

4.1 The domain name was registered on March 7, 2000.

4.2 Complainant is a corporation of the State of Minnesota and asserts that it has used the name and trade mark "First American" in connection with mutual fund investment services since at least 1982. It claims to operate 38 funds having assets in excess of $33 billion dollars.

4.3 Complainant is the proprietor of the following US trade mark registrations, registered in respect of "mutual fund investment services":

(a) 2,227,008 - "First American" - filed July 26, 1996 and registered March 2, 1999;

(b) 2,237,942 – "First American Funds" – filed July 15, 1996 and registered April 13, 1999;

(c) 2,347,439 – "First American Strategy Funds" – Filed July 15, 1996 and registered May 2, 2000.

The registrations under (b) and (c) above are endorsed, respectively, with disclaimers to the words "Funds" and "Strategy Funds".

4.4 Complainant has, since May 2000, operated its web site at <www.firstamericanfunds.com>.

4.5 Respondent is a Hong Kong company apparently having its place of business in Hong Kong.

4.6 It is common ground that Respondent "operates a directory type web site which provides links to other web sites" (Complaint para. 12(c); Response para. II). In connection with that operation Respondent has registered 40 or more domain names which lead to Respondent’s directory web site. These names include, in addition to <firstamerican>; names such as <easyphoto.com>; <urlwatch.com>; <healthexplorer.com>; <schoolfunds.com>; <sexadvice.com>; <weatherguide.com>; <internetlaw.org>; etc.

4.7 Respondent’s web page lists, on the left of the page search terms for 26 business categories such as life insurance, house loans, home improvement, real estate, etc. The remainder of the page lists business categories headings with sub-categories. For example, under the heading "Computer Services" are listed, "data recovery", "dedicated server", "colocation", "web hosting", "web design" and "DSL". Clicking on any one of these leads to pages listing links to web sites of others providing services of the type listed under the chosen heading.

Complainant describes the contents of the web page in the following terms:

4.8 At some time between December 14, 2000 and December 19, 2000 Respondent made certain changes to its web site which do not materially affect the nature of the site. The Panel notes that the site includes links to organizations in the financial services area.

4.9 Complainant asserts, on information and belief, that Respondent receives compensation from the owners of web sites to which it directs traffic. Respondent does not deny this assertion.

4.10 Respondent produces evidence to show that:

(i) There are in excess of forty US trademarks registered or pending which consist of or include the words "First American", many of which relate to services that may be broadly described as financial services. Registrations held by persons other than Complainant cover inter alia, insurance underwriting, real estate reporting and house warranty, administration of trusts, banking, mortgage and loans, financial planning and management.

(ii) There are over one hundred and fifty gTLD domain names registered which include the words "firstamerican", including names such as <firstamericansucks.com>; <firstamericantravel.com>; <firstamericanlottery.com>; <firstamericanbank.com>; <firstamericanmusic.com>; <firstamericanflorist.com>; <firstamericanembroidery>; etc.

(iii) There are over forty telephone directory entries of apparently unrelated businesses in the United States having "First American" as, or as part of, their names, including by way of example, "First American Title Co of Alaska", "First American Bank", "First American Construction", "First American Homes", "First American Mortgage", "First American", "First American Corp", "First American Dental", "First American Run" , and many others. Business as conducted by these entities vary from banking and financial services to television and production, oil and gas producers, physiotherapy, attorneys, real estate, computer dealers and mobile home manufacture.

4.11 Respondent asserts that it did not know of Complainant when it registered the domain name and that it had never heard of Complainant until it received the Complaint.

5.12 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar’s current policy set out in its domain name registration agreement is the Policy.

5.13 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:

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

(ii) the Respondent has no rights or legitimate interests in the domain name;

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

The onus of such showing is on Complainant.

6.1. Complainant contends that it has established rights in the trade mark "First American" and that the domain name is identical to its trade mark.

Complainant contends that it is the owner of the trade mark "First American" by virtue of its use since 1982 in respect of mutual fund investment services and its registration of the mark in the United States in respect of such services. Complainant cites Sanrio Co. Ltd. v. Neric Ltd, D2000-0172 for its contention that identity of names is not negated by the running together of the two words.

6.2. Complainant contends that Respondent has no rights or legitimate interests in the domain name.

In Complainant’s contention Respondent is not known by the domain name nor does it operate any business under that name. Respondent’s name is Ult.Search Inc., and its operations are carried out under that name. Accordingly, Respondent cannot claim the benefit of para. 4(c)(ii) of the Policy.

Respondent cannot satisfy para. 4(c)(iii) of the Policy. Its use is not a legitimate non-commercial fair use without intent misleadingly to divert consumers or to tarnish Complainant’s trade mark. Respondent operates for commercial gain and its use of the domain name will attract customers to its site and divert them to Complainant’s competitors. Such use is harmful to Complainant and has tarnished its trade mark by dilution and by association of it with goods and services over which it has no control.

6.3 Complainant contends that Respondent has registered and is using the domain name in bad faith.

Respondent has intentionally attempted to attract Internet searchers to its site for commercial gain. Complainant contends that even if Respondent did not receive direct compensation from web site owners linked to its web page, the commercial gain accruing to those web site owners would be sufficient to attract the provisions of para. 4(b)(iv) of the Policy. Complainant cites Focus Do it All Group v. Athanasios Sermbizis, Case D2000-0923 and Yahoo! Inc, v. Data Art Corp, Case D2000-0587 in support of this proposition.

Searchers would be likely to be confused into believing that there was a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by virtue of Respondent’s use of the domain name and by the appearance of the domain name in bold at the top of Respondent’s web page when reached by the domain name address.

By virtue of the appearance of the phrase "Find the Best Web Sites at <firstamerican.com>" at the top left hand corner of the print out of Respondent’s web page, Internet users accessing the site would be lead to believe that Complainant sponsors or approves the listed web sites. The words "Top Five Sites" also appearing on Respondent’s web page would give a like impression.

6.4 Respondent contests Complainant’s claim to rights in the trade mark "First American".

Respondent contends that Complainant’s US Federal trade mark registrations do not provide rights in Hong Kong which is Respondent’s principal place of business. Furthermore, Complainant’s rights even in USA are restricted to a narrow field of financial services and are circumscribed by competing rights of many other users and registrants of the name "First American" as corporate or business names, trade marks and domain names.

6.5 Respondent claims it has a legitimate interest in the domain name.

Respondent agrees that it operates a web site which links to other web sites and lists numerous links relating to particular interests noted on the page. Respondent contends that it operates a bona fide portal and "there is nothing nefarious about developing a portal site which provides links to other web sites, nor is there any offence in deriving revenue from affiliate advertisers linked to such site".

6.6 Respondent denies the domain name has been registered or is being used in bad faith.

Respondent asserts that when it registered the domain name it had never heard of Complainant and that in view of the many businesses employing the term "First American" it cannot be implied that Respondent is engaged in some kind of intentional diversion of traffic from Complainant.

Respondent contends that Complainant has provided no evidence that Respondent has intentionally engaged in activities designed to harm or disrupt Complainant’s business and states that it is more than willing to exclude content from the domain name web site which Complainant finds objectionable or which may interfere with its rights in connection with mutual funds.

Respondent denies Complainant’s assertion that an Internet user accessing the domain name would believe that they had arrived at Complainant’s web site. It asserts they might be just as likely to believe that they had arrived at the web site of any of the other businesses operating under that name or of a new business which had adopted that name.

Respondent submits that the Policy is designed to provide relief against clear cases of intentionally abuse of domain name registrations and is not concerned with issues of trade mark infringement. Even if such issues were to arise, Respondent contends that: "While registration of a fanciful term such as "Panavision" would support a strong inference that the domain name was intentionally registered in bad faith, no such inference is applicable here, and the Respondent expressly denies such an intention" Respondent contends that given the opportunity to do so, it would welcome Complainant’s suggestions concerning any material on the web site which Complainant finds objectionable and/or to provide a courtesy link to Complainant’s web site.

Respondent summarises its submissions as follows: "There is no evidence offered by the Complainant which supports a conclusion that the Respondent has intentionally sought to trade on Complainant’s reputation within a limited field of endeavour, and the Complainant’s evidence supports a finding that the Respondent has accrued a legitimate interest in offering a web portal and directory at the web site corresponding to the domain name at issue."

7.1 The Panel concludes unanimously that the domain name is identical to Complainant’s trade mark "First American". Respondent’s contention that the limited scope of Complainant’s rights, both geographically and in relation to the field of services is not accepted. A gTLD name serves as an address and is not limited either with respect to geography of to field of use. Such considerations may be of relevance when considering questions of confusion and other issues under the Policy but where the trade mark and the domain name are identical the Panel is of the opinion that the test is absolute. Identity is not negatived by the running together of the two words forming the trade mark.

7.2 The Panel is divided on this issue. A majority of the Panel finds that the Respondent has established rights and legitimate interests in the domain name.

7.2.1 This is a case in which there is little dispute between Complainant and Respondent as to the facts surrounding Respondent’s use of the domain name. Respondent frankly admits that it operates a web site portal service providing links to other web sites listed on an index page and that it uses the domain name in connection with that business. Respondent does not deny that it does so for commercial gain. Respondent does not contend that it is commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain. Respondent does contend that it is not attempting misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.

7.2.2 In the opinion of the majority therefore, the issue to be determined is whether in using the domain name in connection with its portal site, such use is in connection with a bona fide offering of goods or services. It is not contested that the operation of a portal or directory service is a legitimate form of Internet business. The question is whether the use of the domain name in connection with it is a bona fide use.

7.2.3 The Panel notes that Complainant has not specifically addressed the question of whether or not Respondent’s actions fall within para. 4(c)(i) of the Policy. Complainant has addressed paras. 4(c)(ii) and 4(c)(iii), but not 4(c)(i). Nevertheless, the Panel accepts as implicit in Complainant’s allegations of bad faith, a contention that Respondent is not acting bona fides in offering its services by reference to the domain name.

7.2.4 Although the Policy draws a clear distinction between the requirement of showing absence of legitimate right or interest in para. 4(a)(ii) and the showing of bad faith registration and use in para. 4(a)(iii), in reality it is difficult to separate the consideration of the one from the other. Absence of any right or interest on the part of Respondent may be of assistance in determining bad faith registration and use, and bad faith registration and use may be of assistance in determining the legitimacy of the claimed right or interest.

7.2.5 The majority is of the opinion that the evidence produced by Respondent shows that in the United States at least, the words "First American" are widely adopted and used by a variety of different businesses extending across a spectrum of business activities and geographical locations. Respondent describes them as constituting a "relatively mundane commercial name used by a wide variety of businesses". On the evidence, that appears to be the case. That Respondent should adopt them, along with a number of other similarly mundane expressions such as <easyphoto>; <healthexplorer>; <netorigins>; <internetlaw>; <americanradio>; and <sexadvice>, to name but a few does not, in the opinion of the majority evidence bad faith on the part of Respondent.

7.2.6 Respondent denies that it had knowledge of Complainant when it adopted the name. Even if it had such knowledge, its adoption of a corresponding name for its portal service would not, per se, constitute bad faith, having regard to the wide-spread use by others. Such wide-spread use has the necessary consequence that the rights of the users are circumscribed and, absent other circumstances, there is no reason why a new entrant into a new field should not adopt those words. The situation would of course be different if the words were well known and unique to one trader. Respondent in its submission draws a distinction between the case of a well known and fanciful term such as "Panavision" and the widely adopted and used expression "First America" of the present case.

7.2.7 The majority of the Panel is therefore unable to find evidence of bad faith in Respondent’s adoption the domain name, and finds that Respondent has established the defence provided by para. 4(c)(i) of the Policy, that before notice to it of the dispute it used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of its services.

7.2.8 It follows therefore, that the majority finds that Respondent has demonstrated a legitimate right or interest in the domain name.

7.3 In the light of the findings of the majority in paragraph 7.2 it is unnecessary to consider whether Complainant has established bad faith use and registration. However, in view of the divergence of opinion within the Panel, the Panel considers it desirable to deal briefly with this issue.

7.3.1 The majority repeats what it has said above in paragraphs 7.2.5 to 7.2.7. In view of the wide-spread use of the name "First American", the majority does not consider improbable Respondent’s assertion that, until it received the Complaint, it had no knowledge of Complainant. It may well have had a general knowledge of the use of the expression "First American" by businesses in the United States and elsewhere. It may even had have specific knowledge of some of those uses. There is no evidence as to this, but even if there were that would not, as such, serve to bring Respondent’s conduct within any of the specific heads of para. 4(b) of the Policy, nor, in the opinion of the majority, within the general ambit of that paragraph.

7.3.2 There is no evidence of circumstances indicating that Respondent acquired the name primarily for the purpose of selling to Complainant or to a competitor of Complainant, nor is there evidence it did so in order to prevent Complainant from reflecting its mark in a corresponding domain name or for the purpose of disrupting the business of Complainant as a competitor. Respondent and Complainant are not competitors in business.

7.3.3 Complainant’s submission is that Respondent’s conduct falls within para. 4(b)(iv) and that by using the domain name, Respondent "has intentionally attempted to attract Internet searchers for commercial gain" and further, "Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement" between Complainant and Respondent. Respondent denies both the factual allegation and Complainant’s construction of the 4(b)(iv). Regarding factual allegations, Respondent denies causing any likelihood of confusion and asserts that it is willing to discuss with Complainant ways of avoiding any unintentional confusion that may exist. Respondent further contests the Policy construction, and denies that bad faith can be proven absent action specifically against Complainant: "The Panel cannot base its decision on the mere correspondence of the asserted mark, but must also positively find that Respondent acted with a bad faith intention directed toward Complainant." (Response)

7.3.4 In the view of the majority of the Panel, Respondent accurately interprets the showing required by 4(b)(iv) and the burden on Complainant. The first three sections of 4(b) make it clear that bad faith requires action directed against the specific complainant, namely registering to sell to complainant or its competitor (4(b)(i)); registering to prevent the owner of the mark from using the mark in a domain name, provided there is a pattern (4(b)(ii)); and registering primarily to disrupt the business of a competitor (4(b)(iii)). To construe 4(b)(iv) without a requirement of direct action by the Respondent against the Complainant would create a tremendous scope of protection around existing owners of marks of common words and mundane expressions, and prevent new entrants from using these words and terms – even in entirely different fields from existing uses. Such a result is inconsistent with existing trademark principles and with the limited language and scope of the Policy.

7.3.5 The majority further notes that it may well be that in view of the vast multiplicity of domain names which consist of, or include the words "First American", there will be confusion, but that is not of Respondent’s making, it is a consequence of the wide-spread and popular adoption of such domain names.

7.3.6 The Panel, by majority, therefore finds that Complainant has failed to show that the domain name has been registered and is being used in bad faith. In setting up the Policy, ICANN sought to craft a balance between domain name holders and trademark owners. Even as the ICANN Board adopted a uniform dispute resolution policy for .com, .net and .org (Board Resolution 99.81), it directed its staff to incorporate new limits to protect legitimate activities, including fair use, and to "define and minimize reverse domain name hijacking" (Board Resolution 99.83). See http://www.icann.org/santiago/santiago-resolutions.htm. Common words and expressions are the building blocks of current and future business names – across different fields and geographic locations. An overly broad interpretation of 4(b)(iv) threatens the balance of the Policy, and its protections of both trademark owners and domain name holders in the rapidly expanding and changing world of the Internet.

7.4 Whilst it is not relevant to its decision, the majority directs attention to the consequence which would follow if the Panel were to find for Complainant. Complainant is merely one of a multitude which, on the evidence, could claim rights to the domain name. To accede to Complainant’s demand for transfer would be to give it priority over all such other potential claimants. Complainant has not demonstrated any right to such priority. To order cancellation would merely serve to facilitate a new rush to be first in the queue for registration. Had the Panel found Complainant’s case to be proven within the parameters of the Policy, such consequences would follow, but the majority does not so find.

The Panel by majority, decides and orders:

(i) The domain name is identical or confusingly similar to a trade mark in which Complainant has rights;

(ii) Respondent has demonstrated rights and legitimate interests in respect of the domain name;

(iii) Complainant has failed to show that the domain name has been registered and is being used in bad faith;

(iv) The Complaint is dismissed.

D.J. Ryan
Presiding Panelist

Kathryn A. Kleiman
Panelist

M. Scott Donahey
Panelist

Dated: April 20, 2001

Panelist M. Scott Donahey dissents from the majority finding with respect to 4(a)(ii) and 4(a)(iii) of the Policy.

Panelist Donahey’s opinion is as follows:

"With all due respect to my learned colleagues, I am compelled to dissent. I would find that Respondent has no rights or legitimate interests in respect of the domain name at issue and that the domain name was registered and is being used in bad faith. Accordingly, I would order the domain name transferred to the Complainant.

The Panel’s authority to act and the parameters within which it may act are carefully circumscribed by the Policy and by the Uniform Rules. Nowhere in the Policy or the Uniform Rules is the Panel asked to consider in its analysis the number of parties who have registered a trademark identical or similar to that registered by the Complainant or who use business names similar to that of Complainant, nor in what fields of commerce or in what geographic areas such trademark registrations are effective or in which such businesses are engaged.

I believe that this omission not only was intended, but also is practical and effective. The Internet knows no geographic boundaries. However, the number of domains available is limited. There are currently only three generally available generic Top Level Domains (gTLDs). Assuming a situation in which four or more entities have registered the same mark, if the majority’s reasoning were carried to its logical conclusion, none of them would be entitled to prevail as against a third party under the Policy, since there is at least one holder of the mark who would not be able to register the mark in a corresponding domain name in a gTLD. If four is not the defining number, the majority fails to indicate how many trademark registrants would be a sufficient number to entitle the Panel to disregard the fact that Respondent has registered and is using a domain name identical to the mark in which Complainant has rights. The majority opinion effectively makes trademarks with multiple registrants fair game for any cybersquatter.

The Policy does not call upon the Panel to consider or to adjudicate the rights of parties not present in the proceeding. As a Panel, we are instructed to evaluate only the rights, interests, and conduct of the parties before us. To the extent that the majority opinion considers the rights and interests of third-party trademark registrants or business entities, I believe it acts outside the scope of the Panel’s authority.

The Panel unanimously agrees that the domain name is identical to Complainant’s trademark. Majority Opinion,para. 7.1. Where there is a finding of identicality, there is no need to find a likelihood of confusion between Respondent’s domain name and Complainant’s trademark. Shirmax Retail Ltd./Detaillants/Shirmax LTEE v. CES Marketing Group, Inc., ICANN Case No. AF0104.

I agree with my distinguished colleagues when they effectively say that for a use to be considered bona fide, the use must be one in good faith under paragraph 4(a)(iii) of the Policy. See, Majority Opinion, paras. 7.2.4 and 7.2.5, supra. However, I believe that under the facts of this case, Respondent has registered and is using the domain name at issue in bad faith.

If the Respondent’s citation to the number of registrants and users of the trademark FIRST AMERICAN is testimony to anything, it is testimony to the popularity and general knowledge of the use of the name in American commerce and of the need to trademark it. It defies credulity that Respondent was unaware of the mark’s use in commerce, even if Respondent may not have known of Complainant’s particular registration.

Moreover Respondent’s use of the domain name at issue is wholly unrelated to its locator services. The domain name at issue, <firstamerican.com>, has no relationship to any of the listings on the locator page at which the Internet user arrives. A user who entered www.firstamerican.com would be confused when he or she arrives at Respondent’s web site which refers users to Travelocity.com, Hawaiian vacations, eBay, T-Shirt King, beautiful Russian women looking for love, how to make $40,000 a month, and other unrelated services. None of these are even remotely suggested by the name "First American."

A user would expect to arrive at the web site of a commercial entity in which the mark FIRST AMERICAN is a significant part of the name under which the entity operates or, if at a locator page, at a page which lists various entities using the "First American" name. A user would not arrive at either, and a user would be confused.

When Respondent registered the domain name at issue and established its web site, Respondent both intended to and today undoubtedly does profit from this confusion. Such a practice has been found to constitute bad faith registration and use under paragraph 4(b)(iv) of the Policy. E.I du Pont de Nemours and Company v. ITC, ICANN Case No. FA96219 (in which users entering www.lycralovers.com would be confused when they arrived at a site which offers images of Lycra-clad individuals, banner ads, and links to other sites, when they would expect to arrive at a site which sold Lycra products). The fact that users would soon discover the unlikelihood of a business relationship between Complainant and Respondent does not mean that confusion has not occurred and that Respondent has not profited from such confusion. National Football League Properties, Inc. and Chargers Football Company v. One Sex entertainment Co., a/k/a chargergirls.net, ICANN Case No. D2000-0118.

Accordingly, I would find that Respondent has deliberately created a likelihood of confusion, for the purpose of commercial gain, as to the source or sponsorship of the web site to which the domain name at issue resolves. Policy, para.4(b)(iv). As between Complainant and Respondent, I would find that Complainant is entitled to a transfer of the domain name at issue. Such a finding neither anticipates nor forecloses the rights of other holders of the trademark FIRST AMERICAN. It merely provides a decision as between the only parties presently before this Panel."