DECISION

Wachovia Corporation v. InterMos

Claim Number: FA0111000102520

PARTIES

Complainant is Wachovia Corporation, Charlotte, NC (“Complainant”) represented by Robert M. Tyler, of McGuireWoods LLP.  Respondent is InterMos, Moscow (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <firstunionbank.com>, 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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 26, 2001; the Forum received a hard copy of the Complaint on November 26, 2001.

On November 27, 2001, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <firstunionbank.com> is registered with Intercosmos Media Group and that 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On November 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 18, 2001 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@firstunionbank.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 31, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s <firstunionbank.com> domain name is confusingly similar to Complainant’s FIRST UNION mark.

Respondent does not have any rights or legitimate interests in the domain name at issue.

Respondent regsitered and used the domain name at issue in bad faith.

B. Respondent

No Response was received.

FINDINGS

Complainant owns the federally registered FIRST UNION service mark (registration number 1,338,333) as well as the design mark.  Complainant has used the FIRST UNION mark since 1962 in connection with its banking and brokerage services, credit and debit products, trust services, mortgage banking and home equity lending retail customers. 

Complainant is the fourth largest bank holding company in the world and as a result, has developed significant goodwill.  Complainant has also established a substantial presence on the Internet.  Complainant services 19 million retail and corporate customers throughout the United States, with more than 30 international offices.  In addition, Complainant has enrolled over 3.7 online customers through its <wachovia.com> and <firstunion.com> domain names.

Respondent registered <firstunionbank.com> on April 4, 2000.  Respondent offers links to an Internet casino gambling site called <super-casino.com> as well as personal finance links includng links to Complainant’s competitors.

DISCUSSION

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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 and is being used in bad faith.

Identical and/or Confusingly Similar

Respondent’s <firstunionbank.com>  domain name is confusingly similar to Complainant’s FIRST UNION registered mark because it contains Complainant’s mark in its entirety and because the addition of  a generic term like “bank” and a top level domain name like “.com” do not distinguish the domain name from the Complainant’s mark for purposes of confusing similarity.  See Hollywood Network, Inc, v. Video Citizen Network, FA 95897 (Nat. Arb. Forum Dec. 20, 2000) (finding that the domain name <hollywoodnetwork.tv> is identical and confusingly similar to Complainant’s HOLLYWOOD NETWORK mark because the “inclusion of the entirety of Complainant’s mark in the domain name at issue makes it confusingly similar”); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (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"); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

Additionally, Respondent’s domain name which incorporates Complainant’s mark with a word that describes Complainant’s service is confusingly similar to Complainant’s mark because it falsely implies an association between Respondent’s website and Complainant’s mark.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

           Rights or Legitimate Interests

Because Respondent’s unauthorized use of Complainant’s registered mark is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i), Respondent lacks rights and legitimate interests in the domain name.  See Telstra Corp. Ltd. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word <TELSTRA> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant is that the Respondent lacks rights or legitimate interests in the domain name).

As the fourth largest bank in the United States, the fame of Complainant’s mark is sufficient to show that Respondent could not be commonly known by the mark pursuant to Policy ¶ 4(c)(ii).  See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

           

Respondent’s use of the domain name at issue to divert Complainant’s customers to its site which is connected to other site links is not a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

            The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

            Registration and Use in Bad Faith

Respondent’s use of a domain name which creates a likelihood of confusion between Complainant’s mark and Respondent’s domain name for the purpose of commercial gain is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Moreover, Respondent’s use of the infringing domain name as a connection to an online gambling site is evidence of bad faith in itself pursuant to Policy ¶ 4(b)(iv).  See  Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site); see also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com> to a gambling website).

Finally, the well-known nature of Complainant’s mark is determined to put Respondent on constructive notice of Complainant’s mark.  As a result, Respondent’s subsequent registration and use is in bad faith.  See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding constructive notice as a result of Complainant’s widespread promotional efforts coupled with diversion from Complainant’s site to Respondents for competing commercial gain is sufficient evidence of bad faith registration and use).

            The Panel has found that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <firstunionbank.com>  be hereby transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: January 8, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/18.html