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FleetBoston Financial Corporation v. Jung Y. Lee [2001] GENDND 836 (26 April 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant is FleetBoston Financial Corporation, with a place of business at 100 Federal Street, Boston, Massachusetts 02110, U.S.A.

The Respondent is Jung Y. Lee, with an address at R. Camomil 157, Pari, Sao Paulo, SP 03032-010, Brazil

The domain name in dispute is <fleetbostonfinancial.com>. The Registrar is Network Solutions, Inc.

a) The Center received Complainant's Complaint by e-mail on December 19, 2000, and by hard copy on December 21, 2000. The Center, by an e-mail message to Network Solutions, Inc., then sought verification of specific facts relevant to the domain name registration from Network Solutions, Inc., and was informed, inter alia, that according to the Registrar’s records, "the domain name registration is currently in litigation and is under the control of the United States District Court for the District of Massachusetts."

By letter of January 4, 2001, the Center advised Complainant that the Complaint was deficient in that the domain-name holder did not submit in its Registration agreement (NSI Service Agreement 4.0) to the jurisdiction of the court at the location of the principal office of the Registrar for adjudication of disputes concerning or arising from the use of the domain name, - and that accordingly, Complainant had to submit, with respect to any challenges to a decision in the administrative proceeding cancelling or transferring the domain name, to the jurisdiction of the court at the location of the domain-name holder’s address, as specified in the Rules, Para 1 and Para 3(b)(xiii).

By amendment dated January 8, 2001, Complainant agreed to submit, only with respect to any challenge that may be made by Respondent to a decision of the Administrative Panel to transfer or cancel the domain name in dispute, to the jurisdiction of the Court at Respondent’s address.

After receipt of the Complaint and the Amendment dated January 8, 2001, in accordance with paragraph 4(a) of the Rules for the Uniform Domain Name Dispute Resolution Policy (the "Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center confirmed on January 11, 2001, it had verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules, and further that the payment in the required amount to the Center had been made by Complainant. The formal date of the commencement of this Administrative Proceeding is January 11, 2001.

b) On January 11, 2001, Notification of Complaint and Commencement of Administrative Proceeding was forwarded to Respondent by post/courier with enclosures, and to its administrative, billing and technical contacts by facsimile and e-mail without attachments, at the addresses given on the Registrar’s listing of the domain name. A copy was forwarded to Complainant's representative at the e-mail address provided in the Complaint.

c) The Notification of Complaint and Commencement of Administrative Proceeding stated the formal date of the commencement of the administrative proceeding was January 11, 2001, and that the last day for Respondent to send his Response to Complainant and to the Center was January 30, 2001, and that in the event of his failure to file such a Response by the due date he would be considered in default. In the event of such a default, an Administrative Panel would still be appointed which would have the discretion but not the obligation to consider a late filed Response.

d) No response was received by the Center.

e) On February 2, 2001, by Notification of Respondent Default, the Center notified Respondent and his administrative, billing and technical contacts and Complainant's authorized representative, at the respective addresses as above indicated, that Respondent had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for the submission of his Response.

f) The Center proceeded to appoint the Administrative Panel, consisting of a single member, Joan Clark. The Panelist had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration and Mediation Center . The projected decision date was February 27, 2001.

g) On February 14, 2001, the Center forwarded to Complainant and to Respondent Notification of Appointment of Administrative Panel and projected decision date.

h) By an e-mail message to the Center dated February 21, 2001, the Panel requested, pursuant to Rule 12 of the Rules, clarification of issues arising from the allegations in the Complaint, including the relationship between Complainant and FleetBoston Corporation.

i) Complainant’s Further Statement dated March 12, 2001, was forwarded to the Center on March 13, 2001, and by the Center to the Panel on March 14, 2001. A page missing from Complainant’s Further Statement, apparently omitted during transmission, was forwarded to the Panelist on April 19, 2001.

j) The deadline for forwarding the Panel’s decision was extended to April 27, 2001.

Complainant FleetBoston Financial Corporation describes itself in the Complaint as the eighth largest financial holding company in the United States with over 181 billion dollars in assets. It claims to be a global financial company with more than 20,000,000 customers in more than 20 countries and territories around the world, including customers in the country of Brazil where Complainant and its predecessor in interest Bank Boston Corporation, have done business for more than 50 years. Complainant asserts that it is highly active in the Brazilian banking and financial community, and considers itself well-known to the Brazilian public. This fact appears to be emphasized in view of the fact that Respondent is located in Sao Paulo, Brazil.

The Complaint also explains that, since 1982, Complainant and its predecessor in interest have substantially, continuously and exclusively used, in connection with their business, the mark FLEET alone and as a component of composite marks incorporating the word "Fleet".

Complainant states that, effective October 1, 1999, Bank Boston Corporation merged into and with Fleet Financial Group, Inc and that the resulting entity was Fleet Boston Corporation. The Complaint further states that, by a press release issued by the two merging corporations on March 14, 1999, there was a public announcement of the impending merger between Fleet Financial Corporation and Bank Boston Corporation. The announcement stated that the merged entity would be named "FleetBoston Corporation". Press reports were published beginning the day after the announcement reporting that the merged entity would do business under the name "FleetBoston Corporation".

Although the press release refers to Fleet Financial Corporation, the Panel notes that the correct name of one of the merging entities was Fleet Financial Group, Inc.

The Complaint further states that on March 15, 1999, the day following the announcement on March 14, 1999, of the merger of Fleet Financial Corporation and Bank Boston Corporation which stated the merged entity would be known as FleetBoston Corporation, Respondent registered the internet domain name <fleetbostonfinancial.com>.

Complainant’s Further Statement explains that the name of the merged entity Fleet Boston Corporation was changed to FleetBoston Financial Corporation, the present name of Complainant, on April 19, 2000.

Complainant asserts that it is the registered owner of the trademark FLEET, registered in the United States in 1983 for banking services, and is also the owner of numerous other trademarks registered over the years since 1983, involving the word "fleet" as the first component of composite marks incorporating the word "fleet", for banking, financial, investment and related services. These trademarks are herein referred to as the Fleet Family of Marks.

The Complaint states that Complainant owns several other common law trademarks incorporating the term "FLEET" and that, on June 2, 1999, Fleet Financial Group, Inc. (prior to the effective date of the merger) applied to register the mark FLEETBOSTON for banking services and financial services.

The Complaint further states that on October 25, 1999 (that is after the effective date of the merger) Fleet Financial Group, Inc. (the merged entity) applied to register the mark FLEETBOSTON FINANCIAL.

The Panel found no evidence in the Complaint or documents submitted in support of the Complaint that Complainant, or indeed any of the other entities referred to such as Fleet Financial Corporation, Bank Boston Corporation, Fleet Boston Corporation and Fleet Financial Group, Inc., had used the mark FLEETBOSTON FINANCIAL prior to Respondent’s registration of the domain name <fleetbostonfinancial.com>.

The particular combination of "Fleet", "Boston" and "Financial" appears, according to the Complaint and evidence in support thereof, to have been first used by Respondent in registration of his domain name.

The Complaint asserts that the domain name in issue is identical to Complainant’s FLEETBOSTON FINANCIAL mark and confusingly similar to Complainant’s FLEET mark and Fleet Family of Marks.

The Complaint also asserts that Respondent has no rights or legitimate interests with respect to the FLEET or FLEETBOSTON FINANCIAL marks or the Fleet Family of Marks, or the domain name <fleetbostonfinancial.com>, and further that there is no evidence that <fleetbostonfinancial.com> comprises the legal name of Respondent or a name by which Respondent was commonly known.

The Complaint states that Respondent did not, prior to the notice of the dispute, use the domain name or a trademark corresponding to the domain name in connection with a bona fide offering of goods or services and adds that Respondent has not made a bona fide non-commercial fair use of the domain name.

The Complaint further states that the internet domain name in dispute does not currently resolve to an active web site, and never has. When the domain name is entered into any commercial internet browser, the Complaint states that a web page appears that states "Coming soon… we recently registered our domain name at Register.com." Finally, the Complaint states that Respondent registered the disputed domain name in bad faith in order to prevent Complainant from reflecting its FLEET and FLEETBOSTON FINANCIAL marks in a corresponding domain name.

In its overall presentation, the Complaint lays great emphasis on its trademark FLEET and the Fleet Family of Marks which Complainant says are well-known and have a strong reputation, Complainant being one of the largest financial holding companies in the United States with over 181 billion dollars in assets, over 20,000,000 customers in more than 20 countries and territories around the world.

The Complaint states that Complainant has a wide reputation in the word "fleet" in relation to financial and banking services around the world, and asserts it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name <fleetbostonfinancial.com>.

The Complaint requests that the disputed domain name <fleetbostonfinancial.com> be transferred to Complainant.

Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following in order that Respondent be required to submit to a mandatory administrative proceeding:

(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and

(ii) Respondent has no rights or legitimate interests in respect of the domain name, and

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, without limitation, each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

The domain name in issue is: <fleetbostonfinancial.com>.

In the opinion of the Panel, the suffix ".com" should not be taken into consideration when considering the identity or confusing similarity of a domain name to a trademark or service mark.

Complainant is the owner of the trademark FLEET and numerous other trademarks in which FLEET is the first and primary component (the Fleet Family of Marks). The marks are for banking, financial, investment and related services. The first registrations submitted in evidence by Complainant were registered in 1983.

These trademarks which include FLEET as the first and principal component are herein referred to as the Fleet Family of Marks.

The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark FLEET, as well as to its Fleet Family of Marks. "fleet" is the first and primary component of the disputed domain name, and the third word in the domain name is "financial" which specifically describes the services for which FLEET and the Fleet Family of Marks have been registered, two of them for nearly two decades.

While the insertion of "boston" as the second component of the domain name is relevant under criteria 2 and 3 below, the Panel notes that the trademarks and service marks of Complainant did not include the word "boston" until the effective date of the merger on October 1, 1999. Accordingly, the Panel is of the view that the inclusion of "boston" is not a factor to be taken into account as contributing to the confusing character of the domain name.

It is true that, on March 14, 1999, a day before Respondent registered the domain name <fleetbostonfinancial.com>, Complainant’s predecessors in title, the parties to the merger, had announced that upon the merger, they would be known as Fleet Boston Corporation. However, they had not as of that time made use of the corporate name or trade name Fleet Boston Corporation, and therefore their reference to the projected use of the name Fleet Boston Corporation cannot be taken into account in a strict interpretation of criterion 1. Similarly, the application on June 2, 1999, by one of the parties to the merger, Fleet Financial Group, Inc., to register FLEET BOSTON and later on October 25, 1999, to register FLEET BOSTON FINANCIAL as service marks in association with banking services, cannot be taken into account as contributing to the confusing character of the domain name, since these marks were applied for on the basis of ITU, that is, as proposed marks with an intention to use and, as such, must be deemed not to exist as of the date of the filing of the applications.

While the Panel concludes that the use of "boston" in the domain name does not contribute to the confusing character of the domain name, the Panel also considers that the word "boston" does not detract from the confusing character of the domain name.

As the Panel has found confusing similarity between the domain name in dispute and Complainant’s registered trademark FLEET and the Fleet Family of Marks, the criterion of paragraph 4(a)(i) has been met.

According to the evidence filed by Complainant, there having been no response or evidence filed by Respondent, the Panel concludes that Respondent has no rights or legitimate interests in the domain name.

There is no evidence that Respondent has used or made demonstrable preparations to use the domain name in connection with the bona fide offering of goods or services. On the contrary, the web page which appears when Respondent’s domain name is accessed shows that the web site under this domain name is in preparation and is "coming soon". Any other written material on the page of that web site appears to refer to advertisement or promotion of services available by the Registrar.

There is no evidence that Respondent has been known by the domain name. Nor is there any evidence that Respondent is making a legitimate, non-commercial or fair use of the domain name. In fact, there is no indication that Respondent is making any use whatsoever of the domain name.

Accordingly, the Panel finds that there is no evidence that Respondent has any rights or legitimate interests in the domain name.

The criterion of paragraph 4(a)(ii) of the Policy has therefore been met.

Paragraph 4(b) of the Policy contains examples which shall be evidence of the registration and use of a domain name in bad faith. The examples listed are not limitative, and do not exhaust the situations in which a Panel may find bad faith.

There is no evidence which has been submitted to the Panel to the effect that Respondent intended or attempted to sell his web site to Complainant or to anyone else. However, the mere fact of the registration by Respondent of a web site which includes the words "fleet" and "boston" being the first and primary words in the names of two entities whose merger was announced the day before the registration of the domain name, indicates an attempt by Respondent to take advantage of the proposed merger and, if not to offer the domain name for sale, then to attract to its web site customers who were aware of either or both Fleet Financial Group and Bank Boston Corporation. It is to be noted that Respondent’s address is in Sao Paulo, Brazil, a country where Bank Boston Corporation, one of the merging entities, had done banking business for many years and, according to the Complaint, was well-known.

The Panel concludes that the disputed domain name was registered in bad faith. While there is no indication that it has been actively used, the fact of its continued existence on the web is a passive use which has been considered in numerous decisions to constitute use as required by paragraph 4(b) (WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case No. D2000-0862 The McGraw-Hill Companies, Inc. v. Amit Dhir). The Panel has no hesitation in concluding that Respondent was aware of the announcement of the merger of Fleet Financial Corporation and Bank Boston Corporation, the merger of same to be initially known as FleetBoston Corporation.

In view of this, the Panel concludes that Respondent has intentionally attempted to attract internet users to its web site by creating a likelihood of confusion with Complainant’s marks, and that the only conceivable purpose of Respondent in so doing was for commercial gain.

The criterion of paragraph 4(a)(iii) of the Policy has therefore been met.

(1) The Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, paragraph 4:

- that the domain name <fleetbostonfinancial.com> is confusingly similar to the trademark FLEET and the Fleet Family of Marks of Complainant;

- that Respondent has no rights or legitimate interests in respect of the domain name; and

- that it has been registered and is being used in bad faith.

(2) The Panel accordingly requires that the domain name <fleetbostonfinancial.com> be transferred forthwith to Complainant FleetBoston Financial Corporation.

Joan Clark
Sole Panelist

Dated: April 26, 2001