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Generic Top Level Domain Name (gTLD) Decisions |
Torrington Savings Bank v. North American
Export Company
Claim Number: FA0303000147312
PARTIES
Complainant
is Torrington Savings Bank,
Torrington, CT (“Complainant”).
Respondent is North American
Export Company, Harwinton, CT (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <torringtonsavingsbank.com>,
registered with Network Solutions, Inc.
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.
Fernando Triana, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 3, 2003; the Forum received
a hard copy of the
Complaint on March 14, 2003.
On
March 5, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <torringtonsavingsbank.com>
is registered with Network Solutions, Inc. and that 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
March 20, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 9,
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@torringtonsavingsbank.com by e-mail.
A
timely Response was received and determined to be complete on April 11, 2003.
On April 22, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Fernando Triana,
Esq. as Panelist.
On April 30, 2003, in accordance with paragraphs 10 and
12 of the Rules, the Panelist ordered the Complainant to file evidence of
the
statements set forth in the Complaint. The Complainant complied with the order
on May 5, 2003.
The Respondent did not submit any response with respect
to the Complainant’s further evidence.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
states that Torrington Savings Bank is a mutual savings bank established in
1868. According to the Complaint, the Complainant
does not use any trademarks
or service marks.
Complainant explains that there has been
confusion with its customers in their attempt to find Torrington Savings Bank
on the Internet
and/or contact it by email, which is of concern due to the
confidential nature of the banking business. Complainant asserts that
the
conflicting domain name should be owned by it and that the Respondent does not
have any legitimate interest in it.
Complainant
contends that the Respondent does not have any business, trademark, service
mark, product, service or any other claim
to the Torrington Savings Bank name.
It further states that the Respondent’s sole intention in owning the domain
name at issue is
for the purpose of selling it to the Complainant for a profit.
Additionally, the Complainant states that the Respondent has
not used the domain name for any reason. The Respondent is not known
by the
domain name nor has any trademark or service marks that relate to the domain
name. The Respondent has no legitimate noncommercial
or fair use of the domain
name.
With respect to the bad faith requirement
of the Policy, the Complainant contends that the conflicting domain name has
been registered
in bad faith by the Respondent for the following reasons:
(i.)
The
Respondent purchased the domain names of other local financial institutions. In
one case, Respondent initially offered to sell
a domain name to a local bank
for as much as $47,500.00. The bank settled for $1,750.00. Complainant states
that it has documentation
to support this.
(ii.)
The
Respondent has owned the domain name at issue for three (3) years and has not
created any website. In addition, the domain name
is only used for e-mail, so
that when a Complainant’s customer mistakenly sends an e-mail through the <torringtonsavingsbank.com>
domain name, Respondent receives the message and then contacts Complainant with
an offer to sell the domain name for a profit.
(iii.)
The
Respondent has made it clear both verbally and via e-mail that its only
intention in owning the disputed domain name is to sell
it to the Complainant
for a profit. A recent offer was made by the Respondent for $1,750.00, but
Complainant offered to compensate
only the Respondent’s out-of-pocket expenses
in the amount of $250.00. Respondent refused this offer and is holding firm for
$1,750.00.
B.
Respondent
In its
response, Respondent contended that the National Arbitration Forum is without
jurisdiction to arbitrate this matter and to
affect the rights of Respondent,
since Respondent is not a company hosting websites and is not a signatory to
any agreement to submit
these matters to binding arbitration. Respondent
asserts that it has not knowingly signed any agreement during the registration
process
which would in effect waive the rights of Respondent to contest any
procedure in a court of competent jurisdiction or any agreement
which causes it
to waive any of its statutorily prescribed rights to arbitrate matters as
prescribed by the law of the State of Connecticut
or other jurisdictions that
would be involved. According to Respondent, any such waiver must be knowingly
made, set forth separately
and clearly and would involve adequate consideration
and specific knowledge such as the procedure followed by the New York Stock
Exchange. Respondent states that it has never signed such an agreement nor has
such an agreement been offered to it in the course
of the registration process.
The only matter that is important during the registration process is the
availability of the name and
a credit card to pay for the registration itself.
Respondent
concedes that hosting companies are signatories to a contract and are bound by
that contract in terms of adjudicating rights
of contending site holders but
the Respondent is not a party of such a contract and is not bound by its terms.
Any mandatory change
in the ownership of this site affected by arbitration
without jurisdiction would be considered illegal and cause damage to the
Respondent
and must give rise to claims against the offending parties.
Notwithstanding,
Respondent asserts that the Complainant is not the holder of a trademark,
copyright or any other prior legitimate
right over the domain name at issue.
The National Arbitration Forum arbitration scheme is designed to adjudicate the
rights of “trademark owners” or to
solve “trademark –based domain name disputes”. However, Complainant comes to
this Forum without a trademark
or trade name and therefore it has no claim to
the property of the Respondent. To this effect, Respondent cites the decision
in the
case of E&J Gallo Winery v. Spider Webs, [2002] USCA5 122; 286 F.3d 270 (5th
Cir. 2002).
Respondent
further states that it has not created a website under the conflicting domain
name and thus there can be no confusion by
the Complainant’s customers in going
to such a website. Customers can certainly search for a site offered by the
Complainant but
no customer has tried to do banking business on a non-existent
site.
According
to the Respondent, there is no use of the site to disparage or denigrate or
otherwise cause business harm to the Complainant.
This Complaint amounts to
tortuous interference with the rights of the Respondent to its properly
purchased property and is an attempt
to cause a breach of contract with other
institutions that have purchased a URL from the Respondent. The Complainant has
used information
submitted to it by a local website-hosting firm, which
information was gained during the confidential activities involving the
purchase
of another website by a local financial institution. That same website
hosting company, The Henry Group, is now claiming that the
Respondent’s
ownership of this site is illegal even though it negotiated the sale of another
site, under the same circumstances,
to another local financial institution. The
Respondent relied upon the expertise of The Henry Group and consummated the
sale without
objection and without any claims of improper ownership of a site.
Complainant cannot use this type of evidence nor can The Henry
Group be on all
sides of the transaction with impunity.
Respondent
contends that it has a valid private interest in this domain name, regardless
of the fact that the Complainant does “feel
strongly” that it should own this
site. Respondent seeks no commercial gain by the exploitation of the site, does
not mislead consumers,
as they are non-existent at this non-existent site.
Personal private investment purposes are not prohibited by the scheme put forth
by the Forum. It is an asset of the Respondent, which could have been readily
purchased by the Complainant.
Additionally,
Respondent states that the Forum must be aware of the hundreds of companies
selling non-trademarked, non-trade named
and non-copyrighted websites.
According to the theory of the Complaint, all of these must be illegal
operations. The registrant in
this matter sought no particular information from
the Respondent when the Respondent sought to purchase the site. Respondent made
no representations to any party during this process and it is slanderous to now
suggest that this purchase was a “bad faith” transaction.
The court decisions
are clear that to show “bad faith” there must be an attempt to damage a
recognized and protected trademark, trade
name or copyright and that it is
being used for the benefit of the site owner, to the derogation of the party
with a legal interest
and to suggest otherwise in this Complaint is slanderous
to the Respondent.
C.
Additional Submissions
As
ordered by the Panel, the Complainant filed an additional submission enclosing
evidence of the use of the Torrington Savings Bank
name, such as a Torrington
Savings Bank calendar from 1970, newspaper advertisements from 1949 and 1977
and the Complainant’s financial
statements from 1977.
With
respect to the Respondent’s offers to sell the conflicting domain name, the
Complainant filed copies of the communications between
the parties, in the form
of e-mails, which took place from November 22, 2000 to February 18, 2003.
Finally,
the Complainant clarified that the evidence to support that the Respondent sold
other domain name to a local bank, could
be obtained by contacting the Vice
President or any senior bank personnel of Litchfield Bancorp. However, the
offer to sell the domain
name was made verbally by the Respondent.
After
being duly notified of this additional submission from the Complainant, the
Respondent remained silent.
FINDINGS AND 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.”
Likewise,
paragraph 10 (d) of the Rules for Uniform Domain Name Dispute Resolution
Policy, provides that “[t]he Panel shall determine
the admissibility,
relevance, materiality and weight of the evidence.”
In the
present case, the Panel wants to place emphasis on the importance of the
evidence filed by the parties to prove their assertions,
which has been studied
to determine its relevance and weight in arriving at a decision. The Panel
wishes to clarify that the statements
that have been accompanied by evidence
have been given more importance than the mere statements made by the parties
without further
demonstration of their existence. Likewise, the Panel has
accepted as enough evidence of a fact, the documentation filed by a party
that
has not been contested by the other party.
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.
As a
previous issue to be dealt with, the Panel wishes to make some comments to the
Respondent’s allegations that it does not accept
the Forum’s jurisdiction to
arbitrate this matter.
The
Panel finds that, by entering into the Registration Agreement with the
Registrar, Network Solutions, Inc., the Respondent agreed
to submit to any
administrative proceeding, properly constituted in accordance with the Policy
and the Rules, before any ICANN-approved
service provider, of which the
National Arbitration Forum is one. This Respondent agreed to be bound by the
Policy and to submit
any conflict to the administrative proceeding ruled by it
when Respondent registered the conflicting domain name through an on-line
process.
It
is not acceptable for the Panel to assert that since Respondent did not
knowingly agree to submit this matter to binding arbitration,
the Panel lacks
jurisdiction to decide this conflict. The Panel notes that in most registration
processes, if not all of them, the
registrants are requested to read the entire
text of the Service Agreement that will rule the relationship between the
Registrar
and the registrant. Such Service Agreement includes a provision by
which registrants agree to submit to the Policy and to accept
the jurisdiction
of ICANN’s approved service providers in case conflicts arise over the
registered domain name. Usually, the Policy
is incorporated in the agreements.
The
mandatory nature of this procedure was strongly recommended by the Final Report
of the WIPO Internet Domain Name Process, dated
April 30, 1999. The reasons are
clearly explained below:
1. In
the WIPO Interim Report, it was recommended that the administrative procedure
be mandatory in the sense that each domain name applicant
would, in the domain
name registration agreement, be required to submit to the procedure if a claim
was initiated against it by a
third party.
If submission to the procedure were to be optional for applicants, it
was considered that the adoption of the procedure would not
result in
significant improvement on the present situation, since those persons who
register domain names in bad faith in abuse of
the intellectual property rights
of others would be unlikely to choose to submit to a procedure that was cheaper
and faster than
litigation, but would instead prefer to leave the legitimate
owners of intellectual property rights with the possibility only of
initiating
court litigation, with its attendant costs and delays.
The
fact that the Respondent did not read the clauses that rule its relationship
with the Registrant at the time of the registration
of the domain name is not
an acceptable reason to challenge the competence and jurisdiction of this Panel
and the applicability of
the Policy.
Respondent
believes that it has not “knowingly signed any agreement during the
registration process” and that such an agreement “must
be knowingly made, set
forth separately and clearly and would involve adequate consideration.” In
this regard, the Panel wishes to clarify that the Respondent’s apparent
carelessness in reading the registration agreement with
the concerned
Registrant and analyzing the consequences of the registration of the domain
name, cannot be used by it as a reason
to refuse the jurisdiction of the Forum
and of this Panel. The relevant fact in this issue is that the Respondent
agreed to be bound
by such an agreement when registering the domain name.
Whether such acceptance was made knowingly or not by the Respondent, or whether
it agreed to do so by signing a paper or by a simple click on the Registrant’s
website, are not to be taken into consideration by
the Panel at this time.
Apparently,
the Respondent thought that the “only matter that is important during the
registration process is the availability of
the name and a credit card to pay
for the registration itself.” Unfortunately for the Respondent, many other
issues are important
during the process of registration of a domain name, and
the Panel expects that the Respondent will be more careful in future agreements
in which it is involved.
Due
to the above, it can be concluded that the Panel has jurisdiction to decide
this matter and that the Respondent agreed to submit
to this administrative
proceeding when registering the domain name at issue.
Complainant
asserts that it is a mutual savings bank established in 1868, but that it does
not use any trademarks or service marks.
Notwithstanding, upon request of the
Panel, the Complainant filed evidence of the use of the Torrington Savings Bank
name since at
least 1949. Consequently, the Panel concludes that the
Complainant intends to base its Complaint on its unregistered rights over
the
name Torrington Savings Bank and its identity with the domain name <torringtonsavingsbank.com>.
Under
the Policy, a Complainant may establish common law rights over its mark, when
such common law rights are recognized in its country
of origin. In the present
case, the Complainant is a savings bank domiciled in the United States of
America, where common law marks
are recognized.
In this
sense, previous Panels have recognized that the Policy is not limited to
disputes involving registered trademarks or service
marks. For instance, the
Panel in the case of British Broadcasting Corporation v. Jaime Renteria,
D2000-0050 (WIPO Mar. 23, 2000) stated
the following:
This Administrative Panel acknowledges that the Uniform Policy in paragraph
4(a)(i) refers merely to a "trademark or service
mark" in which the
Complainant has rights, and in particular does not expressly limit the application
of the Uniform Policy
to a registered trademark or service mark of the
Complainant. Further, this Administrative Panel recognizes that the WIPO Final
Report
on the Internet Domain Name Process (The Management of Internet Names
and Address: Intellectual Property Issues, April 1999), from
which the Uniform
Policy is derived, does not distinguish between registered and unregistered
trademarks and service marks in the
context of abusive registration of domain
names. It is therefore open to conclude that the Uniform Policy is applicable
to unregistered
trademarks and service marks.
Additionally,
the Panel notes that the “.com” suffix is not an element to be considered when
analyzing the identity or similarity
between the Complainant’s common law mark
and the conflicting domain name. See Wal-Mart Stpres, Inc. v. Walsucks and
Walmarket Puerto Rico[1],
stating that: “[t]he addition of the generic top-level domain (gTLD) name
‘.com’ is without legal significance since use of a gTLD
is required of domain
name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not
serve to identify a specific
enterprise as a source of goods or services.”
Considering the Complainant’s common law
mark, “Torrington Savings Bank,” and the relevant part of the Respondent’s
domain name <torringtonsavingsbank>,
the Panel concludes that they are
identical and therefore, the Complainant has met the requirement of Policy ¶
4(a)(i).
Under
Policy Paragraph ¶ 4(c), the following circumstances, in particular but without
limitation, if found by the Panel to be present,
shall demonstrate the
Respondent’s rights or legitimate interests to the domain name:
(i)
Before any
notice to Respondent of the dispute, it has used or made 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
(ii)
Respondent
(as an individual, business, or other organization) has been commonly known by
the domain name, even if he has acquired
no trademark or service mark rights;
or
(iii)
Respondent
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.
Complainant has contended that Respondent
lacks rights or legitimate interests on the domain name at issue and that it
registered
the domain name solely for the purpose of selling it to the
Complainant for profit. Respondent on the contrary has asserted that
the domain
name at issue is its properly purchased property and that it has valid private
interest in this URL.
The Panel notes that the Respondent
neither explained nor provided evidence of its “private investment purposes”
with regard to the conflicting domain name. On the contrary, Complainant
filed evidence to demonstrate that the Respondent has attempted
to sell the
domain name for profit and has contended that the domain name has not been used
in connection with any bona fide or legitimate
commercial or non-commercial
activity.
Studying the evidence filed by the Complainant, the Panel
finds that though the several e-mails crossed between the parties, the
Respondent
never expressed an interest in the domain name other than to sell it
to the Complainant. Particularly, in the message dated November
22, 2000, in
response to the Complainant’s question as to its purpose for purchasing the
domain name, the Respondent stated: “I think
we have owned it (the domain name)
for since the beginning of the year. It seems to be a good url and one that has
a certain symmetry
for your bank, as you would agree.”
In
the present case, the Panel has placed emphasis on the fact that Respondent did
not contest any of the evidence filed by the Complainant
to support its Complaint.
Therefore, all the evidence will be accepted as proof of the Complainant’s
statements. With respect to
the Respondent’s lack of rights and legitimate
interests over the domain name subject to the controversy, the Panel notes that
the
Respondent failed to demonstrate any of the circumstances described under
Policy ¶ 4(c), or any other for the same purpose. As stated
by the Complainant,
Respondent does not have any trademark or service mark, product or service in
connection with the name “Torrington
Savings Bank.” The Respondent is not known
by the domain name at issue and has not developed any legitimate commercial or
non-commercial
activity through the domain name <torringtonsavingsbank.com>.
It appears that Respondent’s only use of the domain name was its offer to sell
it to the Complainant.
In
a similar case, in the administrative proceeding of Kinko’s Inc. v. eToll,
Inc. f/k/a E Corp, FA 94447 (Nat. Arb. Forum May 27, 2000), the Panel
concluded the following:
There
was no evidence in the record, which would indicate that Respondent had any
right or legitimate interest in respect to the domain
name kinkosoffice.com
other that (sic) it has registered the domain name. If mere registration of the
domain name was sufficient to establish rights or legitimate interests
for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants
would have such rights or interests, and no Complainant could succeed on a
complaint of abusive registration. Construing the policy
so as to avoid an
illogical result, the Panel concludes that the mere registration does not
establish rights or legitimate interests
in the disputed domain name.
There
is no evidence of any legitimate use or preparation for use of the disputed
domain name by Respondent. Rather it appeared that
the domain name was
registered for the ultimate use of the Complainant. Therefore . . . the
Complainant established the second element
necessary to prevail on its claim of
abusive domain name registration.
It is the Panel’s opinion that the
Respondent registered the domain name for the ultimate use of the Complainant
as in the cited case.
It is important to point out that the common law mark
involved in this proceeding has some particularities that deserve special
analysis.
The Complaint’s “Torrington Savings Bank” mark makes clear reference
to the nature of the owner of the mark. It is obvious that “Torrington
Savings
Bank” corresponds to the name of the Savings Bank of the city of Torrington,
since financial institutions commonly use such
a combination of the name of the
city where the bank is domiciled with the words “Savings Bank.” Therefore, it
is evident that the
only entity with a legitimate interest over the domain name
<torringtonsavingsbank.com> is the Torrington Savings Bank,
located in the city of Torrington, State of Connecticut, United States of
America.
The domain name at issue is apparently used by the
Respondent as a direct link to the website <finitesite.com >, which
offers
web hosting services. Such use is not related in any way to the domain
name in conflict and cannot be accepted as evidence of a legitimate
interest in
the part of Respondent.
Based on all of the above, the Panel
finds that the Respondent failed to demonstrate that it has rights and
legitimate interests in
the domain name under controversy and that the
Complainant met the requirements of Policy ¶ 4(c).
According
to Policy ¶ 4(b), the following circumstances, in particular but without
limitation, if found by the Panel to be present,
shall be evidence of the
registration and use of a domain name in bad faith:
(i)
Circumstances
indicating 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 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 Respondent’s documented out-of-pocket costs directly
related
to the domain name; or
(ii)
Circumstances
indicating 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, provided that Respondent has engaged in a pattern of
such conduct;
or
(iii)
Circumstances
indicating that Respondent has registered the domain name primarily for the
purpose of disrupting the business of a
competitor; or
(iv)
Circumstances
indicating that, by using the domain name, Respondent 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 its website or location or of a product or service on its website or
location.
Complainant has contended that Respondent
registered and uses the domain name at issue in bad faith, for the purpose of
selling it
to the Complainant for commercial gain. Complainant also states that
through the domain name, the Respondent has attempted to create
confusion among
the consumer public to force Complainant to purchase the domain name for an
excessive price. Respondent denies this
allegation, stating that there can be
no confusion among consumers since it has not created a website under the
domain name at issue.
The Panel concludes from the evidence
filed by the Complainant, that the Respondent knew of the existence of
Complainant prior to
registering the domain name. Both Respondent and
Complainant are domiciled in the State of Connecticut, United States of
America.
Therefore, it is very likely that Respondent knew of the existence of
the city of Torrington, domicile of the Complainant, as well
as the existence
of the Complainant itself. Considering the wording of the e-mails sent by
Respondent to Complainant, the Panel concluded
that Respondent was perfectly
aware of the existence of Complainant and of its rights over the domain name,
prior to registering
it. Likewise, the Panel believes that Respondent was aware
of its own lack of rights over the domain name <torringtonsavingsbank.com>,
and despite that, decided to register it.
In addition, the Panel finds that the
Respondent has passively held the domain for more than three (3) years. Passive
holding has
been found to be evidence of bad faith registration and use under
the Policy. See Cruzeiro Licenciamientos Ltda. v. Sallen, D2000-0715
(WIPO Sept. 6, 2000) and DCI S.A. v. Link Commercial Corporation,
D2000-1232 (WIPO Dec. 7, 2000). The Respondent has not developed any plausible
use of the domain name other than attempting to sell
it to Complainant.
Regarding this attempt to sell the domain name to
Complainant for profit, the Panel notes that in accordance with uncontested
evidence
filed by Complainant, the price requested by Respondent was for
valuable consideration in excess of Respondent’s documented out-of-pocket
costs
directly related to the domain name. In fact, in its email dated February 13,
2003, Complainant offered to purchase the domain
name for no more than $250.00.
In response, the Respondent stated that it would “discuss a reasonable price,
rather than your attempt
to dragoon us into a transfer by the ICANN.” It added
that it had “sold a couple of these recently and found the negotiating to be
fair and deliberate and worthwhile. So I leave it to you to inquire of a fair
price or feel free to file with ICANN.” When Complainant
refused to negotiate,
Respondent answered by e-mail on February 18, 2003: “I want your file to
reflect that this site was for sale
to your bank for $2250.00.”
The Panel considers that this attempt to
sell the domain name to the Complainant meets the requirements of Policy ¶
4(b). It is irrelevant
to this case whether the Respondent undertook other
negotiations with different financial institutions and under what
circumstances.
In its response, the Respondent stated that this “complaint
amounts to tortuous interference with the rights of the Respondent to
its
properly purchased property and is an attempt to cause a breach of contract
with other institutions that have purchased a URL
from the Respondent.” To the
extent of this decision, the Panel will only take into account that there was
an attempt to sell the
domain name <torringtonsavingsbank.com> to
the Complainant for a price in excess of the costs directly related to the
domain name.
Several previous panels have found bad
faith when the Respondent attempts to sell the domain name to the Complainant.
In Pocatello Idaho Auditorium District v. CES Marketing Group, Inc., FA
103186 (Nat. Arb. Forum Feb. 21, 2002), although the Panel arrived at a
different decision, the following analysis is applicable
to the present
controversy:
What makes an offer to sell a domain bad faith is some
accompanying evidence that the domain was registered because of its value that
is in some way dependent on the trademark of another, and then an offer to sell
it to the trademark owner or a competitor of the
trademark owner. Such cases also frequently have further
evidence that the owner of the domain has engaged in similar transactions with
other marks,
i.e, traffics in domain names.
In addition, the Panel notes that
Respondent, by registering the domain name at issue, is preventing the
Complainant from reflecting
its mark in a corresponding domain name. Respondent
was aware of the existence of Complainant and of its legitimate rights over the
domain name <torringtonsavingsbank.com>; nevertheless, Respondent
decided to register and use it and even attempted to develop negotiations with
Complainant over such name.
As explained above, the only entity with legitimate
rights and interests over the domain name in conflict is Complainant, and
therefore,
due to Respondent’s bad faith registration, it has not been able to
reflect its complete name in a domain name accompanied by the
suffix “.com.”
The Panel undertook a search and found
that Complainant develops its financial activities in the Internet through the
domain name
<torringtonsavings.com>. The existence of this domain name
does not affect Complainant’s rights to seek the transference of
the domain
name subject to this proceeding, due to the fact that Respondent’s domain name
is the one that reflects Complainant’s
name in its entirety. Complainant has
been forced to use a domain name that partially reproduces its name, without
including the
word “bank,” which is of evident importance considering the
nature of Complainant.
Considering the aforementioned, the Panel
finds that Complainant met its burden of proof in demonstrating that the
Respondent registered
and uses the domain name in bad faith.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <torringtonsavingsbank.com>
domain name be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: May 19, 2003
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