DECISION

FloridaFirst Bank v. William Carlson, Jr.

Claim Number: FA0301000143677

PARTIES

Complainant is FloridaFirst Bank, Lakeland, FL (“Complainant”) represented by Rudy Markham, of FloridaFirst Bank.  Respondent is William Carlson, Sebring, FL (“Respondent”) represented by Todd G. Kocourek, of Bartolus PL.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <floridafirst.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelist in this proceeding.

The Honorable Robert T. Pfeuffer (Ret.), the Honorable John J. Upchurch (Ret.), and the Honorable Charles K. McCotter, Jr. (Ret.), as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 27, 2003; the Forum received a hard copy of the Complaint on January 30, 2003.

On January 29, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <floridafirst.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 February 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 27, 2003
 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@floridafirst.com by e-mail.

A timely Response was received and determined to be complete on March 13, 2003.

Complainant filed a timely Additional Submission on March 17, 2003.

On March 27, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the Honorable Robert T. Pfeuffer (Ret.), the Honorable John J. Upchurch (Ret.), and the Honorable Charles K. McCotter, Jr., as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s domain name <floridafirst.com> is identical to Complainant’s registered and common law mark FLORIDAFIRST BANK.

2. Respondent does not have any rights or legitimate interests in respect of the <floridafirst.com> domain name.

3. Respondent registered the domain name <floridafirst.com> in bad faith.

Complainant, FloridaFirst Bank, asserts that Respondent registered the domain name shortly after Complainant made public notices in 1998 regarding its initial public offering of stock. Complainant states, “Respondent has made no attempt to use the domain name for any legitimate purpose.” Complainant asserts that it is commonly known by FLORIDAFIRST BANK and routinely conducts business operations under the mark.

 

B. Respondent

Respondent, William Carlson, Jr., asserts that he has donated and transferred all ownership rights in the <floridafirst.com> domain name to Florida First Capital Finance Corporation (“FFCFC”), a non-profit, small business loan assistance company founded by the State of Florida in 1983.

C. Additional Submissions

Complainant contends that Respondent’s transfer to FFCFC is ineffective for the purposes of ICANN since there has not been a transfer of the domain name with the Registrar.  See Policy 8(a).  The Panel concludes that since Respondent Carlson is still the holder of the domain name that he is the proper Respondent.

FINDINGS

First Federal Florida, a federally-chartered savings and loan association, commenced its conversion to a stockholder-owned company in 1998, and full conversion was completed in 2000.  FloridaFirst Bancorp, Inc., and its wholly-owned subsidiary, FloridaFirst Bank, are the successor organizations to First Federal Florida.  In conjunction with conversion from a mutual- to a stock-owned organization, the name “FloridaFirst Bank” and “Bancorp” were adopted as official names of the Bank and its holding company.  Complainant contends that “FloridaFirst” is a commonly used abbreviation for FloridaFirst Bank and FloridaFirst Bancorp, Inc. in Central Florida. 

On October 27, 1998, First Federal Savings & Loan Association of Florida (predecessor to FloridaFirst Bank), applied for registration with the United States Patent and Trademark Office, as ITU (Intent to Use), for the service mark FLORIDAFIRST BANK.  The USPTO’s Trademark Electronic Search System (“TESS”) indicates registration of the service mark for banking services on the Supplemental Register on June 27, 2000. (Reg. No. 2388849) (Registration Date is also shown as September 19, 2000).  TESS shows the following disclaimer: “No claim is made to the exclusive right to use “BANK” apart from the mark as shown.”  TESS shows first use as October 11, 1999.

On December 22 and 23, 1998, legal notices were published in the Bradenton Herald and Lakeland Ledger, respectively, announcing FloridaFirst Bancorp’s intent to acquire control of First Federal Savings and Loan Association of Florida.  Since the registration of the service mark FloridaFirst Bancorp has used the names “FloridaFirst Bancorp,” “FloridaFirst Bank” and “FloridaFirst.” 

On January 14, 1999, Respondent registered the domain name <floridafirst.com> (and subsequently renewed the registration for two-year periods effective January 14, 2001 and 2003).  Since the original registration, the domain name has remained “Under Construction” and has never been used.

On May 18, 2002, Respondent made an unsolicited offer to sell <floridafirst.com> to FloridaFirst Bank.  On that same date the Respondent refused a counteroffer of $1,000 as inadequate, and declared his intent to use the domain name for other business purposes.

Complainant initiated the administrative proceeding by submission of the Complaint on January 27, 2003.  On February 4, 2003, Respondent donated his rights to the domain name <floridafirst.com> to Florida First Capital Finance Corporation (Florida First Capital Finance Corporation), an economic development corporation founded by the State of Florida in 1983.  Also on February 4, 2003, Respondent initiated a formal transfer of the domain name <floridafirst.com> with its Registrar, Network Solutions; however, due to these proceedings, a hold had been placed on the domain name.   

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant owns a federal service mark registration for FLORIDAFIRST BANK.  Complainant’s predecessor disclaimed the exclusive right to use “BANK”, apart from the mark.  The effect of the disclaimer is that the applicant claims only the whole composite mark and not the particular portion(s) disclaimed. See Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA 103058 (Nat. Arb. Forum February 15, 2002); see also McCarthy on Trademarks and Unfair Competition (3d ed. 1992) at § 19.20 1.  The validity of the mark is to be determined by viewing the trademark as a whole and not just the words “FloridaFirst.” See Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., [1997] USCA11 496; 106 F. 3d 355, 41 USPQ2d 1896, 1902 (11^th Cir. 1997) (Registration for “Lone Star Cafe” mark applies to mark as composite whole and not just the words “Lone Star”; disclaimer of the word “Cafe” does not remove from the mark the matter disclaimed), opinion modified on rehearing by Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc.[1997] USCA11 2246; , 122 F.3d 1379, 44 USPQ2d 1217 (11^th Cir 1997); cf. Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., [1995] USCA4 92; 43 F.3d 922, 33 USPQ2d 1481 (4^th Cir. 1995) (Registration of “Lone Star Cafe” gave exclusive right to use term “Lone Star” because registration explicitly disclaimed the word “Cafe” from complete mark).

Hence, when viewing Complainant’s FLORIDAFIRST BANK mark as a whole, Respondent’s <floridafirst.com> domain name is not confusingly similar to the registered mark. See Dollar Fin. Group, Inc. v. Oakridge, FA 94977 (Nat. Arb. Forum July 17, 2000) (finding that the domain names, <tillpaydayloan.com>, <tillpaydayloans.com>, <untilpaydayloan.com>, and <untilpaydayloans.com> are not identical or confusingly similar to Complainant’s CASH ‘TIL PAYDAY and CASH ‘TIL PAYDAY LOANS trademarks and service marks).

Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning. See Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO April 13, 2000).  Complainant is entitled to this presumption as to its service mark FLORIDAFIRST BANK; however, the presumption does not apply to “FloridaFirst,” which is less than the whole mark.  To the extent the Complainant has any rights pertinent to the disputed domain name, those rights must arise from its common law rights.  As a consequence, Complainant has the burden of showing secondary meaning for its claimed service mark. Complainant has failed to establish that the words “FloridaFirst,” apart from the registered service mark as a whole, have acquired a secondary meaning such that the relevant public exclusively associates the words with Complainant as a source of services. Complainant has submitted no evidence directly probative as to how consumers perceive its “FloridaFirst” mark or whether consumers perceive the service mark as a source identifier associating its banking services with only Complainant as their source.  See Salem Five Cents Savings Bank v. Direct Federal Credit Union, supra.

 

Furthermore, the words “FloridaFirst” are not exclusively associated with Complainant. See Winchester Properties, LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum June 22, 2001) (“Respondent has shown that the word ‘Winchester’ alone is used by entities other than Complainant.”  The domain name <winchestercc> is not identical or confusingly similar to Complainant’s mark, Winchester Country Club, nor is it a mark in which Complainant can claim rights or interests.); see also CRS Technology Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website.”).

Complainant has failed to establish that the domain name <floridafirst.com> is confusingly similar to its registered service mark, FLORIDAFIRST BANK.  Nor has Complainant shown common law rights in the name “FloridaFirst.”

 

Since Complainant has failed to satisfy Paragraph 4(a)(i) of the Policy, the issues of rights or legitimate interests and bad faith need not be addressed.    

DECISION

Having failed to establish the first element required under ICANN Policy, the Panel concludes that relief shall be DENIED.

The Honorable Robert T. Pfeuffer (Ret.), Panelist Chair

The Honorable John J. Upchurch (Ret.), Panelist

The Honorable Charles K. McCotter, Jr., Panelist
Dated: April 10, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/354.html