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Generic Top Level Domain Name (gTLD) Decisions |
First Hawaiian Bank v. Allen Frenzel
Claim Number: FA0204000110851
PARTIES
Complainant
is First Hawaiian Bank, Honolulu,
HI, USA (“Complainant”) represented by Martin
Hsia, of Cades Schutte Fleming &
Wright. Respondent is Allen Frenzel, Carlisle, PA, USA
(“Respondent”).
The
domain name at issue is <firsthawaiianbank.biz>,
registered with Network Solutions, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict
in serving as Panelist in this
proceeding.
Bruce
E. Meyerson as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 25, 2002; the Forum
received a hard copy of the Complaint on
the same day.
On
May 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 29,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for the
Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 28, 2002.
Complainant
submitted a timely additional submission pursuant to Forum Supplemental Rule 7
on June 3, 2002. Respondent also
submitted a timely additional submission on June 9, 2002.
On June 21, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Bruce E. Meyerson
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
Complainant
First Hawaiian Bank is a Hawaii corporation that has provided banking and
related serves under this name since 1969. The
mark “First Hawaiian Bank” has
been registered with the United States Patent and Trademark Office since
1970. Complainant contends that
Respondent has no legal interest in the disputed domain name and does not
operate a bank. According to
Complainant, by using the disputed domain name, “Respondent is depriving First
Hawaiian Bank of the opportunity to conduct
online business under its federally
registered name.”
B. Respondent
Respondent
Allen Frenzel asserts that the domain name “has application to the historic
nature, significance and heritage of early
Hawaiian banking.” Respondent contends that Complainant already
has a web presence under the domain name <fhb.com>. Respondent claims to have an interest in
multiple domain names that can lead customers to its primary business of
selling Hawaiian
art, antiques, artifacts, memorabilia and collectibles.
C. Additional Submissions
The
parties timely filed additional submissions.
In its additional submission, Complainant asserts that Respondent knew
of the existence of the First Hawaiian Bank and of its registered
mark prior to
registering the disputed domain name.
Complainant further argues that Hawaii law precludes Respondent from
using the disputed domain name because, according to Complainant,
under Hawaii
law, no person may use the word “bank” in a manner to cause others to falsely
believe that person is, indeed, a financial
institution when it is not. Citing the federal Anticybersquatting
Consumer Protection Act, Complaint further contends that Respondent has acted
in bad faith through
its registration of the domain name.
In
its additional response, Respondent restated that the domain name was purchased
for use in Respondent’s business to “promote historic
and cultural awareness
related to early Hawaiian banking.”
Given
that Respondent’s business activities have nothing whatsoever to do with the
operation of a bank, there can be no other inference
drawn from Respondent’s
registration of the disputed domain name except that Respondent’s actions were
done to prevent Complainant
from registering a domain name containing its mark. Respondent’s contention that it has
registered the domain name—the exact name of Complainant—for the purpose of
promoting awareness
of Hawaiian banking history is simply not credible. Confusion by Internet users with regard to
the disputed domain name would be true in this case if Respondent were
permitted to use
a domain containing the full name of Complainant, particularly
where Respondent has no affiliation whatsoever to Complainant.
Paragraph 15(a) of the STOP Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
The
disputed domain name is identical to the service mark for “First Hawaiian Bank”
held by Complainant since 1970.
Under
STOP Policy ¶ 4(c), the Respondent may demonstrate its rights or interests by
proving:
i.
The Respondent is
the owner or beneficiary of a trade or service mark that is identical to the
domain name; or
ii.
Before any notice
to the Respondent of the dispute, its use of, or demonstrable preparations to
use, the domain name or a name corresponding
to the domain name in connection
with a bona fide offering of goods or services; or
iii.
The Respondent (as
an individual, business, or other organization) has been commonly known by the
domain name, even though it has
acquired no trademark or service mark rights.
According
to the foregoing, Respondent has not demonstrated its rights or interests in
the domain name. First, Respondent does
not own a trade or service mark identical to the domain name. Second, Respondent has not, prior to this
dispute, used a name corresponding to the domain name in a bona fide offering
of goods for
services. Finally, in
connection with Respondent’s antique and collectible business, Respondent has
not been commonly known by the domain name.
See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4,
2002).
STOP
Policy ¶ 4(b) provides four examples of circumstances that, if proven, will
satisfy the bad faith requirement of STOP Policy
¶ 4(a)(iii). Paragraph 4(b) makes clear that these are
not the exclusive determinants of bad faith.
To prove bad faith under the STOP Policy, a Complainant only need prove either
registration or use of the domain name in bad faith, not both as the
UDRP requires.
Respondent’s
actions demonstrate bad faith in at least two respects. First, under STOP Policy ¶ 4(b)(ii), the
Complainant may prove bad faith by showing the Respondent registered the domain
name for
the purpose of preventing Complainant from registering domain names
reflecting its mark. Given that
Respondent’s business activities have nothing whatsoever to do with the
operation of a bank, there can be no other inference
drawn from its
registration of the disputed domain name.
Respondent’s contention that it has registered the domain name—the exact
name of Complainant—for the purpose of promoting awareness
of Hawaiian banking
history is simply not credible.
Second,
Respondent’s actions also violate STOP Policy ¶ 4(b)(iv) that states bad faith
is established when a Respondent, by using
the domain name, has intentionally attempted
to attract, for commercial gain, Internet users to its website 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 the
website or
location or of a product or service on the website or location. See Fluor Corp. v. Song, FA 102757
(Nat. Arb. Forum Jan. 31, 2002) (finding that, where the respondent’s
<fluor.biz> domain name was identical to the
complainant’s FLUOR mark,
Internet users would likely believe an affiliation between the respondent and
complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab, FA
102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name
identical to complainant’s mark to be in bad faith
when use of the domain name
would likely cause confusion as to the affiliation between respondent and
complainant). Such confusion would be
present in this case if Respondent were permitted to use a domain containing
the full name of Complainant,
particularly where Respondent has no affiliation
whatsoever to Complainant.
DECISION
The domain name <firsthawaiianbank.biz> is hereby transferred to Complainant. Further challenges against this domain name under the STOP Policy
shall not be permitted.
Bruce E. Meyerson, Panelist
Dated: July 3, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/1025.html