DECISION

U.S. Bancorp Licensing, Inc. v. Unused Domains

Claim Number: FA0208000123905

PARTIES

Complainant is U.S. Bancorp Licensing, Inc., Minneapolis, MN (“Complainant”) represented by Michael L. Gannon, of Fish & Richardson.  Respondent is Unused Domains, New Orleans, LA (“Respondent”) represented by Sigmund J. Solares.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <usbank.us>, registered with Intercosmos Media Group.

PANEL

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.

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 28, 2002; the Forum received a hard copy of the Complaint on August 29, 2002.

On August 29, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <usbank.us> is registered with Intercosmos Media Group and that the Respondent is the current registrant of the name.  Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On August 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 19, 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 usTLD Dispute Resolution Policy (the “Rules”).

A timely Response was received and determined to be complete on September 16, 2002.

Complainant filed a timely Additional Submission on September 20, 2002.

On October 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant U.S. Bancorp Licensing, Inc., a wholly-owned subsidiary of U.S. Bancorp, is the owner of a large number of federal service mark registrations for marks consisting of and/or incorporating the wording “U.S. BANK” in connection with various banking and related financial services including, inter alia, the following:

Reg. No.      Mark                                       Goods/Services

1,481,868        U S BANK                         Banking services.

2,445,731            USBANK                               Banking and related financial services.

2,445,732            USBANK.COM                    Banking and related financial services

                                                                        provided by means of a global computer

                                                                        network.

2,493,878            WWW.USBANK.COM            Banking and related financial services

                                                                        provided by means of a global computer

                                                                        network.

2. Complainant uses its various US BANK marks through its related companies and licensees, including, inter alia, U.S. Bancorp and U.S. Bank National Association, (hereinafter referred to as “Complainant”) in connection with a broad range of financial services provided to retail, institutional, and commercial customers across the country.

3. The disputed domain name is identical to the Complainant’s services marks.

4. The first of Complainant’s US BANK registrations, Reg. No. 1,481,868, was issued more than fourteen years prior to Respondent’s registration of the <usbank.us> domain name, and had been incontestable for nearly nine years at the time of Respondent’s registration of the <usbank.us> domain name.

5. Section 4(a)(i) of the usTLD dispute Resolution Policy (hereinafter “Policy”), requiring that the disputed domain name be “identical to a trademark or service mark in which the Complainant has rights” clearly is satisfied. 

6. Respondent has no rights or legitimate interests in the disputed domain name <usbank.us> because (1) Respondent is not the owner or beneficiary of any trademark or service mark that is identical to the <usbank.us> domain name, (2) Respondent has neither used nor made any demonstrable preparations to use the <usbank.us> domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, (3) Respondent has never been commonly known by the <usbank.us> domain name, and (4) Respondent is making no legitimate noncommercial or fair use of the <usbank.us> domain name.  These are the criteria set forth in Section 4(c) of the Policy for the establishment of rights and legitimate interests in a domain name.

7. A worldwide search does not disclose that any of Respondent’s entities own any trademark or service mark that is identical to the disputed domain name.

8. Respondent has made no use of, or demonstrable preparations to use, the <usbank.us> domain name in connection with a bona fide offering of goods or services, the only use that is being made, or has been made, of the <usbank.us> domain name is to point to a website advertising the domain name “for sale.”

9. The Whois record and the website associated with the <usbank.us> domain name indicate that the domain name was registered in the name of “Unused Domains,” an “entity” apparently related to DirectNIC and Intercosmos Media Group.  Nothing in the Whois record for <usbank.us>, or any publicly available information about Respondent, indicates that Respondent (or any of these other entities) has ever been commonly known by the <usbank.us> domain name.

10. Advertising of a trademarked domain name does not constitute a noncommercial fair use of the <usbank.us> domain name.

11. Respondent registered the <usbank.us> domain name in bad faith.  Bad faith registration occurs when a respondent constructively or actually knew or should have known of a complainant’s rights in a mark prior to registering the offending domain name, and this is the case here.

12. Respondent and its affiliates have more than 27,000 domain names offered for sale.  This demonstrates that Respondent registered the <usbank.us> domain name solely for the purpose of selling it to Complainant or a competitor of Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.  This also is bad faith.

13. Respondent’s registration of <usbank.us> also has the apparently intentional effect of preventing Complainant from reflecting its US BANK mark in the <usbank.us> domain name, which, moreover, has the tendency to disrupt the business of Complainant.  This, too, is evidence of bad faith.

B. Respondent

1. The dispute domain name is not identical or confusingly similar to a trademark or service mark in which Complainant has rights.

2. Respondent does have rights or legitimate interests in the disputed domain name.  It is using the name as a search engine and directory, and this is use and demonstrable preparations to use the name in connection with a bona fide offering of goods and services.

3. Complainant has a history of violating its service agreement with Verisign, its registrar.

4. The disputed domain name was not registered or used in bad faith.  Breaking down the disputed domain name indicates it can have various meanings and acronyms. Offers to purchase a domain name do not reflect bad faith by the registrant of the name.

5. Respondent is willing to sell the disputed domain name for the $30 cost of the two-year registration.

6. Respondent neither registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.  There is no evidence that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.

7. There is no evidence that Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.

8. There is no evidence that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.  The website at <usbank.us> is not at all similar to the website at the location <usbank.com>.  Complainant is not a competitor of Respondent.

C. Complainant’s Additional Submission

1. Complainant has longstanding rights in a variety of service marks consisting of and/or incorporating the mark US BANK®.  These rights have been established by Complainant’s long and continuous use of its US BANK marks, and are evidenced by Complainant’s various federal service mark registrations for its US BANK marks.  Respondent’s infringing domain name, <usbank.us>, merely adds a generic top level domain (“.us”) to Complainant’s well-known, famous, and incontestably registered US BANK® mark.

2. Paragraph 4(a)(ii) of the usTLD Dispute Resolution Policy requires Complainant to establish that Respondent has “no legitimate interest in respect of the domain name” at issue.  This is the case here because Respondent’s only use of the <usbank.us> domain name has been in connection with a website advertising the <usbank.us> domain name for sale.  While Respondent asserts that the “main thrust” of the website accessible via <usbank.us> is to be a search engine, Respondent’s argument is patently absurd.

3. Respondent has not rebutted the evidence submitted with Complainant’s Complaint demonstrating that Respondent is neither the owner, nor a beneficiary, of a trademark or service mark identical to the <usbank.us> domain name.  Respondent’s operation of a website offering the <usbank.us> domain name for sale does not constitute a bona fide offering of goods or services, notwithstanding Respondent’s incorporation of a “search engine.”  Respondent does not assert that “Unused Domains” or “Intercosmos Media Group” has ever been commonly known by the domain name <usbank.us>.  Finally, Respondent is not making a legitimate noncommercial or fair use of the <usbank.us> domain name without intent for commercial gain, or to misleadingly divert consumers.  Thus, Respondent has failed to demonstrate that it has any legitimate interest in the <usbank.us> domain name as defined in Sections 4(c)(i) – (iv) of the usTLD Dispute Resolution Policy.  As such, Complainant has satisfied its burden under ¶ 4(a)(ii) of the Policy.

4. Respondent has registered the <usbank.us> domain name in bad faith.  Each of the bad faith elements enumerated in ¶¶ 4(b)(i) – (iv) of the Policy is here present.  In addition, Respondent’s offering of the <usbank.us> domain name for sale, among thousands of other domain names, is more than enough, exclusive of the other bad faith factors, for a finding of bad faith.  A finding of bad faith is all the more appropriate in light of the fact that Respondent in this dispute, “Unused Domains,” is merely an alias being used by ICANN accredited registrar, Intercosmos Media Group.  Complainant has demonstrated that through its “Unused Domains” alias, Intercosmos Media Group has tied up literally thousands of Internet domain names, some of which correspond to famous personal names and trademarks.

FINDINGS AND CONCLUSIONS

Paragraph 15(a) of the 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 Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled 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 or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

There can be no doubt but that the disputed domain name is confusingly similar and, indeed, identical to Complainant’s registered marks and the Panelist so finds.  The generic top-level domain (“gTLD”) customarily is disregarded in UDRP cases involving gTLDs such as “<.com>” and “<.net>.”  See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the “<.biz>” gTLD in a disputed domain name is not a factor, and hence to be ignored, when determining whether the domain name is identical to a mark in which Complainant has asserted rights).

And, of particular interest, in this proceeding with respect to this issue is the direct precedent of U.S. Bancorp Licensing, Inc. v. No Kwan-Ho, FA 112606 (Nat. Arb. Forum June 18, 2002) (finding domain name <usbank.biz> identical to Complainant’s US BANK family of marks).

Rights or Legitimate Interests

Under Policy paragraph 4(c), a Respondent may be found to have rights or legitimate interests in the disputed domain name by demonstrating, without limitation, any of the following factors:

i. It is the owner or beneficiary of a trade or service mark that is identical to the domain name;

ii. Before any notice to it 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;

iii. It (as an individual, business, or other organization) have been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

iv. It is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Clearly, Policy ¶¶ 4(c)(i), (iii), and (iv), are not applicable here.   However, Respondent apparently claims it falls with Policy ¶ 4(c)(ii), because it is using the disputed domain name as a “search engine.”

The Panelist finds and concludes that Respondent’s claim or purported use of the disputed domain name as a search engine must be rejected.  This is because the evidence demonstrates that Respondent’s essential purpose is to sell the disputed domain name as well as thousands of other domain names including such names as <citibank-asia.com> <americanexpressmallbusinessexchange.com>, and <ameritech-international.com>.

A legitimate interest cannot be created by such a “search engine” device.

Registration and Use in Bad Faith

Paragraph 4(b)(i) of the Policy provides that circumstances demonstrating bad faith registration or use may be:

i. Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name.

While it is true that Respondent, in its submissions, has offered to sell the disputed domain name to Complainant for $30 (Respondent’s costs of registration), the Panelist believes and finds that the offer comes too late.

This is because Panels have found bad faith where no offer for sale is made, but where it is clear that the Respondent’s only interest in the name is to sell it.  See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding that, by identifying itself as “Domain For Sale VMI” in its registration information, Respondent made clear its intent to sell the domain name for consideration in excess of its out-of-pocket costs); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9. 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This domain name is for sale.”).

The Panelist, accordingly, has concluded that the disputed domain name was registered and is being used in bad faith.

DECISION

Based on the above findings and conclusions and pursuant to Rule 4(i), it is decided that the domain name <usbank.us> registered by Respondent, Unused Domains, be and the same is ordered TRANSFERRED to Complainant, U.S. Bancorp Licensing, Inc.

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated:

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